Under federal law, trademark infringement claims mainly governed by the Lanham Act. The Lanham Act imposes civil liability on “[a]ny person who … uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading misrepresentation of fact, which … in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities.” One type of Lanham Act trademark infringement claim is called “reverse confusion” infringement. As a leading treatise on the law of trademark and unfair competition law has explained, the “paradigm case [of reverse confusion] is that of a knowing junior user with much greater economic power who saturates the market with advertising of a confusingly similar mark, overwhelming the marketplace power and value of the senior user’s mark.” MCarthy on Trademarks and Unfair Competition § 23:10 (5th ed.). Peter Mavrick is a Fort Lauderdale business litigation attorney, and represents clients in business litigation in Miami, Boca Raton, and Palm Beach. The Mavrick Law Firm represents businesses and their owners in breach of contract litigation and related claims of fraud, non-compete agreement litigation, trade secret litigation, trademark infringement litigation, employment law, and other legal disputes in federal and state courts and in arbitration.
In a reverse-confusion case, the “senior user,” i.e., the party that used and had the trademark first, may suffer harm or consumers may suffer harm. For example, the defendant’s use of the trademark may diminish the value of the plaintiff’s trademark as a source indicator. As another example, consumers may come to believe the smaller, senior user of the mark is itself a trademark infringer. The United States Court of Appeals for the Sixth Circuit in Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960 (6th Cir. 1987), explained in pertinent part that: “[t]he public comes to assume the senior users products are really the junior user’s or that the former has somehow connected to the latter. The result is the senior user loses the value of the trademark—its product identity, corporate identity, control over goodwill and reputation, and ability to move into new markets.”
In a reverse confusion case, the plaintiff argues that the defendant, i.e., the junior but more powerful trademark user, “has been able to commercially overwhelm the market and saturate the public conscience with its own use of the mark, thereby weakening and diminishing the value of the senor user’s mark.” Wreal, LLC v. Amazon.com, Inc., 38 F.4th 114 (11th Cir. 2022). Courts focus on the relative strengths of the marks to gauge the ability of the junior user’s mark to overcome the senior user’s mark. Important precedent from the United States Court of Appeals for the Third Circuit in Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 269 F.3d 270 (3d Cir. 2001), explained that “in a reverse confusion situation, the senior user’s claim may be strengthened by a showing that the junior user’s mark is commercially strong. The greater relative strength of the junior mark allows the junior user to ‘overwhelm’ the marketplace, diminishing the value of the senior user’s mark.”
To evaluate reverse-confusion cases, federal courts compare the competing trademarks and consider “the overall impressions that the marks create, including the sound, appearance, and manner in which they are used.” The Eleventh Circuit in E. Remy Martin & Co., S.A. v. Shaw-Ross Int’l Imps., Inc., 756 F.2d 1525 (11th Cir. 1985), explained that, “[i]n evaluating the similarity of marks, we must consider the overall impression created by the marks, including a comparison of the appearance, sound and meaning of the marks, as well as the manner in which they are displayed.” Similarity of any of these elements, i.e., appearance, sound, connotation, and commercial impression, may be sufficient to find the trademarks are similar. In one case, for example, the United States Court of Appeals for the Federal Circuit in Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874 (Fed. Cir. 1992), found that “CENTURY 21” and “CENTURY LIFE OF AMERICA” are similar in part because “consumers must first notice th[e] identical lead word.”
Peter Mavrick is a Fort Lauderdale business litigation lawyer, and represents clients in Miami, Boca Raton, and Palm Beach. This article does not serve as a substitute for legal advice tailored to a particular situation.