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Reverse confusion is a type of trademark infringement that occurs where there are two users of similar marks, each selling related goods or services. Reverse confusion is the opposite of forward confusion. So what is forward confusion?
Typically, a junior user of a mark will be stopped in the name of the law by a senior of that mark because the established senior user sends a nastygram or sues. In the typical case, however, the junior user’s goods are confused as being the goods of the senior user. This is known as “forward confusion”.
Reverse confusion occurs where there is a junior and senior user of a similar mark, and the goods of the senior user are confused as being the goods of the junior user.
For example: There is a kitchen accessories store in downtown Portsmouth, New Hampshire called Attrezzi, LLC. They opened up in 2002, and got a New Hampshire trademark registration in 2003. Attrezzi, LLC in Portsmouth is still an operating local business.
Also in 2003, Maytag, created a brand to use on its appliances, called Attrezzi. Though Attrezzi, LLC asked Maytag to cease and desist, such did not happen, and the LLC sued. The Court eventually issuing an opinion on the dispute, the 1st Circuit Court of Appeals (opinion here), described two types of reverse confusion.
The Court said that reverse confusion can result either:
because current or prospective customers of the senior user associate the senior user’s product with an inferior product offered by the junior user (infringer), or
because the junior user’s use of the mark saturates the market and overwhelms the senior user, such that the senior user loses the value of the trademark, its product identity, corporate identity, control over its goodwill and reputation, and ability to move into new markets.
The Court then found that Maytag had infringed the trademark of Attrezzi, LLC in Portsmouth, based on the theory of reverse confusion, and ordered damages be paid.
But what if your company had no one to sue? If you are a fan of the TV show Archer, then you know that the spy agency of the protagonists was initially named ISIS (the International Secret Intelligence Service), but is now the CIA. The show first played in September 2009, but the Islamic State’s ISIS was not known to me until perhaps later 2014 or 2015. Well, the show’s change away from ISIS coincided with the rise of that terrorist group. Though perhaps not a trademark issue, the example shows that in such cases, you wont get anywhere in Court. See Guardian article on the show’s change here.
Or, what if your company is called International Business Systems, or IBS, founded in 1978. Yup, their logo is IBS, and can be seen at their website here. If you are not already laughing, then I will tell you that IBS has become popular AFTER 1978 (perhaps the 1990s or 2000s) as irritable bowel syndrome. But you can’t sue the public at large for wanting to say IBS instead of “I have diarrhea” even if it harms your business.
I’m now wondering if I have written yet about Herpecin and Abreva, because it’s the same sort of thing. I think people would rather ask at a general store for a product that does not share even one syllable with an STD.