Quick Links from the Past Year, Part 3 (Trademarks)

Initial Interest Confusion

It’s 2022 and we’re still dealing with this shit. SMH. Can we please just outright kill the doctrine and spend our time on more meaningful problems?

* “the initial interest confusion doctrine…requires a finding of likelihood of confusion.” Arizona Board of Regents v. Doe, No. 21-16525 (9th Cir. May 13, 2022).

In the district court ruling, the opinion said: “it cannot be the case that every social media post written by a college student that happens to use the school’s colors and/or logo in the post, and identifies the school’s location as the location of the poster, creates initial interest confusion and qualifies as an actionable trademark violation.” Arizona Board of Regents v. Doe, 2021 WL 3631269 (D. Ariz. Aug. 17, 2021)

* Platinum Properties Investor Network, Inc. v. Sells, 2021 WL 4429067 (S.D. Fla. Feb. 9, 2021): “Initial interest confusion, however, goes to the seventh likelihood of confusion factor – the existence and extent of actual confusion; it is not a stand-alone basis for a claim of infringement.”

* Spin Master v. Aciper, 2022 WL 992888 (S.D.N.Y. April 1, 2022):

Initialinterest confusion occurs when a potential customer is initially attracted to the junior user’s product by virtue of its use of a mark that is confusingly similar to the senior user’s mark.” Plaintiffs neither plead facts nor even argue that any consumers ever were drawn to Jscout’s products because of its use of any mark. Again, the most I can say of Plaintiffs’ pleadings is that a consumer may be drawn to Jscout’s product because Plaintiffs have created consumer interest in a novel category of remote-control toy cars. However, this is not something the Lanham Act protects.

* H&R Block, Inc. v. Block, Inc., 2022 WL 1316222 (W.D. Mo. April 28, 2022): “That confusion has been amplified by Block’s public communications and worsened by third parties who have, and will likely continue, to link Block, Inc. to its “building blocks” (e.g., Cash App and Square) and to its new Cash App Taxes service, all of which compete to some degree with services offered by H&R Block. Some of that confusion is likely to be initial interest confusion that causes consumers to be interested in Cash App’s tax or related services because they believe it is associated with H&R Block.”

* Theorem, Inc. v. Citrusbyte, LLC, 2021 WL 5750238 (C.D. Cal. Nov. 16, 2021): “Plaintiff has provided multiple instances of actual confusion of participants in the same industry or field, even if none are instances of actual consumer confusion. Such evidence of actual confusion likely constitutes evidence of initial interest confusion, which the Ninth Circuit (and others) has determined to be actionable.” [citing Brookfield from over 20 years ago]

* Elevate Federal Credit Union v. Elevations Credit Union, 2022 WL 798901 (D. Utah March 16, 2022): “Elevations also makes an initial interest confusion argument – that these instances of initial interest confusion qualify as evidence of actual confusion and should be given great weight. The Tenth Circuit has found initial interest confusion to qualify as evidence of actual confusion when low-cost goods are involved. See Australian Gold, 436 F.3d at 1238. The facts of this case are different because utilizing credit union services requires much more care. It is difficult for the court to imagine a consumer being genuinely confused as to the source of their credit union services at the point that they would be just about to complete a transaction. However, regardless of whether initial interest confusion here qualifies as actual confusion, the numbers involved are still problematic. The court concludes that the isolated five instances here are de minimis numbers of confusion, and they accordingly do not support a finding of a genuine issue of material fact as to likelihood of confusion.”

* Covantage Credit Union v. Blue Cross Blue Shield of Michigan Mutual Insurance Co., 2022 WL 821668 (E.D. Mich. March 16, 2022): “as the plaintiff notes, there nevertheless is a possibility that its members may be lured to the defendant’s subsidiary’s website due to the similarity of the defendant’s Covantage Health mark. Such “initial interest confusion” is actionable even if customers never buy the defendant’s services, which they would never do here. Initial interest confusion afflicts both sophisticated and unsophisticated buyers, and neither party has demonstrated that the plaintiff’s buyers use a high degree of care.” [the court cited to 20 year old opinions in support of this proposition.]

