Am I Infringing? Part 1: Consumer Confusion
This guest blog post is written by Anna-Grace Nwosu, our soon to be departing to law school staff member! Anna-Grace has done an excellent job of showing introducing this topic. All legal conclusions, statements, or opinions have been vetted by Thomas Maddrey.
At some point in the duration of your entrepreneurial or your creative endeavors, you are likely to ask yourself a pivotal question: am I infringing? How business owners deal with that question can make or break a new company. This idea lodged in my head after I read about an unfortunately named art gallery in Brooklyn. The gallery focuses on “DIY, mobile, [and] impermanent” creations. These works range from photo-collage to performance art held in the back of a van. So, with this focus on impermanence, what did they decide to name the exhibition space? UHaul. Sound a little too familiar? That’s what the moving company U-Haul thought when they saw the name too.
The gallery changed the name to Haul Gallery not long after getting a call from U-Haul’s general counsel where the company threatened a trademark infringement suit. It turns out that the gallery received advice stating that they could “legally use the name… because we are in a different area of business.” We’ll get into the details of that advice a bit later.
Of course, there are many outright ways one could infringe on the intellectual property of another that I surely don’t need to describe to you. But what about those grey areas that could go one way or the other? In this series, I’m aiming to elucidate those very areas.
First off, to understand the various operations of possible infringement in this case and for subsequent parts of this series, we need to get to the heart of trademarks themselves.
In the eyes of the US government, trademarks are meant to avoid consumer confusion. This has some interesting implications and applications that are best explained through an example.
Let’s say there are two bakeries in a city. Both are named Stargazer and seem pretty similar outside of one fact: Stargazer 1 is delicious and fresh while Stargazer 2 has a reputation for serving expired food. Now as a consumer in this city, you may have trouble discerning which bakery is which and end up eating a moldy croissant. That’s the kind of confusion trademarks protect from and Stargazer 1, so long as they were around earlier than Stargazer 2, would be well within their rights to sue the second bakery.
Now let’s say that in the same city, there are two companies named Stargazer but one is a bakery and the other sells astronomy equipment. Can the bakery go after the shop citing trademark infringement? Now that’s a much harder sell. That’s because very few consumers are likely confused by croissants and telescopes. If these two companies decided to trademark their names, they would be categorized into two different trademark classes.
This is probably the kind of example that the gallery’s legal team gave the owners when initially choosing the name UHaul, though it seems they also dropped the hyphen for good measure. After all, the discrepancy between an art gallery and a moving company does seem fairly broad on its face. You may not notice, but you see examples of this all the time. Think Dove soap and Dove chocolate, or Domino brand sugar and Domino’s Pizza. In these cases, a large key to avoiding infringement is that each pair of companies operate in two different (if but slightly different) trademark classes as I described in the bakery/astronomy shop example.
But what sets these companies apart from the gallery and the moving company? Well, there are many other factors to consider. Does one product require vastly more thought in purchasing? (Think two brands which have similar names but make products at wildly different price points- a ballpoint pen and a luxury car for example.) Is the marketing of the two products also very similar? Have any consumers actually reported confusion? Did the second company have an intent to capitalize on another company’s fame for their own gain?
If I had to guess, the tipping point occurred when the gallery started hosting exhibitions in the back of a U-Haul branded van outside the storefront. In addition, it surely doesn’t help the gallery’s case when owners are stating that they named the company UHaul because “admittedly we liked that it was also a big brand name.” Now that’s a little too close for comfort.
You can read more about the gallery’s dilemma HERE.