Tabberone is pronounced tab ber won
[page 1339] |
It is only after the point of sale that the likelihood of confusion standard must be tempered. As discussed above, requiring the manufacturer to eliminate the likelihood of confusion past the point of sale will, in most cases, entirely eliminate the possibility that the mark could serve a functional purpose. A floor mat whose upper surface reads "FORD (not authorized by Ford Motor Company)" would obviously attract few customers. Protecting functional copying of trademarks will therefore require that we tolerate at least some confusion as to source or sponsorship after the point of sale.
The potential for confusion can be diminished, however, by requiring that the manufacturer of a product that employs a trademark for functional purposes take all reasonable steps to eliminate post-sale confusion consistent with the functional use of the mark. The manufacturer will, for example, often be able to place a disclaimer on a portion of the article not generally visible while the article is in use. A notice of non-authorization on the underside of a floor mat, or a disclaimer affixed to the inside of a football jersey, will not hinder the functional use of a trademark, but may somewhat reduce the likelihood of post-sale confusion. In other cases, the copier may be able to place its own name alongside the copied trademark without interfering with the mark's functionality. There may also be cases where a visible disclaimer will not detract from the functional purpose of the trademark. Whatever the method chosen, it must be the most effective reasonably available that does not materially interfere with the trademark's functional purpose.
What constitutes reasonable measures will vary with the nature of the product and its market. In some cases, no reasonable measures may be available. A concealable [page 1340] disclaimer may be much easier to affix to a floor mat, for instance, than to jewelry. A particular measure is likely to be unreasonable if it substantially decreases consumer demand or materially increases production costs. Determining the most effective method reasonably available for eliminating the likelihood of confusion consistent with functional enjoyment of the mark is a question of fact, to be determined on a case by case basis.
We are similarly unable to rule, as a matter of law, whether Plasticolor has taken adequate steps to avoid the likelihood of post-sale confusion. As discussed above, Plasticolor has affixed disclaimers to the underside of the mats, so that the disclaimers are not visible while the mats are in ordinary use. Anyone inspecting the mats' underside, however, would easily be able to see the disclaimer. Without any evidence as to whether the public is likely to remain confused despite the disclaimer, and without any evidence as to the mats' salability with a more prominent disclaimer, we are unable to ascertain whether the current disclaimer represents the most effective reasonable step to reduce post-sale confusion.
FN While point-of-sale and post-sale confusion are both considered in determining whether there has been trademark infringement, the two are not equivalent in significance. Point-of-sale confusion is by far the more important, because it directly affects individuals who are in the market for the particular product. Post-sale confusion may affect future purchasers of the product, but in a more indirect and diffuse manner; post-sale confusion is far less likely to cause erroneous purchases than point-of-sale confusion.
FN The possibility of post-sale confusion can be eliminated entirely if the registrant is able to embody its trademark in a copyrighted logo. See, e.g., Camp Beverly Hills, Inc. v. Camp Central Park, Inc., 217 U.S.P.Q. (BNA) 783, 784 (S.D.N.Y.1982). Ford has not done so.