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

[page 243]
Even if the provision of adequate notice can eliminate the likelihood of point-of-sale confusion, however, point-of-sale disclaimers do not address the problem of post-sale confusion by non-purchasers.[13] An action for trademark infringement under the Lanham Act may be based on post-sale confusion of consumers other than direct purchasers, including observers of an allegedly infringing product in use by a direct purchaser, donees, or second-hand purchasers. T & T Manuf. Co. v. AT Cross Co., 449 F.Supp. 813, 823 (D.R.I.) ("courts have recognized infringement even when the purchaser would be informed by reading the package, if the public generally, and users and donees more specifically, would remain confused by the similarity of the products"), aff'd, 587 F.2d 533 (1st Cir.1978), cert. denied, 441 U.S. 908, 99 S.Ct. 2000, 60 L.Ed.2d 377 (1979); see also Payless Shoesource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 989-90 (Fed.Cir.1993); Keds Corp. v. Renee Int'l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989) ("[P]oint of sale confusion [is] not the only issue."); Lois Sportswear, 799 F.2d at 872 ("post-sale confusion as to source is actionable under the Lanham Act").

[page 243]
Notices provided by Staples only at the point-of-sale and on the pen case rather than on the actual product will be of little help in avoiding consumer confusion in the post-sales context. See Lois Sportswear, 799 F.2d at 873. Individuals who receive the altered pens as gifts or who see the pens being used by the actual purchasers may be unimpressed with the quality of Montblanc products and consequently decide not to purchase genuine unaltered Montblanc products. See Rolex Watch [page 244] U.S.A., Inc. v. `Bud' Forrester, 1986 WL 15668,*4 (S.D.Fla.1986).

[page 244]
At my invitation during the preliminary injunction hearing, Montblanc drafted an alternative form of disclosure, detailing the differences between Montblanc pens sold through Staples and those sold by authorized retailers. Montblanc suggests that this notice must be stamped prominently on the top surface of both the exterior cardboard carton and the pen case, as well as printed in large type on a prominent placard next to all Staples' displays of Montblanc products. Montblanc also contends that, as recognized in both Champion Spark Plug and Certain Agricultural Tractors, notice must be provided on the product itself to protect against post-sale confusion. Accordingly, Montblanc contends that, if not enjoined from selling Montblanc instruments, Staples must conspicuously and indelibly stamp "Altered" or "Demarked" on each altered Montblanc pen it sells.

FN[13] "Post-sale confusion" occurs when a consumer sees a product outside of a retail store and wrongly associates the product with the trademark holder, thereby potentially influencing a later purchasing decision. Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872-73. (2d Cir.1986).


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