Rothman on Initial Interest Confusion
Courts have used the initial interest doctrine to hold that defendants have committed trademark infringement even when no one is ever likely to be confused by the use of the trademark. Instead, courts have allowed findings of trademark infringement solely on the basis that a consumer might initially be “interested,” “attracted,” or “distracted” by a competitor’s, or even a non-competitor’s, product or service. In "Initial Interest Confusion: Standing at the Crossroads of Trademark Law," Jennifer E. Rothman of Washington University in St. Louis argues in Cardozo Law Review, Vol. 27, p. 105, 2005 that the initial interest confusion doctrine must be eliminated and trademark infringement returned to its origins as a narrow cause of action primarily directed at protecting consumers from deceptive business practices:
Initial interest confusion is such an excess, and one which, despite
violating the express terms of the Lanham Act, thus far has been extremely
successful. It is time for courts to revisit the doctrine. Each court of appeals
has the ability to reject initial interest confusion and to embrace in its place
the more limited analysis of “pre-sale confusion”— arefully limiting actionable pre-sale confusion to situations in which there is likely confusion by reasonably prudent potential purchasers that exists prior to the time of sale and such confusion is more than de minimis.
Congress should also take heed of the policy reasons why we should not
punish “initial interest” absent likely confusion. Even if courts do eliminate
the errant initial interest confusion doctrine, it is likely that powerful
trademark holders will try to codify the doctrine back into the law. In recent
years, Congress has been heavily lobbied by some of the most powerful
intellectual property groups and has codified more and more expansions of
intellectual property laws at the expense of the public and smaller businesses.
Such efforts should be rebuffed with regard to initial interest confusion since
the doctrine flies in the face of the justifications for trademark protection
and the Lanham Act, and raises serious conflicts with the First Amendment and
other intellectual property laws.