State of Initial Interest Confusion After Promatek by Eric Goldman

State of Initial Interest Confusion After Promatek v. Equitrac
Eric Goldman
Marquette University Law School

Case citations can be found at

1.      What is Initial Interest Confusion?

  • “The use of another’s trademark in a manner reasonably calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion” (Brookfield)
  • Initially, Initial Interest Confusion was part of multi-factor likelihood of confusion analysis, evaluated under:
    • Purchaser care/sophistication
    • Actual confusion
    • Competitive proximity

2.      Brookfield v. West Coast, 174 F.3d 1056 (9th Cir. April 22, 1999)

  • Video rental store launches website at and uses “moviebuff” in metatags
  • High-end entertainment publisher has senior TM rights in “moviebuff”
  • Parties have some competitive proximity
    • Court says some searchers might settle for defendant’s database instead of continuing to search for plaintiff’s
  • Using standard multi-factor test, court holds domain name infringes
  • A word about search engine operations
    • Robots index every word on web pages
    • Consumers do keyword searches
    • Search engines display sites containing keyword
    • Relevancy algorithms historically gave credit for metatags placement, but algorithms have changed
  • Court says standard multi-factor test doesn’t apply to metatag analysis
  • Metatags create initial interest confusion
  • The billboard analogy

3.      Some 7th Circuit Initial Interest Confusion Cases

  • Dorr-Oliver, 94 F.3d 376 (1996)
    • Trade dress case between corn wet milling manufacturers
    • Initial Interest Confusion requires competitive passing-off: “luring potential customers away from a product by initially passing off its goods as those of the producer’s”—not found here
  • Rust Environment, 131 F.3d 1210 (1997)
    • Former employees launch environmental consulting firm under abandoned name
    • Initial Interest Confusion evaluated under purchaser care factor—not found
  • Syndicate Sales, 192 F.3d 633 (1999)
    • Trade dress case involving plastic baskets for funeral bouquets
    • Initial Interest Confusion doesn’t overcome a finding of no consumer confusion
  • Eli Lilly, 233 F.3d 456 (2000)
    • Natural Prozac alternative marketed as “Herbrozac” and “Prozac” in metatags
    • District court analyzes Initial Interest Confusion under actual confusion factor and finds likelihood of confusion
    • 7th circuit reverses Initial Interest Confusion analysis but affirms ruling; bad faith demonstrated by metatag usage

4.      Promatek v. Equitrac, 300 F.3d 808 (7th Cir. Aug. 13, 2002, amended Oct. 18, 2002)

  • w  Defendant includes competitor’s name in metatags
    • n   But Equitrac also provided maintenance and service for Copitrak equipment
  • w  Court evaluates Initial Interest Confusion under purchaser care factor
  • Likelihood of confusion found due to goodwill misappropriation
    • Redefines Initial Interest Confusion: “when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated”
    • Duration of confusion irrelevant; “Equitrac cannot unring the bell”
    • “Customers who are directed to Equitrac’s webpage are likely to learn more about Equitrac and its products before beginning a new search for Promatek and Copitrak”
  • Later, via amendment, court says metatag usage is actionable only when TM is used to deceive consumers into thinking Equitrac was Copitrak
    • How did Equitrak’s metatags deceive?
  • Is “passing off” an element of Initial Interest Confusion or not?
    • AM Gen. v. DaimlerChrysler (Nov. 18, 2002)
  • Remedy: Equitrac’s home page displays disclaimer containing plaintiff’s TMs
    • Who won this case?

5.      If you are plaintiff…

  • Initial Interest Confusion permits you to bypass standard likelihood of confusion multi-factor test (Brookfield)
  • Initial Interest Confusion occurs when defendant tries to influence search listing placement through metatags or otherwise (Eli Lilly, Promatek, JK Harris)
  • Initial Interest Confusion occurs when consumers experience momentary confusion (NYSSCPA, OBH)
  • Initial Interest Confusion occurs when defendant obtain marketplace attention through goodwill association (Mobil Oil, Elvis Presley, Promatek)

6.      If you are defendant…

  • Initial Interest Confusion requires passing off/bait ‘n’ switch (Dorr-Oliver, Northland Ins.)
  • No Initial Interest Confusion unless word is used as source identifier (Netscape)
  • Nominative fair use (Welles)
    • Product not readily identifiable without the mark
    • Mark used only as reasonably necessary to identify the product
    • No suggestion of sponsorship or endorsement
  • Disclaimers cure any Initial Interest Confusion (Bihari)
  • Initial Interest Confusion only applies if parties are competitors (Dorr-Oliver, Netscape, TNN, Checkpoint, Clue)
  • Initial Interest Confusion is insufficient confusion (TeleTech, Chatam, Strick)

7.      Academic Criticism

  • Initial Interest Confusion lacks definition and structure
  • Efforts to attract attention are everywhere
    • By definition, marketing tries to “capture initial consumer attention”
    • Search engines index every word
    • Possibility v. likelihood of confusion
  • TM owners can use Initial Interest Confusion to curtail publication of criticism, parody, neutral information, comparative advertising and ads by ancillary servicers without any real confusion
  • Courts make questionable assumptions about consumer/search behavior
    • Consumers expect perfect relevancy in searches
    • Consumers searching on TM expect to find only TM owner
    • Consumers seeing search listing are confused about what’s at the destination
    • Consumers stop their searches mid-stream
    • Hitting the back button is a “harm”
    • Metatags make a difference in relevancy algorithms
    • Consumers accept irrelevant search results
  • An emerging TM right in gross?.