United States: Can Internet Comments And Search Results Prove Trademark Infringement?

You've selected a unique trademark, marketed and sold products under the brand, and continue to build up a base of satisfied customers. But then a new company emerges with a very similar trademark, piggybacking on your success. Even your customers are outraged and post comments about your companies' similar trademarks. You're delighted, but can you skip the survey and use these internet comments as evidence of confusion? This article addresses the admissibility of internet evidence and its probative value.

Evidence of Past Actual Confusion Is a Silver Bullet – Effective, but Rare

To determine if your competitor is infringing your trademark, courts evaluate whether consumers are likely to be confused about the source of the products coming from the two trademarks. Examples of actual confusion strongly suggest a future likelihood of confusion. See United States Court of Appeals for the Ninth Circuit Model Civil Jury Instructions No. 15.6. But persuasive actual confusion evidence based on internet comments or search results is uncommon. Even when admissible, internet evidence may not support relevant consumer confusion, or there may be insufficient evidence to show a customer is likely to be confused.

Internet Comments Survive the Hearsay Rule and Are Generally Admissible Evidence

It is often difficult to identify the speaker of online comments. But the statements are not hearsay if they concern the source of products rather than the speaker's confusion, for example, "Nutella makes great coffee for Starbucks." In this case, the statements are not offered for the truth of the matter asserted (that Nutella actually makes great coffee for Starbucks). Instead the statement is offered to show assumed association between the parties. FRE 801(c) (2); see, e.g., ABT Systems, LLC v. Emerson Electric Co., Case No. 4:11-CV-00374 AGF, 2013 WL 468501, *1 (E.D. Mo., Feb. 7, 2013) (denying motion in limine to exclude "customer product reviews appearing on the Internet" as long as "not offered for their truth of the matters asserted"). And even if the commenter expressly mentioned her confusion ("I mistakenly thought Nutella made Starbucks coffee"), the comment would be admissible under the state of mind exception to the hearsay rule. FRE 803(3). See JIPC Mgmt. v. Incredible Pizza Co., No. CV 08-04310, 2009 U.S. Dist. LEXIS 133019, *48 (C.D. Ca., July 14, 2009) (finding certain emails were admissible under the state of mind exception since the emails "reflect the correspondents' belief that [plaintiff] operated defendants' Tulsa restaurant").

But Internet Comments Seldom Support Confusion Regarding Source

Instead of showing confusion about the source of a product, typos and misspellings may only show that words are "very close" or that "some people spell badly." Pignons S.A. de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482, 489 (1st Cir. 1981). Since these anonymous speakers will not be available to clarify what they were thinking while they posted their comments, courts have a difficulty attributing the speaker's error to confusion rather than carelessness. Thus, courts have found that misspellings of a competitor product name on the internet are not evidence of "instances of actual confusion by [a company's] customers regarding the source of its products." Groupion, LLC. v. Groupon, Inc., 859 F.Supp.2d 1067, 1079 (E.D. Ca. 2012).

Even internet evidence that does show confusion about product source may only suggest that the internet user "appears to be someone so easily confused that even trademark law cannot protect her." See Uber Promotions, Inc. v. Uber Technologies, Inc., 162 F. Supp. 3d 1253, 1272 (N.D. Fl. 2016). The low quantity, and quality, of internet comments can also limit their persuasiveness since not every individual's statement will represent the broader consumer base, particularly for companies with large sales volume. See Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225, 1231 (3rd Cir. 1978) (finding "nineteen misdirected letters" to be "extremely minimal evidence" given sales of 50 million). Confusion of only a few individuals may indicate that "a significant portion of the general public is not likely to be confused." See Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1052 (9th Cir. 1998). Cherry-picked examples of actual confusion should not support a likelihood of confusion.

And Relevant Internet Comments Should Come From Prospective Purchasers

To assess actual confusion, "courts must focus on whether prospective purchasers — and not other industry members or general members of the public — are likely to be deceived." Bulman v. 2BKCo, Inc., 882 F. Supp. 2d 551, 562 (S.D.N.Y. 2012). Thus, a court found a vendor solicitation email indicating confusion "not probative on the issue of actual confusion" by consumers. 27-24 Tavern Corp. v. Dutch Kills Centraal, No., 14-CV-1625, 2015 U.S. Dist. LEXIS 133648, *42 (E.D.N.Y., Sept. 14, 2015). Courts have also found internet comments irrelevant when made by persons from other countries who have no knowledge of U.S. market conditions. See Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 320 (S.D.N.Y. 2000); see also Icon Enters. Int'l v. Am. Prods. Co., No. CV 04-1240, 2004 U.S. Dist. LEXIS 31080, *110-111 (C.D. Ca., Oct., 7, 2004) (holding that internet chat room comments "by unknown and unknowable users" were irrelevant).

