The post-sale confusion doctrine: Why the general public should be included in the likelihood of confusion inquiry

Fordham Law Review

Volumn 67, Issue 6, 1999, Pages 3337-3368

  McCarthy, Anne M ^a  

^a NONE

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EID: 0345911660     PISSN: 0015704X     EISSN: None     Source Type: Journal    
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References (267)

1. See 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 2:8, at 2-15 (4th ed. 1996) [hereinafter McCarthy 4th].
2. See, e.g., Yale Elec. Corp. v. Robertson, 26 F.2d 972, 974 (2d Cir. 1928) (extending trademark protection beyond the then governing "same descriptive properties" test in favor of a standard that contemplated the loss of reputation of the trademark owner); see also Jerome Gilson, Trademark Dilution Now a Federal Wrong: An Analysis of the Federal Trademark Dilution Act of 1995, at 3 (1996) ("[T]he [Yale Electric] case was an important step in the development of trademark protection that went beyond the use of a similar mark on competing goods.").
3. See, e.g., Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942) ("If another poaches upon the commercial magnetism of the symbol [that a trademark owner] has created, the owner can obtain legal redress."); see also Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464,466 (2d Cir. 1955) ("Plaintiffs intention thus to reap financial benefits from poaching on the reputation of the Atmos clock is of major importance.").
4. See, e.g., Stork Restaurant, Inc. v. Sahati, 166 F.2d 348, 350-51, 364 (9th Cir. 1948) (granting injunctive relief against the use of "Stork Club" by an unsophisticated tavern in a distant city in favor of the owner of a similar mark for a glittering New York nightclub).
5. See, e.g., Note, Dilution: Trademark Infringement or Will-O'-The-Wisp?, 77 Harv. L. Rev. 520, 525 (1964) ("As the likelihood of confusion in any particular case becomes attenuated, the operative role of dilution in prompting relief increases, however orthodox the language in which the decision is announced."); see also 2 J. Thomas McCarthy, Trademarks and Unfair Competition § 23.26, at 84-85 (1st ed. 1973) ("[T]he decision-maker has an immediate 'gut reaction' to the likelihood of confusion between two conflicting marks, and the opinion written to justify this intuitive reaction is merely rationalization after the fact of decision.").
6. See, e.g., Note, Dilution: Trademark Infringement or Will-O'-The-Wisp?, 77 Harv. L. Rev. 520, 525 (1964) ("As the likelihood of confusion in any particular case becomes attenuated, the operative role of dilution in prompting relief increases, however orthodox the language in which the decision is announced."); see also 2 J. Thomas McCarthy, Trademarks and Unfair Competition § 23.26, at 84-85 (1st ed. 1973) ("[T]he decision-maker has an immediate 'gut reaction' to the likelihood of confusion between two conflicting marks, and the opinion written to justify this intuitive reaction is merely rationalization after the fact of decision.").
7. See Robert J. Shaughnessy, Trademark Parody: A Fair Use and First Amendment Analysis, 77 Trademark Rep. 177, 183 (1987) (stating that commentators likewise believed that the confusion standard offered inadequate protection).
8. In 1946, section 32 of the Lanham Act provided a cause of action for the use of a registered mark in a manner "likely to cause confusion or mistake or to deceive purchasers as to the source of origin" of the infringer's goods or services. Lanham Act, Pub. L. No. 79-489, 60 Stat. 437 (1946) (codified as amended at 15 U.S.C. § 1114(1)(a) (1994)).
9. See infra note 31 and accompanying text.
10. See supra note 7; see also Note, supra note 5, at 523 ("[I]t seems indisputable that Congress confined protection under the [1946] act to circumstances posing the risk of consumer confusion.").
11. See infra Part II.B.2-3.
12. See infra Part II.B.3.
13. See infra Part II.B.2.
14. See infra Part II.B.1.
15. 15 U.S.C. § 1127 (1994).
16. See 1 McCarthy 4th, supra note 1, § 3:1, at 3-2. In his treatise, Professor McCarthy instructs that although the term trademark is commonly used to refer to the symbol that identifies both goods and services, trade symbols are technically called "service marks." See id. The definition of a service mark is "any word, name, symbol, or device, or any combination thereof . . . used . . . to identify and distinguish the services of one person . . . from the services of others . . . ." 15 U.S.C. § 1127.
17. See J. Steven Gardner, Note, Trademark Infringement, Likelihood of Confusion, and Trademark Parody: Anheuser-Busch, Inc. v. L & L Wings, Inc., 28 Wake Forest L. Rev. 705, 712-13 (1993) (listing a variety of trademark forms).
18. See, e.g., Jordache Enters, v. Hogg Wyld, Ltd., 828 F.2d 1482, 1490-91 (10th Cir. 1987) (upholding "Jordache" as a brand name for jeans).
19. See, e.g., Chemical Corp. of Amer. v. Anheuser-Busch, Inc., 306 F.2d 433, 436, 439 (5th Cir. 1962) (enjoining the use of a slogan similar to "Where there's life . . . there's Bud"); see also 1 McCarthy 4th, supra note 1, § 7:20, at 7-28 to -29 (identifying slogans as serving as marks).
20. See 1 McCarthy 4th, supra note 1, § 7:9, at 7-12 (stating that "an individual letter or a group of letters, not forming a recognizable word, can function as a mark").
21. See, e.g., Nabisco Brands, Inc. v. Kaye, 760 F. Supp. 25, 27-29 (D. Conn. 1991) (finding infringement of the "A.1" mark for steak sauce by the maker of "A.2" brand meat sauce).
22. See, e.g., In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1122 (Fed. Cir. 1985) (holding registrable the color pink for fiberglass insulation upon proof of secondary meaning because "'pink' has no utilitarian purpose, [and] does not deprive competitors of any reasonable right or competitive need").
23. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765-67, 776 (1992) (affirming trade dress infringement judgment for the appearance and décor of a Mexican-style restaurant).
24. See, e.g., In re Clarke, 17 U.S.P.Q.2d (BNA) 1238, 1239-40 (T.T.A.B. 1990) (approving trademark for scented yarn); see also Moon-Ki Chai, Protection of Fragrances Under the Post-Sale Confusion Doctrine, 80 Trademark Rep. 368, 371-72 (1990) (arguing for the extension of trademark protection to fragrances).
25. See 1 McCarthy 4th, supra note 1, § 3:1, at 3-2.
26. See Gardner, supra note 10, at 712; see also Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 412 (1916) ("The primary and proper function of a trade-mark is to identify the origin or ownership of the article to which it is affixed.").
27. See 1 McCarthy 4th, supra note 1, § 3:2, at 3-3.
28. See id.
29. See id. The Lanham Act states that a trademark will "indicate the source of the goods, even if that source is unknown." 15 U.S.C. § 1127 (1994).
