“Likelihood of Confusion” in Trademark Litigation

“Likelihood of Confusion” in Trademark Litigation

Man, I miss Dijonnaise.

It was revolutionary. Dijon mustard. Mayonnaise. Mixed together. In one bottle!

And the best part was the theme song, to the tune of Duke of Earl. Dij, dij, dij, dij-o-naise, naise, naise . . . Bet you can’t get that out of your head now.

Sadly, Dijonnaise was a flash in the pan. Maybe too many people asked, why not just put Dijon mustard and mayo separately, then put them together on the same sandwich?[1]

My response would be similar to that of Nigel Tufnel, lead guitarist for Spinal Tap. After showing off his amp with knobs that go up to 11, he was asked why don’t you just make 10 louder, and have 10 be the top number and make that a little louder?

“. . . These go to 11.”

Anyway, blended condiments are on my mind because I recently read Perry v. H.J. Heinz Company Brands, LLC, 994 F.3d 466 (5th Cir. 2021), also known as the “Metchup” case.

The court in that case held that Heinz’s fleeting use of “Metchup” as part of a promotional campaign for “Mayochup” and other branded condiment blends did not infringe on the plaintiff’s rights in the METCHUP trademark. (Trademark lawyers like to put the trademark in all caps, but I’m just gonna do it once.)

Besides containing some of the best deadpan judicial humor I have read in a long time, the Metchup opinion is also a good case study for understanding how courts decide “likelihood of confusion,” the key issue in most trademark lawsuits.

Even aside from trademark law, the Metchup opinion is a tutorial on how to write a humorous judicial opinion. Not a cringe-inducing attempt like what you usually see from a judge who should have just played it straight, but something actually funny.

The key is not to try too hard. Check out this understated introduction by Judge Graves:

Mr. Dennis Perry makes Metchup, which depending on the batch is a blend of either Walmart-brand mayonnaise and ketchup or Walmart-brand mustard and ketchup. Mr. Perry sells Metchup exclusively from the lobby of a nine-room motel adjacent to his used-car dealership in Lacombe, Louisiana. He has registered Metchup as an incontestable trademark. Though he had big plans for Metchup, sales have been slow. Since 2010, Mr. Perry has produced only 50 to 60 bottles of Metchup, which resulted in sales of around $170 and profits of around $50. He owns http://www.metchup.com but has never sold Metchup online. For better or worse, the market is not covered in Metchup.

Perry, 994 F.3d at 468.

This is how you do it. It paints a picture. It subtly indicates where this is going. And it doesn’t make light of a serious situation too much. I mean, sure, it pokes fun at Mr. Perry, but lightly, and no more so than he deserves.

This intro also sets up our first non-obvious trademark law lesson for non-trademark lawyers.

Lesson 1: Registration of a trademark isn’t that big a deal

Perhaps the most important and non-obvious thing to understand about trademark law is that trademark rights arise largely from use of a trademark, not registration of a trademark. Trademark lawyers probably say this to people at least ten times a week.

So in the Metchup case, Mr. Perry started to build his trademark rights the moment he started using Metchup as a mark to sell bottles of his special blend. When he later registered the trademark with the U.S. Patent and Trademark Office, affectionately known as the PTO, he acquired certain additional rights.

Bottom line: the mere fact that Mr. Perry owned a registration of the Metchup mark did not necessarily give him priority, and it did not necessarily mean that someone else’s use of “Metchup” would create a likelihood of confusion.

Like many trademark owners, Mr. Perry was probably very proud of his registration certificate for “Metchup,” but it’s only a piece of paper. His biggest problem was that his use of the trademark was miniscule. He produced only 50-60 bottles of Metchup and had only 34 documented sales. He never sold Metchup online. Id. at 468.

Enter Heinz, the global condiment behemoth. To promote Mayochup, its own mayonnaise-ketchup blend, Heinz held an online naming contest, and one fateful fan proposed “Metchup.” Heinz then posted mock-up bottles bearing various proposed names, including Metchup, but Heinz never sold a product labeled Metchup. Id. at 468-69.

This was Mr. Perry’s moment. He made a federal case of it, suing Heinz for trademark infringement in the Eastern District of Louisiana.

Lesson 2: You can get summary judgment on likelihood of confusion—sometimes

But it was not to be. The district court granted summary judgment for Heinz on the ground that Heinz’s use of “Metchup” and “Mayochup” did not create any likelihood of confusion with Mr. Perry’s Metchup.

A little background for non-lawyers and non-litigators: there are essentially three ways a key issue like likelihood of confusion can be decided in a lawsuit. First, on a motion to dismiss, where the judge decides the issue based purely on whether the plaintiff has pleaded a plausible claim. Second, on a motion for summary judgment, where the judge decides whether the evidence submitted by both sides presents any fact issue for a jury decide. Third, in a trial, where the jury decides (or the judge decides, if it’s a bench trial).

It’s possible to win a motion to dismiss a trademark infringement suit, if the court can see from the plaintiff’s own pleading that there is no likelihood of confusion. But it’s rare. In most trademark infringement lawsuits, the key procedural question will be whether likelihood of confusion will be decided through summary judgment or in a trial.

It is possible to get summary judgment on infringement, either for the plaintiff or for the defendant. It is also possible for the plaintiff to get summary judgment on likelihood of confusion. See, e.g., Epic Tech, LLC v. Fusion Skill, Inc., No. 4:19-CV-2400, 2021 WL 1599378, at *3-4 (S.D. Tex. April 23, 2021) (granting summary judgment on infringement to plaintiff based on the similarity of the marks coupled with the absence of any evidence in defendants’ favor on any other digits of confusion).

In the Metchup case, the Court of Appeals affirmed summary judgment for Heinz, the defendant. The court held that “no reasonable jury could conclude that Heinz’s use of Metchup in advertising or the sale of its own product, Mayochup, created a likelihood of confusion.” Therefore, Heinz was entitled to summary judgment dismissing the claim. Id. at 473.

But how did the court get there? Enter the digits.

Lesson 3: Some digits are more equal than others

To decide whether the defendant’s use of a trademark creates a likelihood of confusion with the plaintiff’s trademark, courts look at eight non-exhaustive factors. In the Fifth Circuit, we call the factors digits.

