Legal Memorandum: Internet Initial Interest Confusion Doctrine

Issue: What is needed to demonstrate a necessary ‘likelihood of confusion’ with regard to unauthorized use of trademarks to divert internet traffic?

The Lanham (Trademark) Act (Pub.L. 79–489, 60 Stat. 427, enacted July 6, 1946, codified at 15 U.S.C. § 1051 et seq. (15 U.S.C. ch.22)) is the primary federal trademark statute in the United States. The Act prohibits a number of activities, including trademark infringement, trademark dilution, and false advertising.

The “internet initial interest confusion” doctrine which provides that likelihood of confusion may be found when a consumer is lured to a website by its similarity to a known mark, even though the consumer realizes the true identity and origin of the product before actually consummating a purchase.  See Checkpoint Sys., Inc. v. Check Point Software Tech. Inc., 269 F.3d 270, 292 (3d Cir. 2001); Eli Lilly & Co. v. Natural Answers Inc., 233 F.3d 456 (7th Cir. 2000); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 190-91 (N.D.N.Y. 2000); New York Soc. Pub. Account. v. Eric Louis Assocs., 79 F. Supp. 2d 331, 342 (S.D.N.Y. 1999). 

“Initial interest in the internet context derives from the unauthorized use of trademarks to divert internet traffic, thereby capitalizing on a trademark holder’s good will.”  Australian Gold Inc. v. Hatfield, 436 F.3d 1228, 1239 (10th Cir. 2006).  The OBH, Inc. court explained:

Defendants argue that their use of the “thebuffalonews.com” domain name cannot possibly confuse visitors of their web site, because, as detailed above, the site contains disclaimers informing visitors that the site is not affiliated with or endorsed by The Buffalo News or the plaintiffs. […]

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