30. See 1 McCarthy 4th, supra note 1, § 3:2, at 3-3.
31. See id.
32. The Senate Committee on Patents in its Report on the Lanham Act instructed that: The purpose underlying any trade-mark statute is twofold. One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-mark which it favorably knows, it will get the product which it asks for and wants to get. Secondly, where the owner of a trade-mark has spent energy, time, and money in presenting to the public the product, he is protected in his investment from its misappropriation by pirates and cheats. This is the well-established rule of law protecting both the public and the trade-mark owner. S. Rep. No. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1274; see also 1 McCarthy 4th, supra note 1, § 2:1, at 2-2 to -3 (identifying the two major reasons for trademark protection as the concern for the interest of the public in not being confused and the trademark owner's "interest in not having the fruit of his labor misappropriated"). Professor McCarthy goes on to state that "there is also the policy of encouraging competition from which the public benefits." Id. § 2:1, at 2-3.
33. See S. Rep. No. 79-1333 (1946), reprinted in 1946 U.S.C.C.A.N. 1274, 1274; see also Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 218 (1st Cir. 1989) ("The injury in an infringement case is two-fold: to the trademark owner through loss of good will and presumably profits and to the public because of confusion caused by the similar marks."). A third policy underlying the protection of trademarks is protection of competitors' interests in preventing a limitation on the availability of new marks. See Stanley A. Bowker, Jr., Note, The Song Is Over But the Melody Lingers on: Persistence of Goodwill and the Intent Factor in Trademark Abandonment, 56 Fordham L. Rev. 1003, 1010 (1988). This third policy, however, is tangentially relevant in relation to the other two policies. See id. at 1014 ("The competitor's interest in using a mark occupies the place of a stepchild in the policy factor family.").
34. The term "junior user" "refers to a party who adopts and uses a trademark similar or identical to a mark previously adopted and used by the senior user." Michael J. Allen, The Scope of Confusion Actionable Under Federal Trademark Law: Who Must Be Confused and When?, 26 Wake Forest L. Rev. 321, 321 n.3 (1991).
35. The term "senior user" "refers to the first party to adopt and use a particular trademark in connection with its goods or services." Id.
36. See id. at 323.
37. See id. As Justice O'Connor has stated, trademark infringement "deprives consumers of their ability to distinguish among the goods of competing manufacturers." Inwood Lab., Inc. v. Ives Lab., Inc., 456 U.S. 844, 854 n.14 (1982).
38. See Allen, supra note 33, at 323.
39. Id.
40. See William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & Econ. 265, 270 (1987) ("The value of a trademark is the saving in search costs made possible by the information or reputation that the trademark conveys or embodies about the brand (or the firm that produces the brand)."); Roger E. Meiners & Robert J. Staaf, Patents, Copyrights, and Trademarks: Property or Monopoly?, 13 Harv. J.L. & Pub. Pol'y 911, 931 (1990) ("A trademark would have zero value in a world of perfect information because consumers could determine variations in quality and performance among products at no cost.").
41. See William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & Econ. 265, 270 (1987) ("The value of a trademark is the saving in search costs made possible by the information or reputation that the trademark conveys or embodies about the brand (or the firm that produces the brand)."); Roger E. Meiners & Robert J. Staaf, Patents, Copyrights, and Trademarks: Property or Monopoly?, 13 Harv. J.L. & Pub. Pol'y 911, 931 (1990) ("A trademark would have zero value in a world of perfect information because consumers could determine variations in quality and performance among products at no cost.").
42. See 1 McCarthy 4th, supra note 1, § 2:1, at 2-3.
43. See Courtenay Brian Allen, Note, Holiday Inns, Inc. v. 800 Reservation, Inc.: Defining Use of a Mark and the Source of Confusion in Trademark Infringement, 49 Baylor L. Rev. 847, 856 (1997) (stating that trademark law seeks to "protect the trademark owner's investment of time, energy, and money").
44. Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203, 205 (1942). As Justice Frankfurter asserted, "[i]f another poaches upon the commercial magnetism of the symbol [that a trademark owner] has created, the owner can obtain legal redress." Id.; see also White Tower Sys., Inc. v. White Castle Sys. of Eating Houses Corp., 90 F.2d 67, 69 (6th Cir. 1937) ("Good will may be defined as the favorable consideration shown by the purchasing public to goods known to emanate from a particular source.").
45. 1 McCarthy 4th, supra note 1, § 2:15, at 2-36.
46. See id. § 2:14, at 2-29; see also Schenck, A.G. v. Nortron Corp., 713 F.2d 782, 786 n.3 (Fed. Cir. 1983) (classifying the term "property" as the right to exclude others). As one commentator instructed, "[f]or the trademark owner, the chief value of the mark lies in its ability to associate favorable experiences or impressions with the product to which it is attached, not simply in its capacity to identify the source or sponsorship of that product." Shaughnessy, supra note 6, at 184.
47. James Burrough Ltd. v. Sign of Beefeater, Inc., 540 F.2d 266, 274 (7th Cir. 1976).
48. See Landes & Posner, supra note 39, at 270 ("If the law does not prevent it, free riding will eventually destroy the information capital embodied in a trademark, and the prospect of free riding may therefore eliminate the incentive to develop a valuable trademark in the first place.").
49. Mishawaka Mfg., 316 U.S. at 207.
50. See 1 McCarthy 4th, supra note 1, § 5:2, at 5-3 (tracing the development of trademark law in Anglo-American common law). The tort of passing off consisted "of one passing off his goods as the goods of another." Id.
51. See id. § 5:3, at 5-4.
52. See id.
53. Act of July 8, 1870, ch. 230, §§ 77-84, 16 Stat. 198, 210-12 ("An Act to revise, consolidate, and amend the Statutes relating to Patents and Copyrights.").
54. See Trade-Mark Cases, 100 U.S. 82, 99 (1879); David Klein, The Ever Expanding Section 43(a): Will the Bubble Burst?, 2 U. Bait. Intell. Prop. L.J. 65, 65 n.2 (1993) ("[R]egulation of marks used in intrastate and interstate commerce was unconstitutional because Congressional power to regulate trademarks comes from the Commerce Clause, not the clause empowering the regulation of patents and copyrights (U.S. Const. art. I, § 8, cl. 8)"); see also 1 McCarthy 4th, supra note 1, § 5:3, at 5-6 (stating that "the Act of 1870 was short-lived . . . [because the] United States Supreme Court held . . . [it] unconstitutional on the ground that Congress's power to regulate trademarks was limited to an exercise of the Commerce power").
55. Act of Mar. 3, 1881, ch. 138, 21 Stat. 502, 502 (repealed 1946).
56. Act of Feb. 20, 1905, ch. 592, 33 Stat. 724 (repealed 1946).
57. See 1 McCarthy 4th, supra note 1, § 5:3, at 5-8.
58. Lanham Act, Pub. L. No. 79-489, 60 Stat. 427 (1946) (codified as amended at 15 U.S.C. §§ 1051-1127 (1994)).
59. See A.J. Canfield Co. v. Vess Beverages, Inc., 796 F.2d 903, 906 (7th Cir. 1986) (stating that to prevail against an alleged infringer, the plaintiff "must show a valid trademark and a likelihood of confusion on the part of the public"); Patricia J. Kaeding, Clearly Erroneous Review of Mixed Questions of Law and Fact: The Likelihood of Confusion Determination in Trademark Law, 59 U. Chi. L. Rev. 1291, 1292 (1992). To prove trademark infringement: (1) Plaintiff must establish the validity of its mark, which means that the public recognizes the plaintiffs symbol as identifying its goods and distinguishing them from those of others. There are two ways to establish validity: (a) the plaintiff's trademark is inherently distinctive, or (b) the symbol has become distinctive through the acquisition of secondary meaning. (2) Plaintiff must prove the infringement of its mark; i.e., that the defendant's conduct caused a likelihood of confusion among the relevant purchasing class. See 3 J. Thomas McCarthy, Trademarks and Unfair Competition § 15.1(B) (2d ed. 1984).