I don’t know why we don’t just call them factors. Someone should write a blog post on that.

Anyway, the digits of confusion are:

(1) the type of trademark (some types are stronger than others)

(2) the similarity of the marks

(3) the similarity of the products or services

(4) outlet and purchaser identity

(5) advertising media identity

(6) the defendant’s intent (this one can be tricky)

(7) care exercised by potential purchasers

(8) evidence of actual consumer confusion

Id. at 471.

The digits usually do not have equal weight. The last one—instances of actual confusion—can be an ace in the hole for the plaintiff. For example, if Mr. Perry had testimony from his good neighbors in Lacombe, Louisiana that they confused Heinz’s “Metchup” with Mr. Perry’s Metchup, that would be pure gold. That would make it almost impossible for Heinz to get summary judgment, meaning a jury would decide.

On the other hand, the absence of evidence of actual confusion doesn’t necessarily kill the plaintiff’s infringement claim. Many cases will not have any evidence of actual confusion. In most cases, the two key digits are the similarity of the trademarks and the similarity—or “relatedness”—of the products or services.

It’s easy to see why. There could be a likelihood of confusion where the trademarks have significant differences but the products are identical. Imagine a trademark that looks just like the Apple computer logo, except it’s an orange, used for computers. Apple’s lawyers would be all over that.

Conversely, you could have similar or even identical trademarks, but very different products, and have no likelihood of confusion. For example, people are unlikely to confuse APPLE as a trademark for computers with APPLE as a trademark for used car sales.

Similarity of the marks and similarity of the products. Those are the key digits.

Most of the time. In the Metchup case, not so much. The Metchup case was unusual, in that both the trademark—“Metchup”—and the product—a blended condiment—were identical, yet the court found no likelihood of confusion. Why?

First, the court noted that although both trademarks used the same word, the labels and bottles looked “nothing alike”:

Id. at 471-72. “The products’ distinguishable packaging mitigates against Heinz’s use of the word Metchup because the packaging differences make confusion less likely.” Id. at 472.

In addition to the differences in packaging, the huge differences in sales outlets and advertising were crucial. “Mr. Perry markets his products to the guests at his nine-room motel,” the court said, “Heinz to the shoppers at most every grocery and to online customers through an extensive web store.” “Sensibly speaking,” the court said, “Mr. Perry has no presence in Heinz’s market and Heinz no presence in his.” There was also the stark difference in advertising. “Mr. Perry does not buy print ads, issue coupons, enter his sauce in contests, or advertise Metchup on signage.” Id. at 472.

Plus, there was the lack of evidence of actual confusion. There was no evidence that “any consumer actually got confused by Heinz’s use of Metchup on a mock-up bottle or confused Heinz’s Mayochup with Mr. Perry’s Metchup.” Id. at 473.

I think this was really the key in the Metchup case. Remember, Heinz only used “Metchup” on a mock-up as part of a contest. If Heinz had actually named its product Metchup and put Metchup on the shelves of grocery stores across America—including Lacombe, Louisiana—the case might have come out differently. But Heinz’s fleeting use of “Metchup” as an example of a contest entry just wasn’t enough to create any likelihood of confusion.

Was there anything Mr. Perry’s lawyers could have done to avoid this conclusion? Suppose they hired an expert to do a consumer survey in Louisiana, showing random consumers a photo of Heinz’s “Metchup” mockup and asking, “who do you think makes this product?” And suppose a significant percentage of surveyed consumers said “oh, that’s the stuff Dennis Perry sells at that motel in Lacombe!”

In that case, it’s unlikely Heinz would get summary judgment. So why didn’t Mr. Perry do a survey?

Lesson 4: to survey or not to survey

Whether to hire an expert to do a consumer survey on likelihood of confusion is one of the key decisions in a trademark lawsuit. The benefit of survey is obvious. If an expert testifies that a significant percentage of surveyed consumers were confused, that suggests there’s a likelihood of confusion.

But there are two obvious reasons not to do a survey. First, it’s expensive. Second, the results probably won’t be good.

Think about it. The owner of a trademark always thinks his trademark is hot stuff. Ordinary consumers? Not so much. Based on the facts recited in the Metchup opinion, we can all guess how a survey would have come out. Hardly anybody was going to see Heinz’s Metchup bottle and think of Mr. Perry’s Metchup.

Mr. Perry did have an expert, though. Dr. Lucy L. Henke, a marketing professor with a doctorate in communication studies, testified that “the typical consumer would confuse Mayochup and Metchup due to visual and auditory similarities between the two names.” Id. at 473.

The court wasn’t buying it, especially when the expert “neither presented consumer survey data no provided an analysis of such data.” “Her testimony amounts to her personal opinion on the topic of actual confusion and does not address evidence where potential consumers were asked to offer their opinions or tested to see if they actually got, or were, confused by either Heinz’s use of the name Metchup in advertising or by it selling Mayochup.” Thus, the court said, her testimony “provides no evidence of actual confusion.” Id.

Ouch. The lesson for trademark litigators? If you’re going to have an expert testify on likelihood of confusion, that expert best come armed with a survey.

Otherwise, you’ll be playing ketchup.


Zach Wolfe (zwolfe@fleckman.com) is a Texas trial lawyer who handles non-compete and trade secret litigation at his firm Fleckman & McGlynn, PLLC. Thomson Reuters named him a 2020 Texas “Super Lawyer”® for Business Litigation.

These are his opinions, not the opinions of his firm or clients, so don’t cite part of this post against him in an actual case. Every case is different, so don’t rely on this post as legal advice for your case.

[1] My crack research team informs me that you can buy “Maille Dijonnaise Sauce” on Amazon for $12.63 a bottle. 

Takedown: How To Protect Your Intellectual Property From Infringement on Social Media

Takedown: How To Protect Your Intellectual Property From Infringement on Social Media

Whether you’re a small business, a multi-national corporation, an entrepreneur, or a social media “influencer,” chances are someone at some point is going to use your content on some kind of social media. You don’t want to just let this go, but at the same time, you don’t want to break the bank hiring a lawyer to send a demand letter every time it happens.

What can you do? Is there any fair, quick, and inexpensive method for addressing these issues?

