Ninth Circuit Provides Roadmap for Reverse Confusion Claims

On July 7, 2017, the Ninth Circuit issued a decision clarifying issues related to pleading and proving reverse trademark confusion claims.

Marketquest Group, Inc. sued BIC over use of the phrase “The WRITE Pen Choice for 30 Years” based on Marketquest’s rights in the mark “The Write Choice.”  The district court granted BIC’s motion for summary judgment, holding that although there was some likelihood of confusion, further analysis was unnecessary because fair use provided a complete defense to Marketquest’s infringement claims.

On appeal, the Ninth Circuit addressed several questions.  First, Marketquest argued that this was a reverse confusion case (where consumers dealing with a smaller senior user believe they are dealing with a larger junior user).  BIC argued that Marketquest’s complaint did not adequately plead reverse confusion.  The Ninth Circuit held that reverse confusion is not a separate claim that needs to be specifically plead, as long as reverse confusion is compatible with the theory of infringement alleged in the complaint.  Here, Marketquest had alleged that customers were confused “as to whether some affiliation, connection, or association exist[ed]” among BIC and Marketquest.  Because BIC had previously acquired smaller companies, the Court found it plausible that consumers might think BIC had acquired Marketquest.

Second, the Court discussed the evidence needed to establish intent in the reverse likelihood-of-confusion analysis.  The Court noted that no one type of evidence is required and detailed several indicia of intent a court might consider, such as evidence that a defendant: (1) deliberately intended to push the plaintiff out of the market by flooding the market with advertising; (2) knew or should have known of the plaintiff’s mark; (3) intended to copy the plaintiff; (4) failed to conduct a reasonably adequate trademark search; or (5) otherwise culpably disregarded the risk of reverse confusion.

The case is Marketquest Group, Inc. v. BIC Corp., Case No. 15-55755 (9th Cir. 2017)