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not tay ber own

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


[page 537]
The district court found that the BCF and LVM bags "project a wholly different impression" so that customers are likely to view them as dissimilar and therefore unlikely to be confused by their similarities. However, the district court's analysis of the similarity factor appeared to display an inappropriate focus on the likelihood that customers would be confused when viewing the bags simultaneously, whereas serial viewing is the appropriate focus given the market conditions and LVM's claims of initial-interest and post-sale confusion. Thus, the district court stated that:
The Court concludes upon this application that the [BCF bags] are not similar to the Louis Vuitton Handbags-indeed, they appear very different. Significant differences between the handbags are easily discernible whether one views the handbags side-by-side or from a distance. The [BCF bags] are made from very different materials, i.e., shiny beads [page 538] and cheaper cloth, and they project a wholly different impression from that of the Louis Vuitton Handbag. See Barbault Aff. at 43 (noting difference between "cheap" [BCF bag] materials and "finest materials" of Louis Vuitton Handbags); Larson Aff. at 17 ([BCF bag] design is "irregular" and "quirky and cartoon-like" while Louis Vuitton Handbags are "crisp and absolutely symmetrical, giving a clean-edged ordered look"). It is unlikely that the [BCF bag] would be confused with a Louis Vuitton. See, e.g., Meese, Inc. v. International Leisure Prods., Inc., No. 03 Civ. 8684, 2003 WL 22902594 at *4 (S.D.N.Y. Dec. 9, 2003) (no similarity of marks where "the two products, when visually inspected, appear very different").
(emphasis added).

While a district court's simultaneous comparison of two products is not an inappropriate heuristic means of investigating similarities and differences in their respective designs on the way to an ultimate conclusion as to whether the products are likely to leave similar impressions on consumers, district courts must be careful to maintain a focus on the ultimate issue of the likelihood of consumer confusion.[3] As a result, the Lanham Act requires a court to analyze the similarity of the products in light of the way in which the marks are actually displayed in their purchasing context. See, e.g., Fun-Damental Too, Ltd. v. Gemmy Indus. Corp., 111 F.3d 993, 1004 (2d Cir.1997) ("the test of confusion [under the Lanham Act] is not whether the products can be differentiated when [they] are subject to a side-by-side comparison. Instead, we must ask whether they create the same general overall impression such that a consumer who has seen [plaintiff's] trade dress would, upon later seeing [defendant's] trade dress alone, be confused.") (emphasis added); American Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103, 107 (2d Cir.1978) ("The test [for likelihood of confusion] is not whether the consumer will know the difference if he sees the competing products on the same shelf."); Harold F. Ritchie, Inc. v. Chesebrough-Pond's, Inc., 281 F.2d 755, 762 (2d Cir.1960) ("While a side by side comparison of the trademarks ... would enable an attentive observer to differentiate them, this is not the test to be applied. It is the general overall impression which counts."). Whether simultaneous viewing by consumers is likely to result in confusion is not relevant when it is serial viewing that is at issue given the market context or the type of confusion claimed. In such a case, a district court must ask not whether differences are easily discernable on simultaneous viewing, but whether they are likely to be memorable enough to dispel confusion on serial viewing.

 

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