For blatant infringement, yes. For closer cases, no. Social media platforms just aren’t going to take the time and effort to adjudicate intellectual property disputes between their users and the complainers in any satisfying way.

You’ve got two basic choices when someone uses your intellectual property on social media. Either submit a complaint through the platform’s portal and hope for the best, or have a lawyer send a demand letter and, if it becomes necessary, file a lawsuit. The first option is unlikely to get you what you want, and the second option is time consuming and expensive.

Still, doing nothing is not a good option. So if you’re a business owner or a lawyer who represents businesses, it’s worth your time to understand both the basic legal principles and the practical avenues available.

The first step is to understand the kind of “intellectual property” at issue. Nine times out of ten, if someone is posting your material on social media, it will be either a copyright or trademark issue.

So if you’re going to handle the takedown notice, you will need some understanding of the difference between copyright and trademark. This is important because the standards for copyright infringement and trademark infringement are entirely different, and because you need to select the right portal to submit your notice.

Copyright vs. Trademark

Copyright protects original works of expression. Think novels, poems, movies, TV shows, paintings, sculptures, music recordings, blog posts, just to name a few. For example, if you write and record a song and someone posts a copy of your recording on YouTube, that’s copyright infringement (potentially).

Trademark law, in contrast, protects words, short phrases, logos, and other things that function as source identifiers for goods or services. MCDONALD’S—and the golden arches—are trademarks for fast food restaurants. APPLE is a trademark for smartphones and computers. FIVE MINUTE LAW is a trademark for law blogs.

As with all things in the law, there are borderline cases. Does copying a seven-second clip from an iPhone commercial raise copyright or trademark issues? Law school professors love that kind of stuff.

But most of the time, if someone is using your content, it will be pretty obvious which one it is. Are they using your name or logo in a way that suggests they have some connection to you? Probably trademark. Are they copying some significant portion of a work of expression you created? Probably copyright.

This is an important distinction to figure out up front, because copyright law and trademark law are significantly different. But they do have one thing in common: you don’t have to register to have a valid copyright or trademark, but registration does give you certain additional rights that can be important. More about that later.

Let’s start with copyright, because it’s simpler.

Copyright Infringement on Social Media

The paradigmatic case of copyright infringement on social media is a copy of a recorded song posted on YouTube. This is so ubiquitous, I understand the young people don’t even buy music anymore. Why buy when you can just go to YouTube?

Let’s say I post a copy of “Honky Tonk Bodankadonk” on my YouTube channel, That Non-Compete Lawyer. Did I just infringe Trace Adkins’ copyright? The short answer is yes.

And by the way, it doesn’t matter if I include one of those disclaimers like “I do not own the rights to this recording . . .”

I don’t know why this kind of disclaimer became so popular. It has virtually zero legal effect. It’s like robbing a bank but carrying a sign that says “NO THEFT INTENDED.” If anything, it’s evidence that you knew you were infringing the author’s copyright.

But did YouTube infringe Trace’s copyright?

That’s a little more complicated. It’s one thing to hold a small-time litigator liable for copyright infringement. It’s another to hold a multi-billion-dollar social media company responsible. We can’t have that!

Fortunately, we have lobbyists and Congress to thank for passing the Digital Millennium Copyright Act (DMCA) in 1998. Its main purpose is to protect Internet service providers from copyright infringement claims.

The DMCA establishes a “notice-and-takedown” regime that applies to copyright infringement on social media. A social media platform can avoid liability if, “upon notification of claimed infringement,” it “responds expeditiously to remove, or disable access to, the material that is claimed to be infringing or to be the subject of infringing activity.” 17 U.S.C. § 512(c). See also Jon M. Garon, Tidying Up the Internet: Takedown of Unauthorized Content Under Copyright, Trademark, and Defamation Law, 41 Cap. U. L. Rev. 513 (2013).

Naturally, to avail themselves of the protections of the DMCA, all the major social media platforms have dedicated online portals where you can give notice of alleged copyright infringement (if you can successfully identify all the crosswalks in a photo).

For example, this is YouTube’s copyright infringement notice page:

Screen Shot 2020-02-09 at 3.28.06 PM

Of course, that’s not the only way YouTube and other sites police copyright infringement. There is also automated copyright infringement detection. YouTube, for example, has a system called “Content ID” that automatically scans uploaded videos to compare them to its massive database of files submitted by content owners. If people copying and posting your stuff is a recurring issue, consider using the Content ID system to nip infringement in the bud.

Otherwise, you will need to submit a takedown notice. If it’s an obvious case of copying, that will probably be enough to get the infringing copy removed.

In contrast, I doubt that submitting a notice through a routine portal is going to work in less obvious cases. It’s not like YouTube employs a staff of musicologists to sit around trying to figure out if Robin Thicke’s “Blurred Lines” is substantially similar to Marvin Gaye’s “Got To Give It Up” or just has the same basic style.

But for most content creators, the issue is blatant copying, not borderline cases. And in those cases, the notice-and-takedown approach encouraged by the DMCA probably works pretty well.

If anything, notice and takedown may work too well in copyright cases. That’s because not all copying is unlawful. You might have noticed a reference to “fair use” on the YouTube page shown earlier. Fair use is an exception to copyright infringement.

Copyright “Fair Use”

It’s important to understand what fair use is and what it isn’t. It’s not a magic wand to be waved any time someone claims copyright infringement. Rather, fair use refers to various types of copying that the law allows because of their purpose.

And it’s a fuzzy term. That’s because the statute that codifies the fair use doctrine refers to fair use of a copyrighted work “for purposes such as . . .” 17 U.S.C. § 107. Then it lists some non-exclusive examples of fair use: “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research.” Id.

The statute goes on to provide a list of non-exclusive factors determining whether a particular use of a work is fair use:

  1. the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

So let’s say I have a YouTube channel where I review country music albums. If I play 10 seconds of “You Ain’t Much Fun (Since I Quit Drinking)” as part of my review of Toby Keith’s album Boomtown, that’s probably fair use.

I can only say “probably” because, again, fair use is a fuzzy concept in copyright law.

If that bothers you, then you really won’t like trademark law. It’s even fuzzier.

