"There is no confusion like the confusion of a simple mind."
InPrecisely fifth Friday = precisely 500 words
Like Tom Buchanan, LOC gets around.
Likelihood of confusion is the test if a new trademark is registerable over old trademark uses.
Likelihood of confusion is also the test if one trademark infringes the rights of another.
In other words, you need to avoid likely confusion to obtain a trademark registration – and then you need to find likely confusion to enforce that trademark registration. LOC here, LOC there, LOC everywhere.
Ferrari knows the power of LOC.
Roberts is a Florida man who made and sold Ferrari-style body kits, assembled onto the engine and chassis of used Pontiac Fieros. Roberts’ replicas had no Ferrari badges, but were near-identical body work to then late-model Ferrari Spyders and Testarossas.
Porsche, by example, makes meticulous design patent filings worldwide to protect its designs – its functional product shapes. But at the time, Ferrari had no issued IP on the shapes of its vehicles.
Ferrari had trademark registrations protecting its names and logos, and patent registrations protecting its mechanics.
But the Roberts replicas included no trademark badges. And because it was a Fiero, the Roberts replica included no copied mechanics.
Roberts knew something about law. He required every replica buyer to acknowledge in writing: “I know I am not buying a Ferrari.” Not confused. Don’t even ask.
But people did ask.
All day long, Roberts is explaining who he is not, and how his pricing makes that evident.
All day long, Roberts makes money selling the root of that very confusion.
What’s Ferrari to do?
Like an Italian beauty effortlessly extinguishing the dreams of an over-eager Teutonic suitor, Ferrari filed nothing but still won – making Porsche’s time and investment in intricate patent drawings seem wasteful and pointless.
Ferrari sued under the magic of Section 43(a) of the Lanham Trademark Act, codified at 15 U.S.C. Section 1125(a).
Section 43(a) is ostensibly about trademark rights, but trademarks are an enclosed circle in 43(a)’s Venn diagram. 43(a) prohibits misrepresentations and misleading acts in commerce – whether a trademark is involved or not.
43(a) is a powerful remedy for civil redress of rights – ready to extinguish confusion.
Roberts’ buyers weren’t confused, despite buying a vehicle because of its confusing qualities.
Thus, Roberts’ revenue was not tied to confusion.
But Ferrari’s reputation was – and in trademark law, reputation equals strength.
Roberts’ replicas belched and wheezed just like Pontiac Fieros do, sometimes even worse, with these Fieros being plastic-clad.
Roberts’ replicas were left in the dust when challenged by even the sports modest cars like Corvettes.
South Florida has numerous potential Ferrari buyers parading its sidewalks, on the way to the bank or the shoe shine. These potential Ferrari buyers, half-concerned about their shoes and bank accounts, smell a belching Spyder sputtering by.
A purchasing decision might be made right there: “No Ferrari for me.”
Ferrari used that confusion – the wealthy ambulatory Floridian in the market for a vehicle he can’t really drive and doesn’t really understand – to win its 43(a) claim.
Simple-minded Tom Buchanan would be confused – that’s actionable under trademark law.