60. 15 U.S.C. § 1114(1) (1994). Infringement under Section 32(1) is determined by whether the alleged infringer's use is "likely to cause confusion, or to cause mistake, or to deceive." Id. § 1114(1)(b).
61. Id. § 1125. Section 43(a) forbids the use "in commerce [of] any word, term, name, symbol, or device, . . . or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion." Id. 60. See 3 McCarthy 4th, supra note 1, § 23:1, at 23-8.
62. See id. § 23:1, at 23-8. Under section 43(a), the owner of an unregistered mark must establish two requirements. See Jacqueline Pasquarella, Third Circuit Review: Trademark Law-Confusion over the Likelihood of Confusion?: Dranoff-Perlstein Associates v. Sklar (1993), 38 Vill. L. Rev. 1317, 1322 (1993). First, the owner must demonstrate that the mark is sufficiently distinctive. See id. Marks that are either arbitrary or fanciful, which are known as "inherently distinctive," automatically qualify for trademark protection. See id. A suggestive mark likewise qualifies for automatic protection. See id. A mark that is merely descriptive of the goods to which it is affixed qualifies for protection, however, only if it has acquired secondary meaning. See id. at 1322-23.
63. See Graeme B. Dinwoodie, Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress, 75 N.C. L. Rev. 471, 476 (1997); see also Richard L. Kirkpatrick, Likelihood of Confusion in Trademark Law § 1.4.B, at 1-15 n.43 (1995) ("For most trademark infringement purposes, Sections 1114(1) [§ 32] and 1125(a) [§ 43] are now virtually coextensive except, of course, for the former's requirement that the complainant own a registration.").
64. Dinwoodie, supra note 62, at 477 (footnote omitted).
65. See 3 McCarthy 4th, supra note 1, § 23:1, at 23-6.
66. See Restatement (Third) of Unfair Competition § 20 cmt. d (1995) ("The term 'likelihood of confusion' has long been used to describe the standard of liability for trademark infringement in actions at common law and under federal and state trademark and unfair competition statutes.").
67. See Kirkpatrick, supra note 62, § 1.3, at 1-7 (defining confusion in the legal sense as "confusion of source or sponsorship").
68. See id. § 1.3, at 1-10 ("Where there is confusion in fact, which is the proper subject of a legal claim, it must be 'the direct and proximate result of an act undertaken by the defendant.'").
69. See id. § 1.1, at 1-4; see also Lindy Pen Co. v. Bic Pen Corp., 725 F.2d 1240, 1243 (9th Cir. 1984) (explaining that likelihood of confusion "exists when consumers viewing the mark would probably assume that the product or service it represents is associated with the source of a different product or service identified by a similar mark" (citation omitted)); Sean H. Brogan, Who Are These "Colts?": The Likelihood of Confusion, Consumer Survey Evidence and Trademark Abandonment in Indianapolis Colts, Inc. v. Metropolitan Baltimore Football Club, Ltd., 7 Marq. Sports L.J. 39, 45 (1996) ("'Likelihood of confusion' can be defined as the probability that the accused infringer's mark is the legal cause, or cause in fact, of confused, mistaken or deceived states of mind of potential consumers.")
70. See Brogan, supra note 68, at 45. Judge Learned Hand aptly summarized the likelihood of confusion concept: "[R]elief always depends upon the idea that no man shall be allowed to mislead people into supposing that his goods are the plaintiff's, and that there can be no right or remedy until the plaintiff can show that at least presumptively this will result." Bayer Co. v. United Drug Co., 272 F. Supp. 505, 509-10 (S.D.N.Y. 1921); see also Brett Thomas Reynolds, Comment, Appellate Review of Lanham Act Violations: Is Likelihood of Confusion a Question of Law or Fact?, 38 Sw. L.J. 743, 747 (1984) ("Likelihood of confusion involves both the right of the public not to be confused by dishonest competitors and the right of business owners to benefit from the goodwill and reputation that their time and money have established.").
71. The following cases set forth the factors considered by the Circuits: First Circuit, see Keds Corp. v. Renee Int'l. Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989); Third Circuit, see Merchant & Evans, Inc. v. Roosevelt Bldg. Prods. Co., 963 F.2d 628, 637 (3d Cir. 1992); Fourth Circuit, see Anheuser-Busch, Inc. v. L & L Wings, Inc., 962 F.2d 316, 320 (4th Cir. 1992); Fifth Circuit, see Sno-Wizard Mfg., Inc. v. Eisemann Prods. Co., 791 F.2d 423, 428 (5th Cir. 1986); Sixth Circuit, see Homeowners Group, Inc. v. Home Mktg. Specialists, Inc., 931 F.2d 1100, 1106 (6th Cir. 1991); Seventh Circuit, see Smith Fiberglass Prods., Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993); Eighth Circuit, see Squirtco v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980); Ninth Circuit, see E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir. 1992); Tenth Circuit, see Coherent, Inc. v. Coherent Techs., Inc., 935 F.2d 1122, 1125 (10th Cir. 1991); Eleventh Circuit, see Dieter v. B&H Indus. of Southwest Fla., Inc., 880 F.2d 322, 326 (11th Cir. 1989); see also Jane C. Ginsburg et al., Trademark and Unfair Competition Law 428-29 (2d ed. 1996) (listing the cases that set forth the factors by circuit).
72. 287 F.2d 492 (2d Cir. 1961).
73. See id. at 495.
74. See Anthony L. Fletcher & Robert M. Kunstadt, Trademark Law Handbook 91 (1990 ed.).
75. See id. at 90 ("Each [factor] is to be evaluated as to how it bears on the ultimate question of likelihood of confusion, and the court may have to take into account other variables. . . . The factors are not the end-all of the determination, merely a useful guide." (footnote omitted)).
76. See Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984) (applying likelihood of confusion factors but cautioning that "'[n]ot all these [factors] are always relevant or equally emphasized in each case'" (alteration in original) (quoting Modular Cinemas of America, Inc. v. Mini Cinemas Corp., 348 F. Supp. 578, 582 (S.D.N.Y. 1972))).
77. See Esercizio v. Roberts, 944 F.2d 1235, 1242 (6th Cir. 1991). The Courts of Appeals are split on the appropriate appellate review standard for the likelihood of confusion analysis conducted at the trial level. For a discussion of the differing applications, see Reynolds, supra note 69, at 752-63.
78. See Kirkpatrick, supra note 62, § 1.4, at 1-13.
79. See id. § 1.6, at 1-24.
80. See id. § 1.7, at 1-28.
81. See id. § 1.4.A, at 1-15 (defining "source" as "the entity which controls the nature and quality of the product").
82. Lanham Act, Pub. L. No. 79-489, § 32(1), 60 Stat. 427, 437 (1946) (codified as amended at 15 U.S.C. § 1114(1) (1994)).