And even though consumer inattentiveness during purchasing decisions is relevant to the likelihood of confusion inquiry, consumer inattentiveness at other times may not suggest product source confusion. Instant Media, Inc. v. Microsoft Corporation, No. C 07-02639 SBA, 2007 WL 2318948, *14 (N.D. Ca. Aug. 13, 2007) ("Relevant confusion is that which affects purchasing decisions, not confusion generally."). For example, evidence that a customer sent an inquiry regarding the defendant to the plaintiff and then sent a follow-up email stating "oops" "suggest[ed] carelessness as much as, if not more than, confusion." Uber Promotions, Inc., 162 F. Supp. 3d at 1272. And, misdirected communications are not evidence that a purchasing decision is at stake or that there is "a significant risk to the sales, goodwill, or reputation of the trademark owner." Id. (quoting Dorpan, S.L. v. Hotel Meliá, Inc., 728 F.3d 55, 63-64 (1st Cir. 2013)); see also Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 636 (6th Cir. 2002) (holding that misdirected consumer emails were more likely to indicate that consumers "were inattentive or careless when attempting to find the e-mail address for [defendant] rather than confused about the source of the [product].")

Search Results Likewise Show Neither Source Confusion nor Consumer Confusion

While internet comments about companies are plentiful, it is often even easier to compile search results where a search for the plaintiff's product will also provide a consumer with access to the defendant's product. But a search engine is not a consumer. Thus, courts have criticized these "attempts to prove actual confusion of consumers using evidence that 'the Google search engine is now confused.'" Dahl v. Swift Distrib., Inc., No. 10-00551, 2010 U.S. Dist. LEXIS 35938, *24-25 (C.D. Ca., April 1, 2010) (finding no evidence of actual confusion and denying a temporary restraining order); see also Oculu, LLC v. Oculus VR, Inc., No. 14-0196, 2015 WL 3619204, *13 (C.D. Ca., June 8, 2015) (holding that the "propensity to auto-correct searches" "is not evidence of customer confusion"); Quia Corp. v. Mattel, Inc., No. 10-1902, 2011 U.S. Dist. LEXIS 76157, *9-10 (N.D. Ca., July 14, 2011) ("the mere fact that an Internet search engine intermingles links to two products is not evidence of consumer confusion"). A consumer who inputs search terms relating to the plaintiff may not attribute the defendant's product to the plaintiff merely because the search returns an entry for the defendant's product. Consumers expect a search to return unrelated products. See Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 932 (9th Cir. 2015)(affirming summary judgment for defendant "[b]ecause Amazon's search results page clearly labels the name and manufacturer of each product... [so] no reasonably prudent consumer accustomed to shopping online would likely be confused as to the source of the products."); see also Groupion, 859 F.Supp.2d 1067,1079 

Takeaways

Internet evidence is generally admissible and most relevant when it relates to an actual customer's own mental state of confusion. Helpful evidence will concern inattentiveness or confusion during customer purchases rather than other dealings with the company such as sending emails to the right address. And the evidence should be from relevant purchasers rather than vendors or third-party businesses. Given these tight parameters for internet comments and search results, they are not plaintiff's golden goose. Instead, a plaintiff will still need to assess confusion based on factors like how similar the goods, trademarks, marketing, and consumers are, and whether the consumers are careful or the defendant intended an association with the plaintiff's brand. An expert survey can also clarify that the evidence of customer perception comes from actual consumers and that it affects purchasing decisions. But even where internet evidence can help, it likely will not be strong evidence of a likelihood of confusion.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
18 Oct 2017, Conference, California, United States

This three-day program will focus on the tax issues presented by the entire spectrum of modern major corporate transactions, from relatively simple single-buyer acquisitions of a division or subsidiary to multi-party joint ventures, cross-border mergers, and complex acquisitions of public companies with domestic and foreign operations, including spin-offs and other dispositions of unwanted operations.

19 Oct 2017, Conference, California, United States

Privacy professionals are facing a number of challenges in determining how best to achieve GDPR compliance and maintain compliance for the long term. The Alliance of Global Privacy Solution Providers (the "Alliance") has been formed with a mandate to educate privacy professionals on making informed decisions on their approach to planning, implementing and managing GDPR and long-term privacy compliance.

30 Oct 2017, Seminar, California, United States

This program will address some of the hottest legal and policy topics that online platforms have brought to the fore: free speech, hate speech, fake news, privacy and surveillance, artificial intelligence, augmented reality, changing notions of “ownership” of information and software-enabled consumer products, and the perennial issue of copyright.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.