Evidence of actual confusion is “often the best evidence of a likelihood of confusion.” King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084, 1092 (10th Cir. 1999); Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1265 (9th Cir. 2001). But isolated instances of actual confusion are not enough. Indeed, isolated instances of actual confusion may be deemed de minimis. Universal Money Ctrs., Inc. v. Am. Tel. & Tel. Co., 22 F.3d 1527, 1535 (10th Cir. 1994).

In the Ninth Circuit, the evidence of actual confusion must be among an “appreciable number” of potential consumers, Thane Int'l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 902 (9th Cir. 2002), or “among significant numbers of consumers,” Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137, 1151 (9th Cir. 2011) (noting that for Internet advertising the four most important factors are (1) the strength of the mark, (2) evidence of actual confusion, (3) the type of goods and degree of care likely to be exercised by the purchaser, and (4) the advertisement itself and surrounding context on the results page). See also Rearden LLC v. Rearden Com., Inc., 683 F.3d 1190, 1210 (9th Cir. 2012) (“evidence of actual confusion, at least on the part of an appreciable portion of the actual consuming public, constitutes strong support for a ‘likelihood of confusion' finding”); Playboy Enters., Inc. v. Netscape Commc'ns Corp., 354 F.3d 1020, 1026 (9th Cir. 2004) (“significant numbers of consumers”); Nutri/System, Inc. v. Con-Stan Indus., Inc., 809 F.2d 601, 606 (9th Cir. 1987) (“[T]he instances of confusion, at best, were thin, and at worst, were trivial.”).

The Ninth Circuit, however, has never defined what it means by an “appreciable” or “significant” number of confused consumers.

Initial Interest Confusion from Keyword Advertising

In Lerner & Rowe PC v. Brown Engstrand & Shely LLC, No. CV-21-01540-PHX-DGC (D. Ariz. May 18, 2023), the District of Arizona held that “because infringement plaintiffs ultimately must prove a ‘likelihood' of confusion, it seems evident that the number of confused consumers must be compared to the total number of consumers who were exposed to the allegedly misleading actions of the infringer.”

A number that might seem “appreciable” or “significant” standing alone may be only minimal when compared to the universe of persons who saw the allegedly infringing advertisement.

As noted by Professor McCarthy, “Evidence of the number of instances of actual confusion must be placed against the background of the number of opportunities for confusion before one can make an informed decision as to the weight to be given the evidence.” 4 McCarthy on Trademarks and Unfair Competition § 23:14.

Defendant's Call Logs Showed Plaintiff Was Mentioned 236 Times

In Lerner & Rowe, Plaintiff and Defendants were personal injury law firms. Both employed similar advertising channels including the Internet. Defendants, however, purchased “Lerner & Rower” as Google keywords for search engine advertising. During the years that Defendants purchased Plaintiff's name as a keyword, Google searches for “Lerner & Rowe” returned a screen that included Defendants' advertisement 109,322 times.

Defendants maintained call logs for four years which show that callers to Defendants' phone number mentioned Lerner & Rowe 236 times. See Fed. R. Evid 803(6) (admissible as business records made in the regular course of business). Plaintiff contended that those call logs reflected comments that showed actual confusion, including: “Referred by L&R (they had a conflict)”; “referred by L&R”; “googled – L&R”; “Internet – Lerner & Rowe”; “thought he called L&R”; “Lerner/Rowe/TV”; and “Wanted L&R.”

The 236 instances of potential confusion constitute 0.215% of the total number of calls.

Even if it is assumed that all 236 callers who mentioned Lerner & Rowe were confused by Defendants' use of keywords (notwithstanding any possible ambiguity of a given call), this would only amount to two-tenths of one percent of the consumers who searched for Plaintiff's law firm and saw Defendants' ads were actually confused by those ads. The Court held that this tiny percentage cannot reasonably be said to constitute an “appreciable” or “significant” number of consumers. As such, the Court found it to be de minimis.

In addition, Defendants presented a consumer survey showing a net confusion rate of 3%. But Plaintiff did not produce a competing consumer survey. “This warrants a presumption that the results would have been unfavorable.” Playboy Enters., Inc. v. Netscape Commc'ns Corp., 55 F. Supp. 2d 1070, 1084 (C.D. Cal.), aff'd, 202 F.3d 278 (9th Cir. 1999); see also Stonefire Grill, Inc. v. FGF Brands, Inc., 987 F. Supp. 2d 1023, 1053- 54 (C.D. Cal. 2013); James R. Glidewell Dental Ceramics, Inc. v. Keating Dental Arts, Inc., No. SACV 11-1309-DOC ANx, 2013 WL 655314, at *9 (C.D. Cal. Feb. 21, 2013).

Thus, the Court found a lack of actual confusion and granted summary judgment of no trademark infringement in view of the four factors emphasized in Network Automation.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.