New England Biz Law Update
A recent case reminds us that proving “likelihood of confusion” – as required to show trademark infringement – can be difficult, even where the alleged infringement involves nearly identical marks for similar products. Those who appreciate why can be especially helpful in keeping their clients out of trouble.
The case from the 7th Circuit illustrates this well.
Sullivan v. CBS
The band Survivor released its first album in 1977, had several hits during the ’80s (including “Eye of the Tiger” from Rocky III) and released its last album in 1993. Frank Sullivan registered the name “Survivor” in 1994 for “entertainment services: namely, providing band and/or musical services.”
As “Survivor” he continued to perform and license music, and at concerts sold CDs and merchandise like T-shirts.
CBS launched the hit show “Survivor” – which started the reality TV craze – in May 2000. Its logo was the word “SURVIVOR” in an oval surrounded by a scene from the current season’s location (e.g., a kangaroo and sunset when filmed in Australia) and the words “OUTWIT,” “OUTPLAY” and “OUTLAST” around the perimeter.
In June 2000, CBS launched a line of T-shirts, bags and other merchandise bearing the series logo.
In August 2000, CBS released a soundtrack of original music from the series, followed in November by a second soundtrack of music “inspired” by the show. The first soundtrack had the word “SURVIVOR” in large block letters with the words “THE OFFICIAL SOUNDTRACK TO THE HIT CBS TV SERIES” printed beneath. The second soundtrack contained the series logo with flames through the top and the words “OFFICIAL PARTY SURVIVOR KIT” beneath.
Sullivan claimed that CBS infringed his mark by using the word “Survivor” for its CDs and merchandise. But the 7th U.S. Circuit Court of Appeals held that he failed to prove a likelihood of confusion and ruled in favor of CBS.
Oak From Acorns
Many will find this result puzzling: Since both parties used the same distinctive term, “Survivor,” to market musical recordings, why wasn’t this a slam-dunk for Sullivan? This case reminds us that small differences in the consumer environment can produce major differences in infringement analysis because they can produce major differences in the likelihood that people will be confused.
First, the court reminded us that, even where the dominant portion of two marks is the same, what matters is what consumers confront “as a whole.”
The court noted that “the word ‘Survivor’ never appears alone on any of CBS’s merchandise at issue.” Rather, there is always the oval border, three extra words and relevant scene. In fact, CBS made specific reference to its TV show on both CDs, making it less likely anyone would be confused.
Second, although certain products overlapped, there were still important differences. For example, the band’s CDs were in the rock music section of stores, while CBS’s CDs were grouped with soundtracks.
And while band T-shirts were only sold at Survivor concerts, CBS T-shirts were sold through several outlets, but always displaying the entire “Survivor” mark (oval, words, scenes). “[N]o rational factfinder could conclude that any consumer would be confused as to the source of the merchandise,” the 7th Circuit said.
Finally, the court noted several times that Sullivan didn’t produce survey evidence or other strong evidence of confusion. (A survey is a formal inquiry of consumers to learn how confused they are by certain similarities in marks, products, and the like.)
Lessons Learned
This case reminds us of several important facts about trademarks, confusion and infringement. As counsel to trademark adopters, owners and users, you should keep the following in mind.
The mere fact that similar terms appear on similar goods doesn’t guarantee that infringement occurred. There is no silver bullet factor, or no substitute for considering all significant factors identified by the courts.
In most jurisdictions these factors include similarities in the marks, similarities in the goods/services, overlap in customers, overlap in trade channels and advertising media, sophistication of customers and cost of goods.
When comparing marks the dominant features get the most weight, but ultimately what counts is the what, where and how as seen by customers. Even with strong marks, confusion can be reduced by adding or changing features to create a distinctive impression on customers.
Sullivan v. CBS teaches that adding a graphic here or a word, phrase or slogan there can help minimize confusion and decrease the likelihood of infringement.
Though channels of trade and advertising are less significant in our age of e-commerce, that customers will rarely encounter the competing products at the same location (on or off the Internet) can help lessen confusion.
