Reverse confusion trademark infringement claims are sometimes reminiscent of the well-known biblical story of David versus Goliath.  This doctrine basically protects smaller, lesser known, trademark owners whose trademarks are infringed upon by large multi-national companies with gigantic advertising budgets.  You may want to check out a few prior posts on DuetsBlog relating to Lion’s Tap and McDonald’s from Steve Baird, here and here, and guest blogger, Jason Voiovich, here.

Domino’s Pizza learned this lesson earlier this October. Great American Restaurant Company owns and operates the small Dallas area pizza chain Brooklyn’s Old Neighborhood Style Pizzeria. It holds the trademarks: “A TASTE OF THE OLD NEIGHBORHOOD” and “BROOKLYN’S OLD NEIGHBORHOOD STYLE PIZZERIA.” When Domino’s Pizza launched its new “Brooklyn Style Pizzeria,” the smaller Texas chain sued Domino’s Pizza for trademark infringement. The Fifth Circuit reversed Domino’s Pizza’s win in the lower court (in legalese = granting summary judgment). Domino’s Pizza will now have to battle it out with the Great American Restaurant in the Texas courts. 

Domino’s Pizza is not alone. Steven Spielberg’s well-known company, DreamWorks, was sued by senior trademark user Dreamwerks Products—a science fiction convention. Although Spielberg’s production company produces much more than science fiction movies and television shows, DreamWorks was still found to have infringed the convention’s trademark through reverse confusion.  

Similarly, Victoria’s Secret was sued by A&H Sportswear when it launched THE MIRACLE BRA swimwear. A&H Sportswear holds the trademark to MIRACLESUIT for swimwear. In deciding the appeal, the Third Circuit allowed the claim against Victoria’s Secret to continue. However, the Third Circuit observed the downfalls of such claims. Reverse confusion claims penalize an innovative junior trademark user who, after spending a lot of money promoting a trademark, could be blocked from using it by a senior trademark owner who has not even invested in or promoted the trademark. Moreover, the claim could inhibit larger companies from expanding product lines, such as in this case Victoria’s Secret from moving into the swimwear line.   

In contrast, the Harlem Wizards did not fare well off the basketball court. In a court of law, the Harlem Wizards lost its reverse confusion infringement claim against the NBA for using the Washington Wizards. The court found that entertainment basketball was different from NBA basketball so there was no infringement. 

These cases raise the issue of how aggressively should courts enforce the reverse confusion infringement doctrine. Do we fear chilling companies from expanding into other product lines? Should a senior trademark user be able to block use by a larger company when it does not promote its own trademark? This battle between David and Goliath will likely continue in federal courts across the country for some time.

  • In Canada, the question of reverse confusion has not received much judicial consideration. Our leading case is A&W Food Services of Canada Inc. v. McDonald’s Restaurants of Canada Limited (2005), 40 C.P.R. (4th) 126 (FC) in which the Court held that both forward and reverse confusion are actionable in Canada, but the plaintiff had not made out its case. I would love to see this issue considered more thoroughly by our courts.