Trademark Infringement on Social Media

It’s not that hard to understand what a trademark is. I gave some obvious examples earlier. It’s harder to understand whether someone else’s use of your trademark is infringing or not. And it can be even more difficult to get a social media site to remove someone’s infringing use of your trademark.

Why is it relatively easy to get a social media platform to remove copyrighted material, but harder to get trademarked content taken down?

Let’s start with the DMCA. It applies to copyright infringement, not trademark infringement. There is no equivalent statute for trademarks. So the legal framework is not as clear when it comes to trademarks.

Still, just as they do for copyright infringement, the major social media platforms have specific portals for owners of trademarks to submit takedown notices. For a helpful list with links to the takedown pages for the biggest players, see How to Protect Your Trademarks on the Top 6 Social Media Platforms.

The thing that really makes trademark harder than copyright is deciding whether the use of a trademark is infringing. Just copying someone’s trademark is not necessarily infringing. Trademark infringement happens when someone uses your trademark—or something similar to it—in a way that creates a likelihood of confusion regarding the source of goods or services.

Remember, the key thing about a trademark is that it is a source identifier.

Let’s consider some simple examples. If I use the word APPLE to sell actual apples, that’s not trademark infringement. That’s a “generic,” non-infringing use of the mark. Similarly, if I tell a new client “don’t worry, you’re in good hands,” I probably haven’t infringed Allstate’s trademark, because I’m just using the phrase in a descriptive sense. In contrast, if I use APPLE to refer to my company’s knockoff laptops, I will probably get a nastygram from some lawyer in Cupertino. That’s trademark infringement.

Screen Shot 2020-02-09 at 11.11.55 PM
My use of the Apple logo in a blog post is an example of “fair use”

But what if I use the famous APPLE computer logo in a blog post about computers? Is that infringement?

This is where it gets harder. It depends on how I use it. If I use the trademark in a way that does not cause source confusion, that is “non-infringing” use. To make this even more complicated, trademark law also refers to some kinds of non-infringing use as “fair use,” which is not the same thing as copyright fair use. And then there are two kinds of trademark fair use, “traditional” and “nominative.”

But let’s not go down that rabbit hole now. Let’s focus on the practical. Assume someone is improperly using your company’s trademark in a way that suggests some sponsorship, affiliation, endorsement, or approval by your company. That creates a “likelihood of confusion,” which equals infringement. What can you do?

Trademark Takedown Notices

As with trademarks, the major social media platforms make it fairly convenient to submit a notice that someone’s content infringes your trademark. See the links in the “Top 6” article cited above.

This is where registration, also mentioned earlier, can be helpful.

Keep in mind, it is the use of a trademark, not registration, that creates trademark rights, and you don’t have to register a trademark to have trademark rights. But as a practical matter, your takedown notice will have a better chance of success if your trademark is registered.

Shannon Montgomery, a lawyer who represents social media influencers, explains this point here. See, social media sites are just not that into evaluating the strength of your claim to an unregistered, “common law” trademark. So check out this video by attorney Aiden Durham to educate yourself on trademark registration.

Unfortunately, even if your trademark is registered, social media platforms are still not that interested in adjudicating trademark disputes. And they make no bones about it. YouTube, for example, says the following on its trademark policy page:

If you are a trademark owner and you believe your trademark is being infringed, please note that YouTube is not in a position to mediate trademark disputes between users and trademark owners. As a result, we strongly encourage trademark owners to resolve their disputes directly with the user who posted the content in question.

Let me translate: don’t bother us with your trademark claim, bother the person who used your trademark.

But there’s good news. YouTube adds this: “Contacting the uploader may resolve things more quickly in a way that is more beneficial to you, the uploader, and the YouTube community.”

Just contact the uploader. That’s easy enough, right? For one thing, every YouTube post includes the name and contact information of the uploader, right? And when you contact the uploader and tell them they need to stop using your trademark, they’re sure to be reasonable and cooperate. What could possibly go wrong?

I’m jk, of course. It never goes like this.

At best you’ll get someone who means well but doesn’t understand trademark law. At worst you’ll get a troublemaker who is openly hostile to your client. So getting people to take down content that infringes your client’s trademark is not simple or easy. And even if you succeed, the same guy may do it again next week. I think the arcade game “Whack-A-Mole” was created just to give trademark lawyers a metaphor to overuse.

No, contacting the infringer is usually not an attractive option. So you submit your trademark complaint through the online portal. What are the chances of success? Let’s use YouTube as an example again.

To YouTube’s credit, when you submit a trademark takedown notice by email, you promptly receive a personalized note from “The YouTube Team.” It looks something like this:

Screen Shot 2020-02-09 at 4.44.16 PM.png

In case you missed it on the policy page, this note provides a friendly reminder that “YouTube is not in a position to mediate trademark disputes between users and trademark owners.” You can see where this is going.

Tell your lawyer to prepare the demand letter.


IMG_4571Zach Wolfe (zwolfe@fleckman.com) is a Texas trial lawyer who handles non-compete and trade secret litigation at his firm Fleckman & McGlynn, PLLC. Thomson Reuters named him a 2020 Texas “Super Lawyer”® for Business Litigation.

These are his opinions, not the opinions of his firm or clients, so don’t cite part of this post against him in an actual case. Every case is different, so don’t rely on this post as legal advice for your case.

Survey Says? Buc-ee’s Trademark Case Goes to Trial

Survey Says? Buc-ee’s Trademark Case Goes to Trial

TexasBarToday_TopTen_Badge_VectorGraphicThis week on Five Minute Law we have a survey. First take a look at the following photos taken at a store on the side of a Texas highway:

Choke Canyon SnacksChoke Canyon Jars and Drink StationChoke Canyon T-shirtsChoke Canyon CoolersChoke Canyon IceChoke Canyon Logo

And here’s the question: Who do you think owns this store?

If this were a real trademark survey, the question would be open-ended. But to make it more interesting I’m going to make it multiple choice. Pick the answer that comes closest to capturing your reaction:

A. Buc-ee’s, or a company affiliated with Buc-ee’s.

B. A company unaffiliated with Buc-ee’s that is imitating the Buc-ee’s concept.

C. I’m not from Texas. I have no idea what “Buc-ee’s” is.

Answer A would suggest that the owner of this store is infringing on the Buc-ee’s trademarks and trade dress. Infringement occurs when the use of similar marks causes a likelihood of confusion concerning the source, sponsorship, approval, or affiliation of the products or services.

