October 28, 2014 at 6:14 pm #380Kevin CollinsParticipant
What is the relevant universe of thinkers for demonstrating likelihood of dilution by blurring? I know that fame is measured in the general consuming public of the US, but what about blurrring? I’m not sure that the universe of consumers matters to the outcome, but the question arose because, in Nikepal, the survey targeted Nikepal’s current and prospective customers.
November 15, 2014 at 11:59 pm #397Barton BeebeKeymaster
Though I suspect it’s too late to respond helpfully on the question of what the relevant universe of thinkers is for demonstrating dilution by blurring, I’ll say that it seems to me to be a really tough question.
Even for the LOC test, the relevant universe is not totally clear. Is it (1) the union of plaintiff’s and defendant’s current and potential customers (all customers for either P or D) or (2) the intersection of P’s and D’s customers (the overlap between P and D) or (3) P’s customers, some of which may also be D’s customers or (4) D’s customers, some of which may also be P’s customers? The orthodox view is that the relevant universe for LOC is actually (4) just D’s customers (or in reverse confusion cases, (3) P’s customers). At least that’s what courts have said when assessing survey evidence. (Cites lifted from McCarthy 32:159 below).
But maybe for blurring, the relevant universe is actually (A) P’s current and potential customers. They’re the ones who are experiencing the blurring of the link between the plaintiff’s mark and its product/source. Or maybe the relevant universe should be (B) the “general consuming public of the United States” since that’s the fame standard. Finally, there’s a good argument that due to the nature of the fame requirement, categories (A) and (B) will likely almost always be the same group.
RELEVANT UNIVERSE: FORWARD CONFUSION
Hutchinson v. Essence Communications, Inc., 769 F. Supp. 541, 559-60 (S.D.N.Y. 1991) (“It is well-settled in this circuit that the universe of the survey must include potential purchasers of the junior user’s product.” A survey of only potential users of the senior user’s product was held improper.); Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 54 U.S.P.Q.2d 1205 (S.D. N.Y. 2000), aff’d without opinion, 234 F.3d 1262 (2d Cir. 2000) (in a case of “forward confusion,” the proper universe to survey is composed of purchasers of the junior user’s goods); Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., 402 F. Supp. 2d 1312, 79 U.S.P.Q.2d 1187 (D. Kan. 2005) (survey of prospective buyers of all t-shirts and caps was too broad a universe because it was not limited to prospective buyers from the junior user: those who would be likely to buy t-shirts and caps at motorcycle dealerships. Survey results were disregarded.). Regarding the difference between “forward” and “reverse” confusion see § 23:10.
RELEVANT UNIVERSE: REVERSE CONFUSION
Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 29 U.S.P.Q.2d 1321, 1326 (2d Cir. 1994) (the court, finding a likelihood of confusion, said that since the issue is whether the senior user’s products, such as BAYER aspirin, are perceived to be made by the junior user, it is appropriate to survey customers of the senior user’s BAYER aspirin product); Citizens Financial Group, Inc. v. Citizens Nat. Bank of Evans City, 383 F.3d 110, 121, 72 U.S.P.Q.2d 1389, 65 Fed. R. Evid. Serv. 350 (3d Cir. 2004), cert. denied, 544 U.S. 1018, 125 S. Ct. 1975, 161 L. Ed. 2d 857 (2005) (“The court should limit survey evidence in reverse confusion cases to the customers of the senior user.”). See Barber, The Universe, in Trademark and Deceptive Advertising Surveys, p. 31 (ABA, Eds Diamond & Swann 2012) (In reverse confusion surveys, “the relevant universe is the senior user’s potential customers.”).
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