In the latest issue of The Trademark Reporter, Professors Kal Raustiala (UCLA Law School) and Christopher Jon Sprigman (NYU School of Law) consider and critique the role of post-sale confusion in trademark litigation, in their commentary, “Rethinking Post-Sale Confusion.” [pdf here].
We believe post-sale confusion is real and ought to be addressed by the courts when merited by the circumstances and evidence. Post-sale confusion has distinctive characteristics, however, that have been insufficiently recognized and that render its use to establish an infringement cause of action more difficult than conventional wisdom suggests. In many instances post-sale confusion is either unlikely to exist or, even if it does exist among some observers of the goods at issue, it is unlikely to harm either consumers or mark owners. In such cases, courts should award neither injunctions nor monetary relief because there is no cognizable harm to remedy.
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In sum, plaintiffs in a post-sale claim should be required to demonstrate a valid basis for a claim of harm, not just observer confusion, to justify judicial relief. And defendants and courts alike should recognize that post-sale confusion linked to harm is plausible only in an unusual set of circumstances—circumstances that ought to be well-established by evidence, not conjecture, in any infringement litigation
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