Survey evidence may demonstrate actual confusion

In Thane International Inc v Trek Bicycle Corporation, the US Court of Appeals for the Ninth Circuit has held that, in certain circumstances, a survey showing consumer confusion may constitute evidence of actual confusion.

At first instance, the district court granted Thane's motion for summary judgment and denied the defendant's claim that Thane's use of the mark ORBITREK for its exercise bikes infringed the defendant's TREK mark, which was registered in respect of bicycles. In an attempt to demonstrate the likelihood of confusion, the defendant commissioned a survey. The survey purportedly revealed that 27% of respondents who viewed the parties' respective advertising materials believed, based on the similarity of the marks, that the products were made, endorsed or sponsored by the same company, or by companies that were associated. Noting the absence of evidence of actual confusion, the district court disregarded the survey evidence, describing it as "contrived" and not "accurately replicating those environments in which consumers would encounter the parties' marks."

On appeal, the Ninth Circuit, citing earlier jurisprudence, noted that "survey evidence may establish likelihood of confusion." Although the appellate court did not necessarily disagree with the district court's conclusion on the merits of this particular survey evidence, it held that, in the context of a motion for summary judgment, the court must draw on all justifiable inferences from the defendant's survey. On this basis, the court decided that the survey provided evidence from which a jury could reasonably conclude that more than one-quarter of consumers encountering both Trek and OrbiTrek advertisements would be confused about the origin of the OrbiTrek exercise machine.

The decision shows that in those states making up the Ninth Circuit (ie, Alaska, Arizona, California, Idaho, Montana, Nevada, Oregon, Washington, Guam and Hawaii), a survey constitutes evidence of actual confusion. Thus, if one can find no testimony from confused consumers, the need for a survey may be critical in situations where the disputed marks are similar but not identical and the products are not in direct competition.

Russell Falconer, Baker Botts LLP, New York

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