2H 2020 Quick Links, Part 3 (Trademarks)

* John Bean Technologies Corp. v. BGSE Group, LCC (D. Utah Aug. 13, 2020). Plaintiffs are still litigating keyword metatag cases in 2020…

JBT asserts likelihood of confusion under a distinct theory known as initial-interest confusion. “Initial-interest confusion ‘results when a consumer seeks a particular trademark holder’s product and instead is lured to the product of a competitor by the competitor’s use of the same or a similar mark.’” Thus, “the improper confusion occurs even if the consumer becomes aware of the defendant’s actual identity before purchasing the product.” In the internet context, initial interest confusion “derives from the unauthorized use of trademarks to divert internet traffic, thereby capitalizing on a trademark holder’s goodwill.”

Here, initial-interest confusion could arise as follows. A consumer, likely a contractor preparing a bid, types “Jetaire PC Air unit” into an internet search engine. A link to JBT’s website would invariably appear in the search results. However, because Defendants incorporated that same trademark into BGSE’s metatags, a link to BGSE’s website would also appear. [Eric’s note: this statement has been factually incorrect for about two decades but  ¯\_(ツ)_/¯]. The contractor may click on the BGSE link, believing she could learn more about or obtain Jetaire equipment through BGSE. Although the contractor would eventually learn that was not the case, Bullerdick or some other BGSE representative may be able to convince the contractor to incorporate a competitor’s equipment into the bid in place of JBT’s.

This theory of likelihood of confusion is evaluated under the same six-prong test laid out above. Eschewing the test the court is required to apply, JBT instead cites several cases from the Ninth Circuit suggesting it is enough to show initial interest confusion where the defendant has used the plaintiff’s trademarks in the metatags of the defendant’s website. Because it is undisputed Defendants used JBT’s trademarks in the metatags of BGSE’s website, JBT argues it is entitled to summary judgment. The court disagrees.

Although the first two factors—similarity between the marks and the intent of the alleged infringer—weigh in JBT’s favor, it has presented no evidence concerning the remaining four factors. This deficiency is most notable regarding evidence of actual confusion, which “is often considered the best evidence of a likelihood of confusion.” And weighing perhaps heaviest against likelihood of confusion is the fifth factor, the degree of care likely to be exercised by purchasers. Buyers of expensive, sophisticated military equipment for use with F-35 hangars are unlikely to make such purchases on a whim. Unlike the purchasers of tanning lotions in Australian Gold, Inc. v. Hatfield, contractors do not casually place PC Air units and GPUs into their digital shopping carts. Indeed, from the parties’ papers it appears buyers do not purchase the ground support equipment at issue here directly from a website. The fourth factor, the similarity of products and manner of marketing, is largely inapplicable here as Defendants acted as a distributor of JBT’s products and do not manufacture their own products. Finally, neither party has submitted any evidence concerning the strength of JBT’s trademarks. The court considers this final factor neutral.

Weighing these factors together, the court concludes a reasonable jury could return a verdict for Defendants on the likelihood of confusion element. Accordingly, JBT is not entitled to summary judgment.

* Anthony B. Moore v. Doe, 2020 WL 6804508 (C.D. Cal. October 13, 2020). Again with the keyword metatags:

Although the Ninth Circuit has recognized the possibility of “initial interest confusion” where a web retailer uses the mark of its competitor as a “metatag” (an early internet analog to a keyword purchased for a banner advertisement) to divert the consumer searching for the competitor’s product to its own, the Brookfield court explicitly carved out an exception for nominative fair use. Moreover, courts have since narrowed Brookfield to not apply where the displayed search result is not likely to confuse the consumer as to its source.

* Holbrook Mfg LLC v. Rhyno Manufacturing Inc., 2020 WL 6343083 (N.D. Ill. Oct. 29, 2020). Yet more keyword metatags, and THE COURT BUYS IT THIS TIME 😭:

Plaintiffs have produced evidence establishing that, by embedding the Holbrook™, TORX®, and TORX PLUS® names and trademarks into Rhyno’s website code and metatags, Defendants cause consumers to be diverted to Rhyno’s website, whereby Defendants reap the goodwill Holbrook developed in its name and as a licensed supplier or TORX® and TORX PLUS® products. Therefore, based on the likelihood of initial consumer confusion, combined with the other factors discussed herein, Plaintiffs have adequately established that consumers are likely to be confused by Defendants’ misuse of the marks at issue.

* Dassault Systèmes, SA v. Childress, 2020 WL 5430066 (6th Cir. Sept. 10, 2020):

Dassault’s argument is unavailing. “Simply invoking the term ‘initial-interest confusion’ does not state a viable claim,” let alone warrant judgment as a matter of law. Dassault fails to “explain why, assuming that such initial confusion were to take place, it would not be instantly dissipated without any harm” once the consumer clicks the www.practicalcatia.com link and enters the website—a website with numerous indicators that clarify it is not affiliated with Dassault. Moreover, when www.practicalcatia.com is displayed in Google’s search results, Childress suggests that even the preview of the site displays the disclaimer: “CATIA is a registered trademark of Dassault Systèmes and has no affiliation with Practical Catia Training.”

As I’ve said before, if you are a plaintiff and your strongest legal theory is initial interest confusion, stay home and save your money.

* “The Use of Trade Marks in Keyword Advertising,” a must-read 388 page dissertation/book by Nicole van der Laan.

* Mark McKenna, Innovating Trademark Theory, JOTWELL (November 20, 2020) (reviewing Dev Saif Gangjee, Trade Marks and Innovation?, in Trademark Law and Theory II: Reform of Trademark Law (Edward Elgar).