* Troubleshooter Network, Inc. v. HomeAdvisor, Inc., 2021 WL 6881640 (D. Colo. Nov. 24, 2021): “Plaintiffs have presented evidence that over 60 individuals who clicked on HomeAdvisor’s ad containing Martino’s name completed service requests with HomeAdvisor and that HomeAdvisor generated a “net result” (after refunds) of $2,946.52 from selling other service requests as leads to service providers. However, because Plaintiffs do not earn revenue from consumers who utilize services from a Martino-endorsed company, the fact that HomeAdvisor earned revenue from its ads does not demonstrate that Defendants’ advertisements caused any revenue to be diverted away from Plaintiffs.”

* Boost Beauty, LLC v. Woo Signatures, LLC, 2022 WL 409957 (C.D. Cal. Feb. 7, 2022). “the WooLash advertisement that appeared after the “boostlash” search is labeled as an advertisement, and features a product clearly labeled as WooLash, with no reference to plaintiff’s BoostLash product. Accordingly, it is highly unlikely that a consumer searching for the BoostLash product would confuse it for the WooLash product. Summary judgment on plaintiff’s Keyword Claim is appropriate.”

Also of note: “Silver Smith adds that “Google only displayed [defendants’] ad 176 times for a total of only 12 clickthroughs based on the conquesting keyword targeting of ‘boostlash,” ’ and that “Google only displayed [defendants’] ad 152 times for a total of only 28 clickthroughs based on the conquesting keyword of ‘boost lash.’” Further, “assum[ing] that average sales were distributed evenly over the clicks that brought in customers, Woo’s ads targeting ‘boostlash’ and ‘boost lash’ only directly brought in 1.75% of sales, grossing only $75.68.”” Investing in the lawsuit was a good move. SMH.

* MakeMyTrip India v. Booking.com, CS (COMM) 268/2022 & I.As. 6443-47/2022 (Delhi High Court April 27, 2022): “the use of the mark ‘MakeMyTrip’ as a keyword through Google Ads Program by one of its major competitors, Booking.com is infringing use…the Defendants [including Google] are restrained from using the mark ‘MakeMyTrip’ together/ in conjunction, with or without spaces for the purpose of using it as a keyword on the Google Ads Program.”

Other Stuff

* TTAB says “POTIFY” for a marijuana buying app dilutes (by blurring) the “SPOTIFY” trademark. The panel noted that the 329M Google search results for POTIFY are all SPOTIFY results, which almost certainly is a misinterpretation of the search results.

* Motogolf.com, LLC v. Top Shelf Golf, LLC, 2022 WL 834790 (D. Nev. March 21, 2022). A click fraud case against a competitor:

Motogolf fails to state a false advertising claim under the Lanham Act. First, Motogolf does not plausibly allege that the defendants’ clicking activity constitutes commercial advertising. The defendants are purportedly misrepresenting themselves as consumers, not making false statements in their own advertising campaign for the purpose of influencing consumers to buy the defendants’ goods or services. There is no allegation that the defendants’ click activity is communicated to any consumers, much less widely disseminated to the purchasing public.

Even if the clicking activity could constitute a false statement in a commercial advertisement, there is no allegation that the false statement is about the defendants’ own products or Motogolf’s products. Rather, the defendants are allegedly misrepresenting themselves as potential consumers. And because they are misrepresenting themselves as consumers to Motogolf only, they are not making a material representation that is likely to influence other consumers’ purchasing decisions.
* Confidence Empire, Inc. v. Meta Platforms, Inc., 2022 U.S. Dist. LEXIS 60218 (D. Conn. March 31, 2022). Court reject lawsuit over Facebook’s alleged failure to remove pages containing the plaintiff’s name “Confidence Empire.”

* Hermes Int’l v. Rothschild, 1:22-cv-00384-JSR (SDNY May 18, 2022). Trademark lawsuit over MetaBirkins NFTs survives motion to dismiss.