But I’m guessing that most of you–at least the ones from Texas–answered B. I know this because I already did my own little pilot survey. More about that later.

The actual answer is Shepherd Retail, Inc.–and two other corporations you haven’t heard of that operate similar “Choke Canyon” stores. Those companies are defendants in a jury trial pending in federal court in Houston. (The images above are from the First Amended Complaint in that case.)

Buc-ee’s claimed the defendants were unlawfully infringing and diluting Buc-ee’s distinctive beaver trademark and distinctive trade dress. Gabrielle Banks reported on the opening statements in the Houston Chronicle.

Likelihood of Confusion and Trademark Surveys

So do trademark law experts agree that Choke Canyon was infringing Buc-ee’s trademarks?

That would be interesting to know, but it really doesn’t matter. You see, trademark law is different from other kinds of intellectual property law in that it is almost entirely subjective.

I don’t mean subjective in the sense that there are no fixed governing standards. I mean that it doesn’t matter what some hypothetical reasonable person would think. What matters is whether actual consumers are likely to be confused about the source of a product or service, regardless of whether some smarter person thinks they should be confused.

Contrast that with patent law. The question there would be, for example, does some feature of the Samsung Galaxy phone infringe on a patent for smartphone technology owned by Apple? Even if experts disagree about the answer, that question is entirely objective. You look at the features of the product and compare them with the “claims” set forth in black and white in the patent. If the product does the things disclosed in one or more of the claims, it infringes. It doesn’t matter whether consumers think it infringes.

But in trademark law, what consumers think is everything. For that reason, consumer surveys are usually regarded as the most probative form of evidence.

If you know anything about litigation, you can see where this is heading: a cottage industry of high-priced Ph.Ds who design and supervise the surveys, and a “battle of experts” when there are enough dollars at stake.

My Pilot Survey

The amount of money in play is important because a properly designed and implemented trademark survey is very expensive (if you have to ask, you can’t afford it). So, companies will sometimes have an expert do a smaller–and cheaper–“pilot” survey to get a preliminary indication.

But even a pilot survey by an expert would be an extravagant expense to support a single blog post. So for this post I did my own pilot survey of three consumers: my wife and two kids.

They fit the target demographic: Texas residents who often drive between Houston, Austin, Dallas, and San Antonio. And all three of them are very familiar with Buc-ee’s. We stop there just about any time we are driving to another city in Texas.

So what would they say when I asked them if the products and marks from Choke Canyon were from Buc-ee’s?

Not so fast! You can’t ask the survey question in a way that suggests what the answer is. In a trademark survey, methodology is everything. The way the questions are phrased can have a huge impact on the results.

The classic survey methodology in trademark cases is the Eveready method. A typical Eveready survey would show a consumer a photo of the defendant’s product and ask “who makes this product?” The idea is to avoid bias by making the question open-ended and never even mentioning the name of the plaintiff.

So, to comply with Eveready and to avoid a Daubert challenge, I showed my subjects the images above from the Choke Canyon stores and asked two questions: (1) who do you think puts out the products shown here (or owns the store shown here)? (2) do you think the company that makes this product (or owns this store) is connected with or affiliated with some other company?

Survey Results

Let’s start with my son Eric (nine years old). When he saw the images that do not include the words “Choke Canyon” and I asked who puts out the products, he initially said the “alligator place” but eventually said “I wouldn’t know.” When he saw the images that do include the words “Choke Canyon,” he answered “Choke Canyon.” Why? “Because it says Choke Canyon on it.”

Did he think Choke Canyon was connected with or affiliated with some other company? No.

One thing I learned from questioning Eric is that it can make a difference whether the person taking the survey knows it is ok to say “I don’t know.” I think it’s human nature to want to come up with some answer, rather than admitting you just don’t know.

My daughter Hailey (17 years old) had pretty similar answers. She said “I don’t know” when asked about who puts out the products and owns the store, but in a couple cases she added “I would assume it was some tourist location in Florida” and “I would assume some kind of small local business.” For the products that say “Choke Canyon,” she said Choke Canyon Travel Center was the source “because it says it right on the center of the label.”

Did she think Choke Canyon was connected with or affiliated with some other company? No.

I decided to press a little. “Why don’t you think it’s affiliated with Buc-ee’s?”

“It looks like Buc-ee’s,” she said, “but with an alligator,” so “I don’t think it’s affiliated with Buc-ee’s.” She added, “it’s a completely different logo, obviously a different company.”

When I told her Buc-ee’s is suing Choke Canyon for trademark infringement she simply said, “that’s stupid.” (Folks, I just report the survey results.)

“Buc-ee’s is a beaver. This is an alligator.”

Finally, I surveyed my wife Rebecca. (Caveat: she was a legal assistant and is a really smart cookie, so maybe not representative of consumers generally.)

“Who do you think puts out the products shown here?” I asked. “Choke Canyon Travel,” she said, “but the products look just like stuff from Buc-ee’s.”

Don’t jump ahead!

“Do you think the company that sells this is connected with or affiliated with some other company?” I asked. “Probably not,” she said, but then we got sidetracked talking about what it meant that the trademark had that little (R) symbol next to it.

Stop over-analyzing!

When we got back on track, I showed her the images without the words “Choke Canyon,” and she said “I have no idea” and there was “no possible way” to know who put the products out or owned the store.

“Do you think the company that owns this store is affiliated with or connected with some other company?” No, she said. “I have no reason to think that.”

But why didn’t she think the Choke Canyon store was affiliated with Buc-ee’s? “Buc-ee’s is a beaver, this is an alligator.” Then, unprompted, she asked, “is Buc-ee’s suing them?” Yes, I told her. “That’s the stupidest thing I’ve ever heard.” (She doesn’t mince words.)

My wife then pulled out her phone and showed me a photo she had taken in some gas station. It was something like “Oma’s Choice Texas Quail’s Eggs” in an old-timey mason jar. It had the same kind of “country” look and feel as the jarred products from Choke Canyon and Buc-ee’s, and she said that gas station had the same products like “nuggets” that Buc-ee’s is known for.