83. Kirkpatrick, supra note 62, § 1.4.A, at 1-15; see also Allen, supra note 33, at 325 (defining confusion as to source as "a mistaken belief that the junior user's good or service originates from the source of the good or service marketed under the senior user's mark").
84. See Allen, supra note 33, at 325.
85. See FASA Corp. v. Playmates Toys, Inc., 912 F. Supp. 1124, 1172 (N.D. Ill. 1996) ("The fact that the products at issue may be 'very different' is not dispositive of the issue of the similarity of the products in determining the existence of a likelihood of confusion . . . . The issue is whether the products are the kind the public attributes to a single source." (citation omitted)).
86. See Kirkpatrick, supra note 62, § 1.4.A, at 1-15; see also Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464, 466 (2d Cir. 1955) ("[I]t matters not whether the customers know just who is the source."). For example, few customers know that CREST toothpaste is made by Procter & Gamble. See 1 McCarthy 4th, supra note 1, § 3:7, at 3-15.
87. See Kirkpatrick, supra note 62, § 1.6, at 1-24; see also Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) ("If likelihood of confusion exists, it must be based on the confusion of some relevant person . . . ."); Koppers Co. v. Krupp-Koppers GmbH, 517 F. Supp. 836, 843 (W.D. Pa. 1981) ("Clearly the likelihood of confusion cannot be considered in a vacuum, but must be determined with respect to certain persons.").
88. Lanham Act, Pub. L. No. 79-489, § 32(1), 60 Stat. 427, 437 (1946) (codified as amended at 15 U.S.C. § 1114(1) (1994)).
89. See Allen, supra note 33, at 331 ("Prior to the 1962 Amendment, many courts focused their likelihood of confusion analyses on whether purchasers are likely to purchase the defendant's product while mistakenly thinking it was the plaintiff's.").
90. See Kirkpatrick, supra note 62, § 1.7, at 1-28.
91. See id.
92. See Allen, supra note 33, at 330-31.
93. See 3 McCarthy 4th, supra note 1, § 23:5, at 23-15.
94. See James F. Hoge, The Lanham Act's Housekeeping Amendments, 52 Trademark Rep. 1245, 1245 (1962).
95. See id. at 1246. Specifically, the amendment revised internal Patent Office procedure and prescribed changes in the procedures to be followed by trademark owners when dealing with the Patent Office. See id. at 1247-48.
96. See id. at 1248.
97. Id. at 1246.
98. See id. at 1248.
99. See Pub. L. No. 87-772, 76 Stat. 769 (1962) (codified as amended at 15 U.S.C. §§ 1051-1127 (1994)).
100. See Allen, supra note 33, at 330-31.
101. See 1 McCarthy 4th, supra note 1, § 5:6, at 5-14.
102. See id.
103. Lanham Act, Pub. L. No. 79-489, 60 Stat. 427, 437 (1946) (codified as amended at 15 U.S.C. § 1114(1) (1994)); see also Kirkpatrick, supra note 62, § 1.4, at 1-13 n.36, 1-15 n.43.
104. See Kirkpatrick, supra note 62, § 1.4, at 1-13 n.36.
105. See Syntex Labs., Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 568 (2d Cir. 1971) (construing the 1962 amendment as outlawing "the use of trademarks which are likely to cause confusion, mistake, or deception of any kind, not merely of purchasers nor simply as to source of origin" (emphasis added)); see also Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 221 (5th Cir. 1985) (interpreting the 1962 amendment to "allow any kind of confusion in support of a trademark infringement action" (citations omitted)); Boston Prof'l Hockey Ass'n v. Dallas Cap & Emblem, Mfg., Inc., 510 F.2d 1004, 1012 (5th Cir. 1975) ("[T]He act was amended to eliminate the source of origin as being the only focal point of confusion.").
106. See Kirkpatrick, supra note 62, § 1.4.B, at 1-15; see also Boston Athletic Ass'n v. Sullivan, 867 F.2d 22, 32 (1st Cir. 1989) (recognizing potential buyer confusion that the plaintiff may have "licensed, or otherwise sponsored" the team emblem); Rodeo Collection, Ltd. v. West Seventh, 812 F.2d 1215, 1217 (9th Cir. 1987) (stating that a "likelihood of confusion exists . . . when the consumer would be likely to assume that the identified services are in some way associated with another service-provider"); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 204-05 (2d Cir. 1979) (holding that an X-rated movie would cause an association with the cheerleaders in the minds of viewers and that such an "association results in confusion"). Reverse confusion is another type of actionable confusion. See Kirkpatrick, supra note 62, § 1.4.C, at 1-17; 3 McCarthy 4th, supra note 1, § 23:10, at 23-28 ("In 'reverse confusion,' customers purchase the senior user's goods under the mistaken impression that they are getting the goods of the junior user."); see also Allen, supra note 33, at 328 (explaining that reverse confusion occurs when "the similarity of marks used by the parties will cause the public to believe that the senior user's products emanate from or are sponsored by the junior user"). For an extensive discussion on the reverse confusion doctrine, see Thad G. Long & Alfred M. Marks, Reverse Confusion: Fundamentals and Limits, 84 Trademark Rep. 1 (1994).
107. See Allen, supra note 33, at 325-26.
108. See Ameritech, Inc. v. American Info. Techs. Corp., 811 F.2d 960, 964 (6th Cir. 1987) ("[C]onfusion of sponsorship . . . occurs where the goods do not directly compete. In this situation, the goods are unrelated enough that no inference arises that they originated from the same source, but the similarity of the trademarks erroneously suggests a connection between the sources . . . .").
109. See Kirkpatrick, supra note 62, § 1.4.B., at 1-16.
110. Id.
111. See Pub. L. 100-667, 102 Stat. 3935, 3946 (1988) (codified as amended at 15 U.S.C. § 1125(a) (1994)); see also Kirkpatrick, supra note 62, § 1.4.B, at 1-15 n.43 (citing cases utilizing the sponsorship confusion standard).
112. 15 U.S.C. § 1125(a).
113. See Boston Prof'l Hockey Ass'n v. Dallas Cap & Emblem, Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) (stating that the 1962 amendment accomplished a "broadening of the protection afforded by the statute").
114. S. Rep. No. 100-515, at 40 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5603. This response displays how the judiciary is often the first to recognize and react to changes in the marketplace in terms of trademark protection and how Congress will at times follow suit with an amendment. See Kirkpatrick, supra note 62, § 1.4, at 1-13 ("Judges and legislators have by turns outpaced or followed one another in expanding [trademark] law's reach." (footnote omitted)).
115. See Allen, supra note 33, at 321-22.
116. See supra note 88 and accompanying text.
117. Act of Oct. 9, 1962, Pub. L. No. 87-772, 76 Stat. 769. Similarly, Congress struck out the word "purchasers" from § 2(d) of the Lanham Act so that it too would state to cause "confusion, or to cause mistake or to deceive." Id.
118. See Hoge, supra note 93, at 1248-49.
119. In 1962, Congress struck the term "purchasers" from sections 2(d), 16, 32(1) and 45. See id. at 1248.
120. See id. ("[T]he reference to 'purchasers' is not found elsewhere in the Lanham Act, e.g., Sections 1, 5 and 42.").
121. See Syntex Lab., Inc. v. Norwich Pharmacal Co., 437 F.2d 566, 568 (2d Cir. 1971) (stating that "Congress eliminated . . . qualifying language").
