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"The only thing necessary for the triumph of evil is for good men to do nothing"
Edmund Burke

[page 1227]
On appeal, GM claims that the district court erred in considering only the likelihood of confusion at the point of sale, rather than possible post-sale confusion. At the preliminary injunction hearing, GM argued that potential customers might see an Urban Gorilla kit on the road and attribute any signs of inferior quality to the Hummer brand. GM cites our opinion in United States v. Foote, 413 F.3d 1240, 1246 (10th Cir.2005), for the proposition that "the correct test is whether the defendant's use of the mark was likely to cause confusion, mistake, or deception in the public in general." That case dealt with claims under the Counterfeit Trademark Act, 18 U.S.C. 2320, but GM also cites cases from other circuits addressing post-sale confusion in evaluating claims brought under the Lanham Act. See, e.g., Chrysler Corp. v. Silva, 118 F.3d 56, 59 (1st Cir. 1997) (recognizing relevance of post-sale confusion in evaluating a trade dress infringement claim); Esercizio v. Roberts, 944 F.2d 1235, 1244-45 (6th Cir.1991) (concluding that Congress broadened the protections afforded under the Lanham Act to prevent confusion beyond the point of sale); Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir.1987) (noting the relevance of the after-sale context in evaluating the likelihood of confusion); Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir. 1986) (holding that the Lanham Act protects against post-sale confusion). Recognizing that the Lanham Act was intended to protect the market as a whole from confusion as to the source of a product, we, like our sister circuits, hold that the likelihood of post-sale confusion is relevant to the trade dress infringement inquiry. See 15 U.S.C. 1127 ("The intent of this chapter is to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce . . . [and] to prevent fraud and deception in such commerce. . . . ").

With reference to the present case, we conclude that the district court appropriately recognized the possibility of post-sale confusion, but simply found GM's evidence insufficient to justify an emergency order. In a colloquy with GM's counsel, the court stated that "[t]he more interesting question [page 1228] is confusion of others down the road" upon seeing the completed car kit. Counsel responded, "if the case goes forward then GM will spend $100,000 commissioning a survey" to show that people who view an Urban Gorilla kit car associate it with a Hummer. Later, the court noted that "actual confusion . . . isn't the test at all," but went on to conclude that confusion was unlikely. Although a court might infer the likelihood of post-sale confusion based on factors other than evidence of actual confusion, such as the similarity of the competing products, the district court in this case found the evidence as to these other factors to be insufficient.

In sum, the district court properly considered the relevant factors for likelihood of confusion, including the possibility of post-sale confusion, and simply determined that GM had not met its burden at this stage of the litigation.[3] Upon consideration of the record, we conclude that the district court did not abuse its discretion on this issue. Because we reach this decision on the likelihood of confusion element of the trade dress infringement claim, we need not address whether the trade dress is nonfunctional.


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