Ah, third-party use. A further complication.

I tried to steer back to the issue at hand. “But don’t you agree that Choke Canyon is copying the Buc-ee’s concept?” I asked.

“Yes,” she said, “but you can’t trademark a concept.”

Like I said. A smart cookie.

*Update: Want to know what the jury thought? Click here.


IMG_4571Zach Wolfe (zwolfe@fleckman.com) is a Texas trial lawyer who handles non-compete and trade secret litigation at his firm Fleckman & McGlynn, PLLC. He didn’t have space here to explain “trade dress,” but you can check out this video at 2:29.

These are not the opinions of his firm or clients (as noted, they are not even his opinions), so don’t cite part of this post against him in an actual case. Every case is different, so don’t rely on this post as legal advice for your case.

Did You Get the Digits? Judge Grants Preliminary Injunction in Houston College of Law Trademark Litigation

Did You Get the Digits? Judge Grants Preliminary Injunction in Houston College of Law Trademark Litigation

Federal District Court finds that “Houston College of Law” Creates Likelihood of Initial-Interest Confusion with University of Houston

Meet Dave. Dave is a college student in Florida. He spent the first couple of years at school mostly partying, but lately he’s been working on getting his grades up, and he’s thinking about applying to law school. Dave doesn’t have any lawyers in his family, but he’s familiar with the University of Houston because he likes high-scoring college football teams. Dave saw an ad for Houston College of Law and, thinking it must be part of the University of Houston, he checked out its website.

Recognizing the red and white color scheme, Dave started clicking through the website to find out more. Pretty soon, Dave realized that Houston College of Law may not be part of the University of Houston. “Hey, Tony,” he said to his roommate, “is Houston College of Law the one you’re applying to?” “No, you dumb***,” Tony said. “That’s the one with the moot court teams. U of H has its own law school. It’s the one in the top 50.” “Oh,” Dave said sheepishly. “Well I’m going to check out this Houston College of Law anyway.”

Did actionable trademark infringement just happen here? That, essentially, is the difficult issue presented in Board of Regents of the University of Houston System v. Houston College of Law, which I first covered here. You can read the Houston Chronicle’s coverage here.

On October 14, Judge Keith Ellison issued this opinion and granted the University of Houston’s motion for a preliminary injunction to stop South Texas College of Law from changing its name to Houston College of Law, finding there was a substantial likelihood that prospective law students would confuse Houston College of Law with the University of Houston, at least initially, and that such “initial-interest confusion” is actionable in the Fifth Circuit.

Wow.  That was a really long sentence.  Let’s break this down.

What Issues Were Most Important to the Decision?

Like most trademark infringement opinions, Judge Ellison’s opinion walks through eight factors—the “digits”—to determine the likelihood of confusion. But the decision really came down to three key issues.

Houston College formerly
Would you think this school is part of the University of Houston?

First, there was the typical “Battle of Surveys” between two experts. UH’s expert did a survey that found a 25% net confusion rate. Houston College of Law’s expert’s survey found a 6% net confusion rate. “Thus,” Judge Ellison deadpanned, “as is so often the case in high-stakes litigation, highly qualified experts have presented dueling reports that reach significantly different results.”

The judge found that UH’s expert’s methodology was more reliable, and that was a major factor supporting the decision. The lesson for lawyers who handle trademark litigation is that it is important to work closely with the expert ahead of time to make sure the methodology is as defensible as possible. I know, easier said than done.

Second, UH benefitted from citing anecdotal examples of actual confusion, such as misdirected mail and email, including confusion by prospective law students. These instances of confusion were minor—and probably fleeting—but the cumulative effect was to bolster UH’s argument that people are likely to associate Houston College of Law with UH.

Third, UH won the legal argument on initial-interest confusion. I explained the concept of initial-interest confusion when I wrote about the preliminary injunction hearing: When a consumer walks into a bar called the “Velvet Elvis” thinking it is affiliated with Elvis Presley and then realizes it is not, initial-interest confusion has happened. Even though the consumer is not confused at the “point of sale,” the initial confusion has succeeded in getting him “in the door.”

Trademark surveys: they’re not rocket science

Houston College of Law’s lawyers argued the doctrine of initial-interest confusion doesn’t make sense when the product at issue is a three-year law degree. Even if Dave goes to the Houston College of Law website thinking it is affiliated with the University of Houston, they might say, Dave is eventually going to figure out the two institutions are not affiliated. No one is going to go to the wrong law school for three years by mistake. No harm, no foul.

But Judge Ellison disagreed. Even if the initial confusion only causes Dave to go to the Houston College of Law website, the judge would say, Houston College of Law has unfairly obtained some benefit from the goodwill built up by the University of Houston, and that is the kind of harm the Lanham Act is intended to remedy.

What Issues Were Less Important to the Decision?

Three issues received a lot of attention at the hearing but relatively less attention in the opinion.

First, the lawyers at the hearing spent a lot of time talking about Houston College of Law’s intent to cause confusion with the University of Houston, particularly the change in school colors from crimson and gold to “Cougar” red and white. You know it’s a trademark lawsuit when people get worked up arguing about different shades of red.

Modern art, or evidence of trademark infringement?

Judge Ellison did go over the evidence and arguments on intent in some detail, and he did find the change in school colors “troubling.” Ultimately, however, intent was not a major stated factor in his decision. He found the question of intent a “close call” that did not weigh in either side’s favor in the likelihood of confusion analysis.

Second, as I described when I first reported on the hearing, there was a lot of evidence and argument about whether the University of Houston still calls its law school “College of Law.” This was potentially important, because it is easier to confuse “Houston College of Law” with “College of Law” than with “Law Center.” But Judge Ellison sidestepped this issue by focusing on just two of the UH trademarks at issue: “University of Houston” and “University of Houston Law Center.” This meant he didn’t even have to address UH’s use vel non of “College of Law.”