122. See 3 McCarthy 4th, supra note 1, § 23:5, at 23-15.
123. See Kirkpatrick, supra note 62, § 1.7, at 1-28.
124. See supra notes 89-90 and accompanying text.
125. See Kirkpatrick, supra note 62, § 1.7, at 1-28. As the Sixth Circuit explained, "[s]ince Congress intended to protect the reputation of the manufacturer as well as to protect purchasers [through the 1962 amendment], the Act's protection is not limited to confusion at the point of sale." Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir. 1991).
126. Pre-sale confusion is also referred to as initial interest confusion. See 3 McCarthy 4th, supra note 1, § 23:6, at 23-17. For a detailed discussion on pre-sale confusion, see Allen, supra note 33, at 339-44.
127. See 3 McCarthy 4th, supra note 1, § 23:6, at 23-17 to -18.
128. See Chai, supra note 23, at 373. For an extensive list of post-sale confusion cases involving trademark or trade dress infringement actions, see Ann K. Wooster, Annotation, "Post-Sale Confusion" in Trademark or Trade Dress Infringement Actions Under § 43 of Lanham Trade-Mark Act (15 U.S.C.A. § 1125), 145 A.L.R. Fed. 407 (1998).
129. See Allen, supra note 33, at 344-45; see also Academy of Motion Picture Arts and Sciences v. Creative House Promotions, Inc., 944 F.2d 1446, 1455 (9th Cir. 1991) ("Post-sale confusion occurs when consumers view a product outside the context in which it is originally distributed . . . ."); Kirkpatrick, supra note 62, § 1.7, at 1-30 ("Postsale confusion occurs when prospective purchasers or others in the relevant public encounter the marks after the goods have been purchased and put to their intended use.");.
130. 221 F.2d 464 (2d Cir. 1955). In fact, Second Circuit jurisprudence recognized non-purchaser confusion as relevant at least as far back as G. H. Mumm Champagne v. Eastern Wine Corp., 142 F.2d 499 (2d Cir. 1944), a case that involved a cheap domestic champagne's label that looked like the plaintiff's select French import. As Judge Learned Hand cleverly observed: [A]s an evening wears on, the label, and only a very casual glance at the label, is quite enough to assure the host and his table that he remains as freehanded and careless of cost as when he began. At such stages of an entertainment nothing will be easier than for an unscrupulous restaurant keeper to substitute the domestic champagne. Id. at 501.
131. See Mastercrafters, 221 F.2d at 465.
132. See id. at 465-66.
133. See id.
134. See id. at 466-67. This early case demonstrates the notion that a trademark owner has an interest in protecting its goodwill and reputation against the unauthorized use of its mark outside of the consumer confusion context. Mastercrafters did not involve consumer confusion; rather, it centered on public confusion and the exploitation of a trademark owner's goodwill. Accordingly, Judge Frank commented that: [S]ome customers would buy [the] cheaper clock for the purpose of acquiring the prestige gained by displaying what many visitors at the customers' homes would regard as a prestigious article. [Mastercrafters'] wrong thus consisted of the fact that such a visitor would be likely to assume that the clock was an Atmos clock. Neither the electric cord attached to, nor [Mastercrafters'] name on, its clock would be likely to come to the attention of such a visitor; the likelihood of such confusion suffices to render [the] conduct actionable. Id. at 466.
135. See id. ("[Mastercrafters'] intention thus to reap financial benefits from poaching on the reputation of the Atmos clock is of major importance.").
136. See Allen, supra note 33, at 322.
137. See id. ("Courts have been substantially uniform in assessing the types of confusion prohibited by the Lanham Act.").
138. See supra notes 102-13 and accompanying text.
139. See supra notes 102-03 and accompanying text.
140. See supra notes 110-11 and accompanying text.
141. See Allen, supra note 33, at 332.
142. See id. at 331; see also Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713,716 (Fed. Cir. 1992) ("[I]n the case of goods and services that are sold, the inquiry generally will turn on whether actual or potential 'purchasers' are confused.").
143. See Shashank Upadhye, Trademark Surveys: Identifying the Relevant Universe of Confused Consumers, 8 Fordham Intell. Prop. Media & Ent. L.J. 549, 571 (1998); see also 3 McCarthy 4th, supra note 1, § 23:5, at 23-15 to -16 ("A potential customer is one who might some day purchase this kind of product or service and pays attention to brands in that market.").
144. See Kirkpatrick, supra note 62, § 1.6, at 1-25.
145. See Upadhye, supra note 142, at 571.
146. See Dorr-Oliver, Inc. v. Fluid-Quip, Inc., 94 F.3d 376, 382 (7th Cir. 1996) ("The proper examination is not whether some people viewing clamshells in industry plants might be confused, but rather whether consumers in the market for clamshells are likely to be confused."); Nike, Inc. v. "Just Did It" Enters., 6 F.3d 1225, 1229 (7th Cir. 1993); Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206 (1st Cir. 1983) ("If likelihood of confusion exists, it must be based on the confusion of some relevant person; i.e., a customer or purchaser."); Smithkline Beckman Corp. v. Pennex Prods. Co., 605 F. Supp. 746, 751 (E.D. Pa. 1985) ("[T]he inquiry into the likelihood of confusion should center on confusion at the time of purchase."); American Greetings Corp. v. Easter Unlimited, Inc., 579 F. Supp. 607, 616 (S.D.N.Y. 1983) ("[I]t is buyer confusion that the Lanham Act addresses."); Beneficial Corp. v. Beneficial Capital Corp., 529 F. Supp. 445, 450 (S.D.N.Y. 1982) ("[T]he trademark laws do not protect against the possibility that a member of the general public might fall under the mistaken impression that the companies are related.").
147. See Nike, 6 F.3d at 1229; Smithkline, 605 F. Supp. at 752 ("The inquiry into the likelihood of confusion is directed towards the time of purchase.").
148. See Nike, 6 F.3d at 1229 ("We are dealing here with customer confusion when choosing to purchase, or not purchase, the items, not public confusion at viewing them from afar.")
149. 6 F.3d 1225.
150. See id at 1226-27.
151. See id. at 1227.
152. See id. ("[Defendant] admitted that his 'whole point' was to give someone viewing from a distance the impression that the shirt actually read NIKE.").
153. Id. at 1229. Although the Nike court explained that with a legitimate parody the customer should be amused, not confused, the court opted for a circumscribed relevant confusion population. See id. at 1228. Indeed, the Seventh Circuit determined that the inquiry was whether defendant's goods confused actual customers. See id.
154. In finding that the plaintiff failed to establish a likelihood of confusion as a matter of law, the court focused on how involved the purchasing process was for the defendant's products because the items were only available via mail-order. See id. at 1229-30. This discussion illustrates the limitation of the court's confusion analysis to likely confusion of actual purchasers at the time of purchase.
155. See, e.g., Smithkline Beckman Corp. v. Pennex Prod. Co., 605 F. Supp. 746, 752 (E.D. Pa. 1985) (dismissing post-purchase confusion without citing statutory support for this determination).
