In Select Comfort Corp. v. Baxter, the Eighth Circuit took up how it would apply initial confusion claims of trademark infringement. The case involved an industry leader in adjustable air beds, Select Comfort — and the company that was a distant second in that consumer niche, Comfortaire.
Comfortaire, as well as its officers, were sued by Select Comfort under numerous causes of action, including trademark infringement, unfair competition, and dilution. At issue, in this case, was Comfortaire’s use of:
- Select Comfort’s marks in the metadata for its Google Ads;
- Call center operators who purposefully suggested to consumers that the brands were interchangeable; and
- Links and URLs that surreptitiously redirected users to Comfortaire’s site.
It was noted in the ruling that Comfortaire’s CEO knew of the confusion as it was happening, and even remarked that it was proof the latest advertising campaign was working. The evidence also showed that, after taking a strategy class for Google AdWords, the defendant began to use the plaintiff’s marks in metadata for online ads — so that someone searching for Select Comfort beds is guaranteed to also be shown Comfortaire beds.
In a summary judgment, the district court dismissed the plaintiff’s infringement theory based on “pre-sale or initial-confusion,” citing what it thought was circuit precedent. It also decided that the cohort of consumers shopping for beds was a sophisticated one, as a matter of law, because of a bed’s expense.
The case continued to trial over infringement and dilution claims. With the results of summary judgment in mind, the court directed jurors to only consider confusion at the time of purchase. That trial ended in a mixed verdict, which both sides appealed.
The circuit court was interested in how the district court had applied Eighth Circuit precedent on initial confusion. It clarified that it had never specifically ruled against initial confusion as a theory of infringement. Instead, it said a jury should have a chance to determine if confusion had occurred. The circuit court also disagreed with the district court’s characterization of potential mattress buyers as highly sophisticated, noting that even if they are sophisticated (based on cost), a similar-sounding name can still be confusing.
It comes down to this: This ruling broadens the possibility of bringing a trademark infringement lawsuit in the Eighth Circuit against a defendant who used a plaintiff’s mark in metadata online. And I think that’s probably a good thing.