Third, many hours were billed arguing about whether, after the Supreme Court’s eBay decision, trademark infringement creates a presumption of irreparable injury to support granting an injunction. At least one prescient commentator predicted that Judge Ellison would avoid the need to decide this issue:

If Judge Ellison issues an injunction, I expect he will say something to this effect: “It is unclear in the Fifth Circuit whether a showing of trademark infringement creates a presumption of irreparable harm, but in this case it is unnecessary to decide that issue because there is evidence of irreparable harm.”

Turns out that is essentially what Judge Ellison said: “Irrespective of the presumption, the Court concludes that monetary damages will not adequately compensate UH.”

And yes, you guessed it, the commentator quoted above was Five Minute Law.

Update: At a hearing on October 26, Houston College of Law’s lawyers agreed to stop using “Houston College of Law” and to adopt a new name. See Gabrielle Banks’ coverage in the Houston Chronicle here.

Overtime: The Way Opinions Should Be Written

At the risk of going over my five minutes, I have to note two things about the Board of Regents opinion that are a credit to Judge Ellison and—it must be said—a discredit to some other courts by comparison. First, there is the simple fact that Judge Ellison wrote his own opinion at all. Often, trial court judges simply sign an order that has been prepared by the winning side. To be fair, writing an opinion is a lot of work (and federal judges typically have more staff support than state court judges).

But the more disappointing reason many trial court judges don’t like to write their own opinions and orders is that their main concern is not getting reversed on appeal. They figure that signing a one-sided order prepared by the winning side is likely to maximize the chances of the order holding up on appeal. But should that be the judge’s greatest concern?

Admittedly, it’s a lot of work for a judge to write his own opinion

The second thing that is impressive about Judge Ellison’s opinion is less obvious: it is not a one-sided opinion that pretends the decision is easy. For each sub-issue, Judge Ellison considered the best arguments made by each side and gave each side its due. For example, in deciding which expert survey was more persuasive, he explained the strengths and weaknesses of each, concluding that “neither survey is without flaw” but that the UH survey was “substantially stronger.” I don’t necessarily agree with the decision—I’m still a little skeptical about initial-interest confusion—but the important thing is that the process be fair and impartial.

If you don’t spend a lot of time reading court opinions, you might be thinking “what’s the big deal, isn’t that what judges are supposed to do?” The problem is that even when judges write their own opinions, they often do so as if they were writing a brief for the winning side. All of the losing arguments are absurd. The winning arguments are stated so strongly that the reader wonders how it could have come out any other way. When this style is employed, it is fairly obvious.

But I will let you in on a little secret that may not be so obvious: there is nothing to stop the judge from writing an opinion that simply ignores facts and arguments that do not support the decision. Believe me, it happens. Unless the reader was personally involved in the case or takes the time to read the briefs, he probably won’t even realize the judge has done this.

And that’s a shame.



Zach Wolfe (zwolfe@fleckman.com) is a Texas trial lawyer who handles non-compete and trade secret litigation (and sometimes even trademark litigation) at his firm Fleckman & McGlynn, PLLC. Thomson Reuters named him a 2020 Texas Super Lawyer® for Business Litigation.

These are his opinions, not the opinions of his firm or clients, so don’t cite part of this post against him in an actual case. Every case is different, so don’t rely on this post as legal advice for your case.

Court Holds Preliminary Injunction Hearing in “Houston College of Law” Trademark Case

Court Holds Preliminary Injunction Hearing in “Houston College of Law” Trademark Case


There is something almost surreal about a Houston courtroom packed with Houston lawyers watching some of Houston’s most prominent lawyers argue about whether a Houston law school’s new name infringes the trademarks of another Houston law school.

That was the scene on August 26, 2016 in U.S. District Judge Keith Ellison’s courtroom. Judge Ellison heard lengthy presentations by two teams of lawyers. The judge interjected questions and comments but made no ruling. You can read the motion for injunction here and the response here.

Spoiler Alert:  Judge Ellison GRANTED the temporary injunction in this 42-page opinion. You can read my analysis of the opinion here

For readers who are not Houston lawyers, a little background. South Texas College of Law is a private law school located in downtown Houston. It changed its name to Houston College of Law. The nearby University of Houston promptly sued Houston College of Law for trademark infringement, claiming that the new name was likely to be confused with the public University of Houston, which has its own law school.[1]

Houston College formerly
Houston College of Law argues it changed its name because “South Texas” gave people the wrong idea

Shortly after being sued, Houston College of Law received a gift: this opinion from the Eleventh Circuit Court of Appeals holding that there was no likelihood of confusion between “Florida International University” and “Florida National University.”[2] Houston College of Law argued that this Florida case provided a “blueprint” for the Houston case. However, the University of Houston argued that the Florida case had significantly different facts.

Watching this hearing was more educational than attending any trademark litigation seminar. Among a host of intriguing issues raised, these stood out:

1. What is the Name of the Law School at the University of Houston?

You would think this would be an easy issue. Over the years, the law school at the University of Houston has called itself the “University of Houston College of Law,” “Bates College of Law,” and the “University of Houston Law Center.”

The defendant argued that “University of Houston Law Center” has been the name since 1982, and that UH has abandoned “University of Houston College of Law.” The plaintiff argued that despite the change to the primary name “University of Houston Law Center,” UH has continued to use “College of Law” on diplomas and other materials.

Houston College of Law Plaque and Diploma
UH argues it still uses the name “College of Law”

Why does it matter? For one thing, the University of Houston did not include “University of Houston Law Center” on the list of registered and common law trademarks it sought to protect. It is easier to show a likelihood of confusion between “Houston College of Law” and “University of Houston College of Law” than to show a likelihood of confusion between “Houston College of Law” and “University of Houston Law Center.” A rose by any other name may smell as sweet, but in trademark litigation, the name’s the thing.

Judge Ellison did not resolve this issue at the hearing, but it was interesting that he asked more than once whether the defendant’s new name could cause some confusion with the name “University of Houston Law Center.” There was also a lot of argument about school colors, but the judge seemed less interested in that.

2. Who Are the Relevant Purchasers of Services from a Law School?

Houston College of Law argued that prospective students are the relevant consumers, while the University of Houston argued for a broader group that includes people who hire law school graduates. Why does this matter?