156. See, e.g., Nike, 6 F.3d at 1228-29 ("[C]ustomer 'confusion' need not be restricted to a mistake regarding the source of the goods; the court should also consider whether the customer would believe that the trademark owner sponsored, endorsed or was otherwise affiliated with the product." (citations omitted)).
157. See Upadhye, supra note 142, at 566-67 ("Point of purchase confusion is the most widely analyzed factor for determining when confusion occurs or vests. When courts apply this approach alone, however, they act contrary to the intent behind the 1962 amendment to the Lanham Act . . . .").
158. See Electronic Design & Sales, Inc. v. Electronic Data Sys. Corp., 954 F.2d 713, 716 (Fed. Cir. 1992) ("[I]n the case of goods and services that are sold, the inquiry generally will turn on whether actual or potential 'purchasers' are confused."); Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989) ("[I]nquiry centers on whether there is likely to be confusion between the two marks among perspective purchasers of women's canvas sneakers."); FASA Corp. v. Playmates Toys, Inc., 912 F. Supp. 1124, 1173 (N.D. Ill. 1996) ("The relevant consumer group in this case includes purchasers and potential purchasers. . . ."); Redken Lab., Inc. v. Clairol Inc., 350 F. Supp. 1301, 1305 n.10 (C.D. Cal. 1972) (interpreting the confusion doctrine to include potential purchasers to a degree).
159. In Redken, for example, the court expressed the following view of the 1962 amendment: Congress merely sought to clarify the logical thrust of the Act - that when products cross in the marketplace for consideration by a consumer the likelihood of confusion is to be determined not only with respect to those who actually make a purchase, but also with respect to those who view the wares with the prospect in mind of making a purchase. Redken, 350 F. Supp. at 1305-06 n.10.
160. See id. at 1305 n.10 ("Congress appeared only to remove the distinction between potential and actual consumers insofar as confusion in selection of goods may be likely to occur in a particular trade.").
161. See Allen, supra note 33, at 354.
162. See id. (criticizing the Redken court for taking too narrow a view of the scope of confusion).
163. See, e.g., Electronic Design, 954 F.2d at 716 (stating that Congress deleted the word "purchasers" from the statute to allow for consideration of potential purchasers).
164. See S. Rep. No. 87-2107, at 4 (1962), reprinted in 1962 U.S.C.C.A.N. 2844, 2847 ("The purpose of the proposed change is to coordinate the language here with that used elsewhere and to omit the word 'purchasers', since the provision actually relates to potential purchasers as well as to actual purchasers."). For example, in Electronic Design, the court relied on the 1962 congressional remark to assert that in the case of goods and services that are sold, the appropriate inquiry is the likelihood of confusion among actual and potential purchasers. Electronic Design, 954 F.2d at 716. As a result, the court articulated the correct analysis for such situations as whether there is likely to be enough overlap of the respective buyers of the parties' goods to confuse actual or potential purchasers. See id.
165. See, e.g., Esercizio v. Roberts, 944 F.2d 1235, 1248 (6th Cir. 1991) (Kennedy, J., dissenting) (arguing that the majority "misconstrues the scope of protection afforded by the Lanham Act by . . . reading an anti-dilution provision into the language of section 43(a)").
166. 944 F.2d 1235 (6th Cir. 1991).
167. See id. at 1249 (Kennedy, J., dissenting).
168. See id. (Kennedy, J., dissenting).
169. Id. at 1248 (Kennedy, J., dissenting).
170. See id. at 1248-49. (Kennedy, J., dissenting).
171. See id. (Kennedy, J., dissenting).
172. Post-sale confusion is not applicable in all trademark infringement cases because of the product at issue in a given case. For example, as the court explained in Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 631 F. Supp. 735 (S.D.N.Y. 1985), "[t]he possibility of post or non-sale confusion among prospective purchasers is not a significant factor in cases involving products which are not generally visible post-sale, such as food products or toiletries, . . . or where the mark in question is not highly visible even if the product remains in circulation." Id. at 746 (citations omitted).
173. See Insty*Bit, Inc. v. Poly-Tech Indus., Inc., 95 F.3d 663, 672 (8th Cir. 1996) ("[A]n action for trademark infringement may be based on confusion of consumers other than direct purchasers, including observers of an allegedly infringing product in use by a direct purchaser."); Payless Shoesource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 991 (Fed. Cir. 1993) (applying Tenth Circuit law, the Federal Circuit vacated the denial of a preliminary injunction based primarily on pre-sale differences, and remanded with instructions to consider post-sale confusion); Esercizio, 944 F.2d at 1245 ("[I]n this case . . . members of the public, but not necessarily purchasers, were actually confused by the similarity of the products."); United States v. Hon, 904 F.2d 803, 808 (2d Cir. 1990) (holding that the Trademark Counterfeiting Act, which contains the same confusion element as the Lanham Act, prohibits confusion among the public at large); United States v. Torkington, 812 F.2d 1347, 1350, 1352-53 (11th Cir. 1987) (recognizing that although no one would buy cheap Rolex copies thinking they were genuine, counterfeit Rolex watches created likelihood of post-sale confusion); Marathon Mfg. Co. v. Enerlite Prods. Corp., 767 F.2d 214, 221 (5th Cir. 1985) (interpreting the 1962 Amendment as allowing "any kind of confusion in support of a trademark infringement action"); Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 205 (2d Cir. 1979) (holding that an X-rated movie would cause an association in the minds of the viewers with the cheerleaders, and that "[t]his association results in confusion"); Grotrian, Helfferich, Schultz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975) (reasoning that even though customers may know the difference between the products, the public may subliminally associate the names, thereby causing confusion); Clinique Lab., Inc. v. Dep Corp., 945 F. Supp. 547, 557 (S.D.N.Y. 1996) (finding a likelihood of post-sale confusion because point-of-purchase displays and advertising did nothing to address the problem of post-sale confusion of non-purchasers); Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200, 1216 (N.D. Ga. 1995) (finding that the placement of infringing t-shirts in the public after sale would cause the public viewing the t-shirts to associate the shirts with plaintiff, thereby finding a likelihood of confusion regardless of whether the purchaser was confused); Educational Testing Serv. v. Touchstone Applied Science Assocs., 739 F. Supp. 847, 853 (S.D.N.Y. 1990) (finding a likelihood of confusion among schoolchildren, the ultimate consumers of the infringed product); Nabisco Brands, Inc. v. Conusa Corp., 722 F. Supp. 1287, 1291 (M.D.N.C. 1989) (finding a likelihood of postsale confusion because the similarity in the parties' candy would not be evident until a consumer opened the candy); Lois Sportswear, 631 F. Supp. at 747 ("Because the mark is consistently visible to the purchasing public as a constant advertisement of the product on which an evaluation of it is affixed, the similarity of the marks in a postsale setting must be taken into consideration."); Rolls-Royce Motors, Ltd. v. A & A Fiberglass, Inc., 428 F. Supp. 689, 694 n.10 (N.D. Ga. 1977) (stating that the non-confusion of purchasers does not preclude a finding of public confusion that results when a product is put to its intended use). In Nabisco, Inc. v. PF Brands, Inc., No. 99 Civ. 0008 (SAS), 1999 WL 47313 (S.D.N.Y. Feb. 3, 1999), Judge Scheindlin of the Southern District of New York asserted that "[p]ost-sale confusion is undoubtedly actionable." Id. at *1 n.3. Although the court's grant of a preliminary injunction was based on a finding that the plaintiff was likely to succeed on its federal dilution claim, see id. at *18, the opinion stated that the Goldfish crackers at issue in the case are normally eaten from small plastic bags or bowls, rather than out of the packaging. See id. at *1. This reference indicates the court's concern over likely confusion among non-purchasers.
