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.
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.
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”).
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.
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].”)
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 (E.D. Ca. 2012) (holding that a “customer was not confused” when a Google search for the defendant returned the plaintiff’s unrelated product). But search engine results can be used to show that products occupy the same market or that a mark is descriptive. See Treemo, Inc. v. Flipboard, Inc., 53 F. Supp. 3d 1342, 1362-63 (W.D. Wa. 2014) (holding that Google search results “show[ed] that the two [products] operate within the same space”); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002) (Board found that Google search results were some evidence that mark was descriptive); cf. In re St. Helena Hospital, 774 F. 3d 747, 754-55 (Fed. Cir. 2014) (“Advertising on the Internet is ubiquitous and proves little, if anything, about the likelihood that consumers will confuse similar marks used on such goods or services.”).
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.