Let’s back up a little. The key issue in trademark infringement litigation is “likelihood of confusion.” To determine likelihood of confusion, courts consider a list of eight factors (for some reason the Fifth Circuit calls them “digits”), which include the “identity of purchasers” and the “degree of care exercised by potential purchasers.”[3] A higher degree of care means a lower likelihood of confusion.

If, as Houston College of Law argues, the relevant consumers are prospective law school students, you would expect the likelihood of confusion to be lower. These are relatively sophisticated “purchasers” making a major life decision. They are likely to exercise a high degree of care in selecting the place where they are going to spend their lives (and money) for the next three years.

But if you expand the universe of “consumers” to a larger group that includes practicing lawyers and potential clients, you would expect the likelihood of confusion to be higher. In a sense, UH argues, a law school doesn’t just produce education, it produces law school graduates. The “consumers” of those graduates include the people who decide whether to hire the graduates. Those people are not making a life decision about where to go to law school and may be more likely to be confused.

Both arguments are plausible. But arguments are one thing, authorities are another. Judge Ellison asked more than once what authority—meaning case law—the University of Houston had to support its position that the relevant consumers are not just prospective law students. UH had an argument for its broader definition of relevant consumers, but it did not identify any direct authority for it.

UH Law Center
UH argues that the relevant consumers are not limited to prospective law students

But even if the relevant consumers are prospective students, UH argued, the survey conducted by its expert found that the confusion rate among prospective law students was actually higher than the confusion rate among other groups. Houston College of Law, on the other hand, argued that any initial confusion among prospective law students will be quickly dispelled as soon as they start investigating law schools. That argument dovetails with the next legal issue.

3. Does “Initial-Interest Confusion” Matter When the Service at Issue is a Three-Year Law Degree?

When the defendant’s alleged infringement causes initial confusion among consumers that is later cleared up, trademark lawyers call it “initial-interest confusion.” Does evidence of initial-interest confusion establish a “likelihood of confusion”?

Houston College of Law argued that the concept of initial-interest confusion, if it applies at all in the Fifth Circuit, is limited to scenarios like bars and fast food restaurants. For example, if a restaurant on the highway uses the name “McDonalds” to get people to pull over and come in, it has caused McDonalds harm because once those people are “in the door,” they may decide to stay even after they realize “this isn’t the real McDonalds.” Similarly, if a bar uses the word “Elvis” in its name to get people in the door, it has benefitted from the association with the King, even if people later realize that the bar is not affiliated with the real Elvis Presley.[4]

coffee shop sign
A trademark that gets people “in the door” can create “initial-interest confusion”

Prospective law school students, on the other hand, are not going to walk into a law school because of the name and say “well, as long as I’m here, I might as well stay another three years and get a law degree.” Even if a prospective student initially thinks that Houston College of Law is affiliated with the University of Houston, that initial impression does not cause any harm to the University of Houston once the student learns he was mistaken. At least that is Houston College of Law’s argument on “initial-interest confusion.”

*Update: On September 13 Judge Ellison issued this order asking for supplemental briefing on this very issue. UH filed this brief on September 20, and Houston College of Law filed this brief on September 27.

4. Does Trademark Infringement Create a Presumption of Irreparable Injury?

If the judge finds a likelihood of confusion, does UH get an injunction? Theoretically, a plaintiff seeking an injunction must show imminent “irreparable injury,” meaning injury that cannot be adequately compensated by money damages. I say “theoretically” because as a practical matter, this is one of the most ignored rules in litigation. The real rule seems to be that an injunction will be issued if the judge thinks the defendant’s conduct is not just bad, but really bad.

But that’s a subject for another post. In trademark litigation, it is usually enough for a plaintiff to prove that the defendant is infringing the plaintiff’s trademark. The court then issues an injunction ordering the defendant to stop doing the thing that is infringing the plaintiff’s trademark. This has become so commonplace that some say a showing of likelihood of confusion creates a presumption of irreparable injury, such that specific evidence of irreparable injury is not required.

Does the eBay case apply to trademark litigation?

However, in eBay Inc. v. MercExchange, L.L.C., the U.S. Supreme Court declined to adopt a categorical presumption that patent infringement causes irreparable harm favoring an injunction.[5]

Does the eBay principle apply to trademark infringement as well? This is an issue trademark lawyers love to argue, but it borders on academic. In most cases the plaintiff offers at least some evidence of irreparable harm. If the judge is inclined to grant an injunction, it is safer for the judge to cite evidence than to rely on a categorical presumption that may or may not apply.

The argument to Judge Ellison on this issue was typical. Houston College of Law argued that there is no presumption of irreparable injury and that the evidence did not prove irreparable injury. Conversely, the University of Houston argued that there is a presumption of irreparable injury and that even without a presumption, the evidence proves irreparable injury.

“How do you value a law school?” UH’s counsel pointedly asked in his summation. If the University of Houston Law Center’s national ranking drops because of confusion with Houston College of Law, he argued, that harm cannot be adequately compensated with dollars. The same number of students may enroll and pay the same tuition, but the quality of the students won’t be the same.

If Judge Ellison issues an injunction [narrator: he did], I expect he will say something to this effect: “It is unclear in the Fifth Circuit whether a showing of trademark infringement creates a presumption of irreparable harm, but in this case it is unnecessary to decide that issue because there is evidence of irreparable harm.”

Will he issue an injunction? Stay tuned to Five Minute Law to find out.



Zach Wolfe is a Texas trial lawyer who handles non-compete and trade secret litigation (and sometimes even trademark litigation) at his firm Fleckman & McGlynn, PLLC. Thomson Reuters named him a 2020 Texas Super Lawyer® for Business Litigation.

His references to arguments made in the lawsuit are not endorsements of the arguments. Any opinions expressed are his own, not the opinions of his firm or clients. Every case is different, so don’t rely on this post as legal advice for your case.

[1] Bd. of Regents of the Univ. of Houston Sys. v. Houston College of Law, Inc., No. 4:16-cv-01839 (S.D. Tex. 2016).

[2] Florida Int’l Univ. Bd. of Trustees v. Florida Nat. Univ., Inc., No. 15-11509, 2016 WL 4010164 (11th Cir. July 26, 2016).

[3] Am. Rice, Inc. v. Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008).

[4] This was an actual case: Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998).

[5] eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 393-94 (2006).