174. See Esercizio, 944 F.2d at 1244-45.
175. See supra note 32 and accompanying text.
176. See Esercizio, 944 F.2d at 1244-45.
177. See id.
178. See id.
179. 470 F.2d 689 (2d Cir. 1972).
180. See id. at 692.
181. See id.
182. See supra notes 129-34 and accompanying text.
183. See David M. Tichane, The Maturing Trademark Doctrine of Post-Sales Confusion, 85 Trademark Rep. 399, 414 (1995).
184. See Rolex Watch U.S.A., Inc. v. Canner, 645 F. Supp. 484, 493 (S.D. Fla. 1986) ("The fact that an immediate buyer of a $25 counterfeit watch does not entertain any notions that it is the real thing has no place in [the confusion] analysis.").
185. See id. at 492-95.
186. See id. at 492.
187. See id. at 493 ("This Court is of the belief that not only does the Defendants' narrow view of the confusion question jar with the evolution of the Act, but also that it serves to undermine the effect of the law.").
188. 645 F. Supp. 484.
189. See id. at 492.
190. See id. A trademark infringement suit involving a federally registered trademark is governed by section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1) (1994). Section 32(1) provides in pertinent part: "Any person who shall, without the consent of the registrant. . . use in commerce any reproduction . . . of a registered mark . . . likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in a civil action . . . ." Id.
191. Rolex Watch, 645 F. Supp. at 493.
192. 1984 Pub. L. No. 98-473, 98 Stat. 2178 (codified as amended at 18 U.S.C. § 2320 (1994)). The Act prohibits the intentional trafficking or attempted trafficking in goods or services bearing a counterfeit mark. See 18 U.S.C. § 2320(a). For a detailed discussion of the Trademark Counterfeiting Act and its legislative history, see Brian J. Kearney, Note, The Trademark Counterfeiting Act of 1984: A Sensible Legislative Response to the Ills of Commercial Counterfeiting, 14 Fordham Urb. L.J. 115, 133-44 (1986).
193. In United States v. Hon, 904 F.2d 803 (2d Cir. 1990), the Second Circuit found that Congress desired to include the confusion requirement of the Lanham Act into 18 U.S.C. § 2320, and that it was successful in doing so. See id. at 805. The court further instructed: As stated by the chief House and Senate sponsors of the Trademark Counterfeiting Act, likely "to cause confusion, to cause mistake, or to deceive," . . . is the key phrase in the remedial section of the Lanham Act. . . and its inclusion here is intended to ensure that no conduct will be criminalized by this act that does not constitute trademark infringement under the Lanham Act. Id. at 805 (quoting Joint Statement on Trademark Counterfeiting Legislation, 130 Cong. Rec. 31,673, 31,675 (1984)).
194. See id. at 805-08; United States v. Yamin, 868 F.2d 130, 132-33 (5th Cir. 1989); United States v. Gantos, 817 F.2d 41, 43 (8th Cir. 1987); United States v. Torkington, 812 F.2d 1347, 1351-53 (11th Cir. 1987); United States v. Infurnari, 647 F. Supp. 57, 59-60 (W.D.N.Y. 1986); United States v. Gonzalez, 630 F. Supp. 894, 896 (S.D. Fla. 1986).
195. See Tichane, supra note 182, at 414. Although the case of Rolex Watch, 645 F. Supp. 484, involved a trademark infringement claim, the court's consideration of the injuries that might ensue as a result of counterfeit goods is helpful: Individuals examining the counterfeits, believing them to be genuine Rolex watches, might find themselves unimpressed with the quality of the item and consequently be inhibited from purchasing the real time piece. Others who see the watches bearing the Rolex trademarks on so many wrists might find themselves discouraged from acquiring a genuine because the items have become too common place and no longer possess the prestige once associated with them. Id. at 495.
196. Tichane, supra note 182, at 414.
197. See id. at 414-15.
198. 904 F.2d 803.
199. Id. at 804.
200. See id. at 804-05.
201. See id.
202. See id. at 805.
203. See id.
204. See id.
205. See id. at 805-06.
206. See id. at 806. The decision quoted instructive legislative history: "Congress was concerned not only that '[t]rademark counterfeiting . . . defrauds purchasers, who pay for brand-name quality and take home only a fake,' but also that 'counterfeiters [can earn] enormous profits . . . by capitalizing on the reputations, development costs, and advertising efforts of honest manufacturers at little expense to themselves.'" Id. (quoting S. Rep. No. 98-526, at 4-5 (1984), reprinted in 1984 U.S.C.C.A.N. 3182, 3630-31).
207. See Allen, supra note 33, at 353 (identifying two of the rationales that the Second Circuit offered for the Hon decision).
208. See Hon, 904 F.2d at 806 ("[A]n interpretation of section 2320's confusion requirement to include the non-purchasing public advances the important purpose underlying the trademark laws of protecting the trademark owner's investment in the quality of the mark and his product's reputation . . . .").
209. See id. at 807.
210. See id. at 807.
211. See id.
212. Id. at 808.
213. Allen, supra note 33, at 353-54.
214. See supra text accompanying notes 164-70.
215. See Allen, supra note 33, at 351 ("The Ferrari court's grant of injunctive relief is difficult to accept. . . . [T]he court's reliance on a likelihood of confusion to find infringement is improper, unless one takes the view that the Lanham Act protects against confusion among the general non-purchasing public." (footnotes omitted)); William D. Raman, Ferrari - Can Dilution Be the Standard for Likelihood of Confusion?, 1 Tex. Intell. Prop. L.J. 1, 1 (1992) ("[T]he majority [opinion] looked to the public as the relevant universe and essentially adopted a tarnishment or dilution test for determining likelihood of confusion.").
216. Kirkpatrick, supra note 62, § 1.5.A, at 1-22.
217. See Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813, 825 (1927) (articulating the dilution concept as "the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods").
218. Section 45 of the Lanham Act sets forth the definition of "dilution" as the: "lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of - (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception." 15 U.S.C. § 1127 (Supp. III 1997).
219. See supra Part II.A.1-2.
220. See, e.g., Esercizio v. Roberts, 944 F.2d 1235, 1245 (6th Cir. 1991) (quoting the district court's findings that a mark was diluted in a discussion of point-of-sale confusion); see also Kirkpatrick, supra note 62, § 1.5.A, at 1-22 ("Many of the evidentiary factors used in the analysis of likelihood of confusion cases also apply to dilution cases.").
221. See supra text accompanying notes 40-47.
222. 31 U.S.P.Q.2d (BNA) 1146 (D. Minn. 1994).
223. See id. at 1147.
224. See id. at 1150.
225. Although some decisions by the Eighth Circuit are receptive to non-purchaser confusion, see, e.g., Insty*Bit, Inc. v. Poly-Tech Indus., Inc., 95 F.3d 663, 672 (8th Cir. 1996) (indicating that the likely of post-sale confusion among observers of an allegedly infringing product is actionable), Munsingwear illustrates that if the facts of a particular case do not support a finding of confusion, a plaintiff will not succeed.
