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

[page 1123]
II. Likelihood Of Confusion.

The plaintiff in a trade dress action must show that "potential customers are likely to be confused by the defendant's trade dress into thinking that the defendant is affiliated, connected or associated with the plaintiff or that the defendant's goods originated with, or are sponsored or approved by the plaintiff." Vornado, 58 F.3d at 1502-03. Likelihood of confusion is not limited to confusion on the part of the direct purchaser of the product but also includes likelihood of post-sale confusion, arising when consumers, other than direct purchasers, view the product in use and are misled. See Payless Shoesource, Inc. v. Reebok Int'l. Ltd., 998 F.2d 985, 989 (C.A.Fed. (Kan.) 1993). Courts consider a number of factors to determine likelihood of confusion including (1) the degree of care likely to be exercised by purchasers, (2) the degree of similarity between the designation and the trademark or trade name, (3) the relation in use and manner of marketing between goods and services marketed by the actor and those marketed by the other, and (4) the intent of the actor in adopting the designation. See Payless, 998 F.2d at 988 (citing Beer Nuts, 711 F.2d at 940) (quoting Restatement of Torts 729 (1938)). Western must demonstrate that Superior's sale of its pumps creates a likelihood of confusion on the part of an appreciable number of ordinary purchasers exercising due care in the circumstances. See Versa, 50 F.3d at 200; Nikon, Inc. v. Ikon Corp., 987 F.2d 91, 94 (2d Cir.1993); General Mills, Inc. v. Kellogg Co., 824 F.2d 622, 626 (8th Cir.1987); see also Avrick v. Rockmont Envelope Co., 155 F.2d 568, 572 (10th Cir.1946) ("It is the generally accepted rule that a designation is confusingly similar to a trade-mark if an ordinary prospective purchaser, exercising due care in the circumstances, is likely to regard it as coming from the same source as the trademarked article.").

[page 1126]
B. Post-Sale And Initial Interest Confusion.

The closer issue in this case is whether Western has established a likelihood of "post-sale" confusion. Post-sale confusion "refers to the association consumers might make between the allegedly infringing item and the familiar product, thereby influencing [page 1127] their purchasing decisions." Insty*Bit, Inc. v. Poly-Tech Indus., Inc., 95 F.3d 663, 671 (8th Cir.1996), cert. denied, ___ U.S. ___, 117 S.Ct. 1085, 137 L.Ed.2d 219 (1997). The Federal Circuit has held that "consideration of post-sale confusion in determining likelihood of confusion is not inconsistent with Tenth Circuit trademark law and would likely be adopted by the Tenth Circuit if it considered the issue head-on." Payless, 998 F.2d at 989 (citation omitted); see Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir.1986). In Lois Sportswear, the court recognized the potential for post-sale confusion where a "consumer seeing the familiar stitching pattern [on defendant's jeans] will associate the jeans with [plaintiff Levi] and that association will influence his buying decisions." Id. at 873. The Eighth Circuit has recognized the potential for post-sale confusion where consumers are "first exposed to [plaintiff's] products in use (that is, outside of the package) and then go to a distributor to find these tools by attempting to match the products on the shelves with the ones they are seeking." Insty*Bit, 95 F.3d at 672. Western has described post-sale confusion in this case as customers who either (1) observe the silhouette of Western's pumps in the field and then purchase a Superior pump on the mistaken belief that the Superior pump is manufactured by or somehow associated with the Western pump observed in the field or (2) do not purchase a Western pump because of a negative experience with a Superior pump (which has a similar silhouette to Western's pump).

Both of Western's post-sale confusion claims are premised on the assumption that individuals purchase chemical injection pumps by reference to shape. For example, Western argues that purchasers of the pumps at issue include "roustabouts" who may purchase pumps based on the shape of the pump in the distributor's store compared to the pump they observed in the field. Western points to the following excerpts of testimony in support of its argument:

Q: When they come in, do they know they want a Western or do they ask for - what other type of pumps you sell?

A (by Glen Wood): Well, that's the only regular chemical injector we sell. But they don't necessarily come in wanting a Western because we have been selling the pumps since 1957, so they may actually come in wanting one of Beal Equipment's [pumps], whatever we've got on display, going by appearance.

* * * * * *

Q: And what is the customer going to see if he goes into a supply store and they have a Superior pump there?

A (by Scott Greer): He's going to see a Western.

Q: Why do you believe that?

A: Because of the shape.

The above testimony establishes that there is a "potential" for confusion, but it certainly does not establish that there is a likelihood of confusion. See Versa, 50 F.3d at 200-01 (possibility of confusion insufficient). Neither Mr. Wood nor Mr. Greer testified that individuals initially purchase chemical injection pumps based on the shape of the pumps they observe in the field. As the Seventh Circuit noted, the Lanham Act seeks to avoid "customer confusion when choosing to purchase, or not purchase, the items, not public confusion at viewing them from afar." Dorr-Oliver, 94 F.3d at 382 (quoting Nike, Inc. v. Just Did It Enterprises, 6 F.3d 1225, 1229 (7th Cir.1993)). The court finds no probative evidence that an appreciable number of ordinary customers purchase chemical pumps based on the shape of the pump the customer observes in the field.

Mr. Greer testified that he received a Western LD pump that had been painted blue leading him first to believe he had a Superior JP pump. Notably, Mr. Greer stated that he looked at the serial number tag to determine the actual manufacturer. Mr. Greer's statements also establish that color is one way to identify chemical injection pumps but that neither shape nor color is determinative of source in the chemical injection pump market.

As with point of sale confusion, we think that the clear labeling and packaging on both Western's and Superior's products negates any likelihood of post-sale confusion. Unlike [page 1128] most of the labels attached to jeans, the labels affixed to Western's and Superior's pumps are permanent. Thus, post-sale confusion is unlikely. See L.A. Gear, 988 F.2d at 1134; cf. Lois Sportswear, 799 F.2d at 873.


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