Case Examples:
Trademark confusion for sporting goods manufacturers. Two manufacturers produced t-shirts, one as a primary sales line and the second as a promotional item for a separate unrelated product, a boat. The second firm chose a name for its boat that was very similar to the name of the first company, and there was no confusion between the products, but the promotional t-shirts given with the boats were very similar to the primary sales line of the plaintiff. An intercept study was conducted to ascertain whether consumers would be confused as to the mark, even with different spellings of the names of the products. Confusion between the marks was established and the defendant was persuaded to drop its promotion.
Trademark confusion and patent infringement for sporting goods manufacturers. A company was acquiring previously used sporting goods, refurbishing the product in a way that ignored key design components (so the product was not up to original specs), relabeling the product with the labels of both the original manufacturer and the refurbisher, and offering the product at a discounted price with claims that the refurbished product performed as well as the original. Research showed that purchasers were confused regarding who was the manufacturer of the product being purchased, what the product was that they were purchasing vis-a-vis the design and construction, and what the performance characteristics of the refurbished product really were. Results of the evaluation forced a settlement and an agreement to cease misleading marketing of product.
Trademark confusion for banks. A medium sized bank in the northeast expanded its operations and opened a new branch in a neighboring state. A small bank with a similar name and only one branch in the new state filed a trademark confusion claim against the first bank, the defendant. A mall intercept was conducted for the plaintiff to establish confusion in the marketplace. We determined that the plaintiff’s trademarked name was actually the fourth instance of the use of the name in that state, that 82 banks in the United States had very similar names, that approximately 15 states had two banks with exactly the same name, and that the words used in the name of the bank had secondary meaning, but not secondary to the bank. We also re-analyzed the intercept survey conducted on behalf of the plaintiff and found that the survey included a significant number of respondents who would never be customers of either bank (it even included foreign nationals visiting the U.S. as tourists), asked leading questions, was confusing in the way questions were worded, and that the analysis results presented on behalf of the plaintiff were slanted to show confusion when there was none. The case was thrown out on summary judgement.
Trademark confusion and trademark dilution, for clothing manufacturers. Confusion due to the use of two very similar trademarks was alleged, with lost sales claimed at the retail level. Research showed that consumers could not differentiate between the two trademarks and that confusion was quite apparent. Resulted in second manufacturer agreeing to drop his labeling and use of different logos so that confusion would end.
