Litigating reverse confusion infringement actions

By Tal E Dickstein

As new brands and marks continue to proliferate, cases involving claims of reverse confusion have increased dramatically. Practitioners need to understand how courts analyse likelihood of confusion factors differently where reverse, rather than forward, confusion is at issue

In Summer 2014 the Seventh Circuit Court of Appeals rejected as “implausible” a trademark infringement suit targeting the Warner Brothers’ latest Batman film, The Dark Knight Rises. The plaintiff in Fortres Grand v Warner Bros Ent, Inc (763 F 3d 696 (2014)) alleged that the film, in which the character Catwoman uses a fictional piece of software named Clean Slate to erase all traces of her criminal past, infringed its registered trademark for a real-world software program of the same name, which erases all evidence of user activity. The court held that the plaintiff could not base a trademark infringement claim on a theory of reverse confusion, because consumers were unlikely to believe that its software was affiliated with the Warner Brothers movie studio. While the decision to compare the plaintiff’s software to the defendants’ film (as opposed to the fictional software program depicted in the film) drew much attention, the case presents an opportunity to explore a topic of more practical significance for trademark practitioners: how courts address trademark infringement claims premised on the theory of reverse confusion.

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Issue 74