Who needs Proof of Actual Confusion? Not a TM Plaintiff

by Dennis Crouch

Swagway v Segway and ITC (Fed. Cir. 2019)

The case caption suggests the cause of action – trademark infringement.  Segway complained to the ITC, and the ITC agreed that Swagway’s self-balancing hoverboard products infringe — although it found no infringement for Swagway’s use of SwagTron.  On appeal, the Federal Circuit has affirmed.

The fundamental question in trademark infringement cases is whether “consumers would likely confuse the alleged infringer’s mark with the asserted mark.”  Likelihood of confusion is typically proven based upon a set of factors known as the DuPont factors. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  Although the DuPont case focused on TM registration, courts are now applying the same factors in infringement cases.  See, In re Guild Mortg. Co., 912 F.3d 1376 (Fed. Cir. 2019).

Swagway argued on appeal that the most critical factor in this case should be whether anyone is actually confused.  The products have been sold concurrently for several years any “likely” confusion should be apparent in proof of actual confusion.  No substantial actual confusion was proven – and Swagway suggests that should end the conversation with a no-infringement verdict.

The problem for Swagway here is that the Federal Circuit has substantial precedent on lack of actual confusion during concurrent use — requiring that the accused infringer show “long-term, concurrent use in the same channels of trade.”  And, Swagway did not provide evidence to meet that requirement.

As I was writing this post in a coffee shop, I asked one person whether she would be confused that Swagways were actually Segways — she told me “no.” It turns out that Segway presented no survey evidence of likelihood of confusion.  No matter, Federal Circuit precedent holds that a lack of survey evidence does not lead to an inference that no confusion exists. “The Commission therefore did not err in according no weight to Segway’s lack of survey evidence.”

= = = =

In a separate part of the decision, the Federal Circuit also issued an interesting civil procedure squb:”[W]e hold that the Commission’s trademark decisions, like its patent decisions, do not have preclusive effect.”

 

10 thoughts on “Who needs Proof of Actual Confusion? Not a TM Plaintiff

  1. 4

    the Federal Circuit also issued an interesting civil procedure squb:”[W]e hold that the Commission’s trademark decisions, like its patent decisions, do not have preclusive effect.”

    Stare decisis is for losers, baby. Just ask the Republicans on the Supreme Court.

    1. 4.1

      Corrected for accuracy:

      Just ask the Republicans, Democrats, [OR] the Supreme Court.”

      1. 4.1.1

        “He does not believe in stare decisis, period,” Justice Scalia told one of Justice Thomas’s biographers.

        Go ahead and pretend this is a “both sides” thing, Bildo. You’re a very serious person.

        1. 4.1.1.1

          No pretending required.

          It’s the nature of being “political.”

          But why don’t YOU pretend that one political party is afflicted while the other is not afflicted.

          You always do yourself such a favor in the credibility department with such “one bucketing” of yours.

          1. 4.1.1.1.1

            “Afflicted with …”

            What exactly? Is this where you lecture us all about the oppression of poor whitey?

            Please make my day.

            1. 4.1.1.1.1.1

              My comment has nothing to do with race.

              Why are you trying to inject that ISM?

            2. 4.1.1.1.1.2

              MM brusef, let us call a truce in the oppression wars to discuss this great find I just found for mans like you that are concerned with pimples. Gotta check this out bruh, it’s made specifically for you, they’ll help you out quick (tutorials at bottom). It might help with your mental health if nothing else.

              link to warpaintformen.com

  2. 3

    Medical studies have proven that repeated use of the term “Swagway” results in permanent brain damage.

  3. 2

    The Federal Circuit’s statement not to give preclusive effect to a trademark/unfair trade practice adjudication at the ITC is no longer sustainable after B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). A long time ago, the USSC has moved away from giving Congressional statements/legislative material decisive effect or great weight; see also Union Mfg. Co., Inc. v. Han Baek Trading Co., Ltd., 763 F. 2d 42, 45 (2nd Cir. 1985) citing United States v. Utah Construction Co., 384 U.S. 394, 421-22 (1966) (Giving preclusive effect to a trademark/unfair trade practice adjudication at the ITC).

  4. 1

    A tangent thought:

    ”[W]e hold that the Commission’s trademark decisions, like its patent decisions, do not have preclusive effect.”

    As for patent decisions, given the (possible) change in the very nature of what a patent right means from the Oil States decision (from a personal Private right to a Franchise Public right), should not any “blanket statement” concerning preclusion effects (of government agencies – be that government agency be the Patent Office or the ITC) be re-evaluated?

    I mean, sure pre-Oil States there was a clear and cogent rationale for not letting a decision by the ITC to have preclusive effect. That rationale legitimately may be said to no longer exist under Oil States.

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