Rorschach ≠ Likelihood of Confusion

One of the problems with “trademark bullying” can be a failure to comprehend the legal standard governing most trademark disputes: Likelihood of confusion.

Another is a failure to appreciate the subjective nature of whether the legal line has been crossed or whether there has been an attempted trademark overreach.

Understanding that trademark rights are dynamic (not static, meaning they can grow or shrink over time) and that this type of intellectual property is not amenable to precise demarcation like a real estate property line, is key.

Likelihood of confusion is a fact-intensive determination that seeks to weigh multiple factors beyond actual confusion or an emotionally-charged intent factor.

That said, when I’m helping a client respond to overreach, besides sticking to the facts and avoiding an emotional response, I’ve found Rorschach can help too:

The Rorschach inkblot test recognizes that different people can see different things when looking at the very same thing, sometimes wildly different things.

Likelihood of confusion is a surrogate to predict consumer perceptions, so when a demand exhibits an unhealthy preoccupation of the brand owner’s mind, say so.

One trademark demander quietly went away after receiving this partial response:

“Setting aside how a relevant customer would view the design, the design looks no more like the letter N (with an extraneous line) than it does the letter X within parallel lines, or a plus sign within parallel lines, or a stylized number 8, or a stylized lemniscate, or a tilted hour glass, or a spindle, or a bowtie, or a stylized 4b, or any number of other equally strained possibilities. With a good imagination, one can pick out a lot of things when confronted with a design element, but a Rorschach exercise isn’t the test for trademark infringement or confusing similarity.”

Join us next week for a vibrant discussion about how to avoid the “trademark bullying” label, when designing a coherent trademark enforcement strategy.

One example we’ll analyze is the Backcountry.com back-down to backlash.

Another is the example Seth Godin wrote about on DuetsBlog in April 2019.

I’m thankful for the opportunity to discuss this important trademark topic with one of my talented partners at GT, Candice Kim, and we’re also joined by the learned Leah Chan Grinvald, Professor of Law, at Suffolk University in Boston, who authored Shaming Trademark Bullies.

The Strafford webinar takes place at noon CST, Thursday January 16.

Here is a link on how to sign up, or let me know if you’d like a complementary pass, we still have a few to share with some of our loyal readers.

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