Tabberone Logo

Tabberone is pronounced tab ber won
not tay ber own

Tabbers Temptations Home | Site Index | Disclaimer | Email Me!
"The only thing necessary for the triumph of evil is for good men to do nothing"
Edmund Burke

[page 117]
It appears the trial court made the same mistake that we criticized in Burlington Coat Factory: inappropriately focusing on the similarity of the marks in a side-by-side comparison instead of when viewed sequentially in the context of the marketplace. The district court reasoned
[I]t could not be more obvious that Louis Vuitton uses the initials "LV," while Dooney & Bourke uses its trademarked "DB" logo. Thus, a consumer seeing these trademarks printed on these bags, either up close or at a distance, is not likely to be confused. . . . [T]he Dooney & Bourke bags only use their "DB" initials; there are no geometric shapes interspersed with the monogram. . . . [T]he colors used on the Dooney & Bourke bag are noticeably toned down, and consequently fail to evoke the characteristic "friction" sparked by Murakami's bright, clashing colors, the Louis Vuitton marks create a very different overall impression (i.e., large interspersed shapes and initials in crisp, bold colors) than the Dooney & Bourke bags (i.e., tightly interlocked initials in dulled colors).
Dooney & Bourke, 340 F.Supp.2d at 440 (emphasis added). We disapproved almost identical language in Burlington Coat Factory. See Burlington Coat Factory, 426 F.3d at 537-38.

Utilizing a side-by-side comparison can be a useful "heuristic means of investigating similarities and differences in . . . respective designs," so long as a court maintains a "focus on the ultimate issue of the likelihood of consumer confusion." Id. at 538. Courts should keep in mind that in this context the law requires only confusing similarity, not identity. See, e.g., The Sports Auth., Inc. v. Prime Hospitality Corp., 89 F.3d 955, 962-63 (2d Cir.1996). Further, where, as here, the plaintiff claims initial-interest and post-sale confusion, market conditions must be examined closely to see whether the differences between the marks are "likely to be memorable enough to dispel confusion on serial viewing." Burlington Coat Factory, 426 F.3d at 538.

The district court erred because it based its determination that confusion between the Vuitton and Dooney & Bourke marks was unlikely at least in part on an overemphasized side-by-side comparison. This is suggested by the district court's comment that "no amount of expert opinion, legal analysis, or demonstrative evidence can overcome the clarity that comes from direct observation." Dooney & Bourke, 340 F.Supp.2d at 421.


wordpress analytics