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The Intellectual Property StrategistFeaturesIntellectual PropertyTrademarks

Eighth Circuit Permits Recovery for 'Initial-Interest Confusion' In Trademark Cases

By Eric Alan Stone and Catherine Nyarady
October 01, 2021

The Lanham Act protects trademark holders against consumer confusion by providing a cause of action against the use of similar marks on similar products if that use creates a likelihood of confusion. The likelihood of confusion analysis is often focused on confusion at the time of purchase, but the U.S. Court of Appeals for the Second, Third, Fifth, Sixth, Seventh, Ninth, Tenth and Federal Circuits permit mark holders to allege infringement based on presale, initial-interest confusion (whereas the First, Fourth, and Eleventh Circuits do not).

Earlier this year, the U.S. Court of Appeals for the Eighth Circuit joined the majority of circuits in permitting recovery for initial-interest confusion in certain circumstances. Select Comfort Corp. v. Baxter, 996 F.3d 925 (8th Cir. 2021), cert. filed, No. 21-212. The Supreme Court is currently considering whether to review that decision and potentially resolve the circuit split on this issue.

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The Initial-Interest Confusion Doctrine

The Lanham Act provides a cause of action against "[a]ny person who…uses in commerce any word, term, name, symbol, or device…false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion…as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. 15 U.S.C. §1125(a).

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