New Initial Interest Confusion Case in Sixth Circuit

Stilson & Associates v. Stilson Consulting Group, 2005 Fed. App. 0363N (6th Cir. May 6, 2005). Alden Stilson founded a civil engineering firm in the 1940s called “Alden Stilson & Associates.” By the 1980s, the name devolved to “Stilson & Associates.” In the 1980s, that firm is acquired by DLZ but remains a subsidiary; in 1995, DLZ merges the subsidiary into a new entity called “Dodson-Stilson.” Finally, in 2000, another merger results in the name “DLZ Ohio.”

In 2000, Alden’s grandson William launches “Stilson Consulting Group” and directly competes with DLZ Ohio. A lawsuit follows.

On the abandonment question, the judge finds for the plaintiffs because the defense did not carry its burden. The Sixth Circuit says the factual resolution by the district court was not clearly erroneous.

Moving on to the likelihood of confusion analysis, the district court relied heavily on a finding of “likelihood of initial interest confusion.” I always find this standard interesting because:

(a) we don’t understand the initial interest confusion doctrine generally

(b) I am not aware of a single court case explaining the doctrinal difference between “likelihood of” initial interest confusion vs. garden-variety “initial interest confusion”

(c) a surprisingly small number of courts have used the likelihood of initial interest confusion standard, and almost never do those courts acknowledge any possible differences between initial interest confusion and the “likelihood of” or that the “likelihood of” standard is neither well-accepted nor extensively used, and

(d) defendants can almost never win when the standard is likelihood of initial interest confusion, because that standard takes an amorphous doctrine and extends it even earlier into the search process.

Here, the similarity of the names and the direct competition between the parties predominated the district court’s multi-factor test, and not surprisingly, the defense lost. Again, the Sixth Circuit does not disturb the district court’s factual findings because they were not clearly erroneous.

This cases leaves open some pretty obvious questions, such as:

* under what circumstances could this defendant offer engineering services under his own name?

* what result if the defendant had waited a few years with the name?

* what evidence can a defendant marshal against a “likelihood of initial interest confusion” test?

* has the Sixth Circuit officially adopted the “likelihood of initial interest confusion” standard? (or will it flip-flop on this point, like the Ninth Circuit has repeatedly done?)

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