226. The Second Circuit, in United States v. Hon, 904 F.2d 803 (2d Cir. 1990), articulated this point: "[T]he Senate Report suggests that the amendment's purpose was to make clear that the confusion requirement includes potential purchasers as well as actual purchasers. . . . Still, nothing in the legislative history or the statute as amended excludes from its reach public, nonpurchaser confusion . . . ." Id. at 807 n.2; see also Allen, supra note 33, at 357 ("Unfortunately, neither the 1962 Amendment nor any other legislative source provides or even suggests a definition of the ambiguous term 'potential purchaser.'").
227. Malla Pollack, Your Image Is My Image: When Advertising Dedicates Trademarks to the Public Domain - With an Example from the Trademark Counterfeiting Act of 1984, 14 Cardozo L. Rev. 1391, 1455 (1993).
228. Kirkpatrick, supra note 62, § 1.6, at 1-25.
229. See Koppers Co. v. Krupp-Koppers GmbH, 517 F. Supp. 836, 844 (W.D. Pa. 1981) ("Although the findings [in G.H. Mumm and Mastercrafters] were made under theories of unfair competition, they certainly were part of the legal context in which Congress acted in adopting the 1962 amendment.").
230. See, e.g., Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464 (2d Cir. 1955) (stating confusion of the general public actionable); G.H. Mumm Champagne v. Eastern Wine Corp., 142 F.2d 499 (2d Cir. 1944) (recognizing the relevance of non-purchaser confusion).
231. Mastercrafters, 221 F.2d at 466.
232. See Hoge, supra note 93, at 1245.
233. See supra Part II.B.3; see also Tichane, supra note 182, at 399 (stating that the post-sale confusion doctrine has spread to virtually every federal circuit and that it is well-settled that the doctrine covers confusion among casual observers).
234. See The United States Trademark Association Trademark Review Commission Report and Recommendations to USTA President and Board of Directors (1987) [hereinafter USTA Report], reprinted in 77 Trademark Rep. 375, 378 (1987). The USTA Report commented that, "a number of courts have viewed the deletion as evidence of Congressional intent to broaden the test for likelihood of confusion. Now, they say, the Act is designed to prohibit confusion of any kind, not merely of purchasers or customers nor as to source of origin." Id., reprinted in 77 Trademark Rep. 375, 378 (1987) (citation omitted). Although the commission referred to the change as inadvertent, and thus appeared to disagree with the purportedly expansive interpretation, it nonetheless did not recommend any congressional action. See id., reprinted in 77 Trademark Rep. 375, 378 (1987).
235. See id., reprinted in 77 Trademark Rep. 375, 378 (1987).
236. 386 U.S. 714 (1967); see also USTA Report, supra note 233, reprinted in 77 Trademark Rep. 375, 378-79 (1987).
237. Fleischmann Distilling, 386 U.S. at 717-21.
238. See Pub. L. 93-600, 88 Stat. 1955 (1975) (codified as amended at 15 U.S.C. § 1117 (1994)). Another example of congressional reaction to a judicial decision was the passage of the Trademark Clarification Act of 1984, Pub. L. 98-620, 98 Stat. 3335 (codified as amended at 15 U.S.C. § 1127(2)), which nullified the "consumer motivation" test of genericness announced in Anti-Monopoly, Inc. v. General Mills, Inc. 684 F.2d 1326 (9th Cir. 1982). The Ninth Circuit held that, in determining if a trademark was generic, the purchaser's motivation for requesting the product was the crucial test. See Anti-Monopoly, Inc. v. General Mills Fun Group, 611 F.2d 296, 303-04 (9th Cir. 1979). Under this test, the court held that the famous MONOPOLY trademark was generic and thus unprotectible. In response to clamor within the trademark community, Congress restored the traditional test of genericness, which is an assessment of the primary significance of the term to the purchasing public, see 1 McCarthy 4th, supra note 1, § 5:8, at 5-15 to -16, not, as the Ninth Circuit held, the purchaser's motivation for requesting the product by its mark, see Anti-Monopoly, 611 F.2d at 303; see also 1 McCarthy 4th, supra note 1, § 5:8, at 5-15 to -16.
239. 437 F.2d 566 (2d Cir. 1971).
240. See Tichane, supra note 182, at 403.
241. See supra note 104.
242. See, e.g., Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 631 F. Supp. 735, 745 (S.D.N.Y. 1985) (quoting the interpretation of the 1962 amendment in the Syntex case).
243. See supra notes 234-37 and accompanying text.
244. Pub. L. No. 100-667, 102 Stat. 3946 (codified as amended at 15 U.S.C. § 1125(a) (1994)).
245. S. Rep. No. 100-515, at 2 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5578.
246. See id. at 5577.
247. See, e.g., United States v. Correll, 389 U.S. 299, 305-06 (1967) (quoting a settled principle in tax law that long continued interpretation of statutes by the Treasury are deemed to have received congressional approval and thus have the effect of law).
248. See Hoge, supra note 93, at 1245.
249. See id. at 1245-46, 1254.
250. See id. at 1248.
251. Id. In addition, the commentator noted that this view of trademark law is also consistent with the 1905 Act. See id. He explained that although a section of the 1905 Act expressly referred to purchasers, the section also contained a reference to "the, mind of the public." Id. 251. See id. at 1249.
252. See id.
253. Id.; see also Calvin Klein Cosmetics Corp. v. Parfums de Coeur, Ltd., 824 F.2d 665, 669 n.4 (8th Cir. 1987) ("In applying principles of trademark law, courts commonly refer to 'the consumer,' much like the references made to 'the reasonable person' in resolving questions of tort law.").
254. See Hoge, supra note 93, at 1245. Further, Mr. Hoge expressed satisfaction with the committee's recommendations: "The work of the Coordinating Committee demonstrated that negotiation - when patient and sincere - can lead to constructive accomplishment." Id. at 1254.
255. See Trade-Mark Cases, 100 U.S. 82, 92 (1879) ("This exclusive right was not created by the act of Congress, and does not now depend upon it for its enforcement. The whole system of trade-mark property and the civil remedies for its protection existed long anterior to that act, and have remained in full force since its passage.").
256. See, e.g., 135 Cong. Rec. H1207, H1215 (daily ed. Apr. 13, 1989) (statement of Rep. Kastenmeier) ("For businesses, trademarks are a kind of badge of honor, and it is important that their investments in those marks be protected.").
257. 984 F.2d 567 (2d Cir. 1993).
258. See id. at 570 ("After an expensive advertising campaign, Gillette's product began to sell very well.").
259. See id. at 576.
260. See id.
261. See Gardner, supra note 16, at 705.
262. Id.
263. See John V. Tait, Note, Trademark Regulations and the Commercial Speech Doctrine: Focusing on the Regulatory Objective to Classify Speech for First Amendment Analysis, 67 Fordham L. Rev. 897, 936 (1998).
264. See id. at 936-37.
265. See 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 2.07, at 2-37 (3d ed. 1992).
266. 904 F.2d 803 (2d Cir. 1990)
267. Id. at 806.