As a small business owner, nothing feels more rewarding than seeing your brand gain recognition and appreciation from your customers. However, what happens when a well-established, famous brand swoops in and appropriates your hard work, leaving you in the shadow of their massive reputation? This is the harsh reality faced by many business owners when they encounter the phenomenon known as “reverse confusion” in trademark law. If you find yourself in this situation, an experienced intellectual property attorney can help protect your trademarks.
Understanding Reverse Confusion
Reverse confusion occurs when a well-known brand adopts a trademark that is confusingly similar to that of a smaller, less established brand.
To illustrate reverse confusion using an example, let’s say you are a small business owner of a chicken restaurant, and you have a registered trademark in your logo of a chicken. If KFC or another famous restaurant were to trademark a logo that is similar to your chicken logo, you could have a claim of reverse confusion against KFC. In this example, you would be known as the “senior user,” because you owned the first trademark; KFC would be known as the “junior user,” because they adopted a similar trademark after you.
Reverse confusion can present itself in several different ways:
- Reverse confusion occurs when a junior user selects a trademark that is likely to cause consumers to believe, erroneously, that the goods marketed by the senior user are produced by the junior user. Using our example, consumers who saw your logo would believe that your chicken sandwiches are produced by KFC. This is one way that reverse confusion can create significant issues for your brand.
- Reverse confusion also occurs when a junior user’s products tarnish the image of the senior user’s products. Using our example again, let’s say KFC was involved in a public relations crisis over their methods of farming chicken, and there were allegations made that KFC’s chicken contained harmful hormones or bacteria. Consumers would likely associate your chicken logo with the negative publicity about KFC, and your brand would be harmed as a result.
- Another way reverse confusion occurs is when consumers view the senior user as an unauthorized infringer of the junior user’s products, thus injuring the senior user’s reputation and impairing its good will. For example, consumers could see your chicken logo and believe you are infringing on KFC’s reputation, and consumers would probably think less of your brand because of this false impression.
How to Prove Reverse Confusion
Proving reverse confusion requires demonstrating that the larger brand’s use of a confusingly similar trademark is likely to cause consumers to associate the smaller brand with the larger one. There are eight key factors a court assesses to determine if there is consumer confusion:
- (1) strength of the trademark;
- (2) similarity of the marks;
- (3) proximity of the products and their competitiveness with one another;
- (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;
- (5) evidence of actual consumer confusion;
- (6) evidence that the junior mark was adopted in bad faith;
- (7) respective quality of the products; and
- (8) sophistication of consumers in the relevant market.
A court will look to these factors in deciding whether your reverse confusion claim should succeed. Courts will use a balancing approach, where no one single factor will make or break your claim.
Legal Recourse For Reverse Confusion
There are several causes of action that you could bring against a party engaged in reverse confusion. For instance, depending on the facts and circumstances of your situation, you could assert trademark infringement, false designation of origin and unfair competition, and trademark dilution. If you have a registered trademark and you are successful on those claims, you could be entitled to profits, attorneys’ fees and costs. Further, you could seek a declaratory judgment, where the court could cancel the junior user’s trademark, or determine that pending applications for trademark registrations should be denied. Deciding which claims you should bring against junior user depends on the specific details of your situation. A trademark attorney can help assess the strengths, weaknesses, and possible defenses to your claims.
Conclusion
Navigating the complex terrain of trademark law in the face of reverse confusion is no small feat. As a startup or small business owner, seeking the advice of a qualified intellectual property attorney is a good way to protect your trademarks against bigger brands. If you have further questions about reverse confusion, reach out to a member of our team for next steps.