A panel of three federal appeals judges had second thoughts recently, changing its mind on whether Amazon would have to face trial over a trademark dispute with a watchmaker. The change in course was most likely spurred by a desire to avoid re-opening the debate over the internet “initial interest confusion” doctrine. While this decision provides relief to Amazon, watchmaker Multi Time Machine (Multi Time) probably feels a little gypped.
This flip-flopping by the panel relates to the issue of “initial interest confusion” which arises from the trademark claim brought against Amazon. Multi Time claims go something like this: Amazon returns suggestions for competitors’ watches when a customer searches for a particular model of watch made by Multi Time that Amazon does not carry. By suggesting competitors’ watches, it may lead to consumers falsely assuming these other products are from or associated with Multi Time. In doing so, Amazon allegedly uses Multi Time’s own brand equity to steer customers away from Multi Time and toward competitors, thus capitalizing on the good will of Multi Time.
Initial Interest Confusion type of trademark infringement does not require a likelihood of confusion at the time goods are purchase, only that consumers are initially confused in order to get their attention leading to a sale. There is a well-known analogy to explain Initial Interest Confusion that was proffered in Brookfield v West Coast Entertainment. In that case, the court proposed a hypothetical regarding competing video stores. Blockbuster Video puts a billboard on the highway advertising a West Coast Video (its competitor) at an exit. However, there is no West Coast Video at this exit, but there is a Blockbuster Video. A consumer exits the freeway in hopes of finding a West Coast Video store, but instead finds the Blockbuster Video store. The consumer obviously sees that there is no West Coast Video store and that there is only a Blockbuster Video. The consumer decides to purchase from Blockbuster Video as a suitable replacement. Even though the there is no confusion at the time of purchase, Blockbuster is still capitalizing on West Coast Video’s trademark and misappropriating West Coast Video’s goodwill.
Multi Time challenges Amazon’s redirect of customers to competitors based off of a search for genuine Multi Time watches. Multi Time believes that Amazon should return a search indicating there are no matches instead of suggesting competitors’ products. In response, Amazon contends that there is no likelihood of consumer confusion, the keystone of trademark law, because its search results are labeled with the name and manufacturer of each item and include a picture. Allegedly, reasonable consumers who are familiar with online shopping would realize that there is no connection between the other suggested products and Multi Time’s MTM watches.
It’s interesting that the panel was so quick to reverse itself. With this flip-flopping of decisions, it’s easy to see that there is still some confusion about the correct trademark outcome here. The internet has created some new and unique trademark issues and sometimes it is a struggle to identify exactly how they should be handled. Ultimately, utilizing the likelihood of confusion standard gives good guidance to whether there really is a trademark issue or not. Would a reasonably prudent consumer be confused as to the source of the goods offered? If not, there is no likelihood of consumer confusion. That is what the panel of judges decided in this case the second time around.
Amazon isn’t the only company who has faced this type of challenge. Google and Yahoo were victorious in similar suits. With the explosion of internet keyword searches, initial interest confusion has become a hotly contested issue.
Article written by DA Johnson. Connect with DA on Google+
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