State of Initial Interest Confusion After Promatek v. Equitrac

Eric Goldman

Marquette University Law School


Case citations can be found at



1.      What is Initial Interest Confusion?


w   “The use of another’s trademark in a manner reasonably calculated to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion” (Brookfield)

w   Initially, Initial Interest Confusion was part of multi-factor likelihood of confusion analysis, evaluated under:

n    Purchaser care/sophistication

n    Actual confusion

n    Competitive proximity


2.      Brookfield v. West Coast, 174 F.3d 1056 (9th Cir. April 22, 1999)


w   Video rental store launches website at and uses “moviebuff” in metatags

w   High-end entertainment publisher has senior TM rights in “moviebuff”

w   Parties have some competitive proximity

n    Court says some searchers might settle for defendant’s database instead of continuing to search for plaintiff’s

w   Using standard multi-factor test, court holds domain name infringes

w   A word about search engine operations

n    Robots index every word on web pages

n    Consumers do keyword searches

n    Search engines display sites containing keyword

n    Relevancy algorithms historically gave credit for metatags placement, but algorithms have changed

w   Court says standard multi-factor test doesn’t apply to metatag analysis

w   Metatags create initial interest confusion

w   The billboard analogy


3.      Some 7th Circuit Initial Interest Confusion Cases


w   Dorr-Oliver, 94 F.3d 376 (1996)

n    Trade dress case between corn wet milling manufacturers

n    Initial Interest Confusion requires competitive passing-off: “luring potential customers away from a product by initially passing off its goods as those of the producer’s”—not found here

w   Rust Environment, 131 F.3d 1210 (1997)

n    Former employees launch environmental consulting firm under abandoned name

n    Initial Interest Confusion evaluated under purchaser care factor—not found

w   Syndicate Sales, 192 F.3d 633 (1999)

n    Trade dress case involving plastic baskets for funeral bouquets

n    Initial Interest Confusion doesn’t overcome a finding of no consumer confusion

w   Eli Lilly, 233 F.3d 456 (2000)

n    Natural Prozac alternative marketed as “Herbrozac” and “Prozac” in metatags

n    District court analyzes Initial Interest Confusion under actual confusion factor and finds likelihood of confusion

n    7th circuit reverses Initial Interest Confusion analysis but affirms ruling; bad faith demonstrated by metatag usage


4.      Promatek v. Equitrac, 300 F.3d 808 (7th Cir. Aug. 13, 2002, amended Oct. 18, 2002)


w  Defendant includes competitor’s name in metatags

n   But Equitrac also provided maintenance and service for Copitrak equipment

w  Court evaluates Initial Interest Confusion under purchaser care factor

w   Likelihood of confusion found due to goodwill misappropriation

n    Redefines Initial Interest Confusion: “when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated”

n    Duration of confusion irrelevant; “Equitrac cannot unring the bell”

n    “Customers who are directed to Equitrac’s webpage are likely to learn more about Equitrac and its products before beginning a new search for Promatek and Copitrak”

w   Later, via amendment, court says metatag usage is actionable only when TM is used to deceive consumers into thinking Equitrac was Copitrak

n    How did Equitrak’s metatags deceive?

w   Is “passing off” an element of Initial Interest Confusion or not?

n    AM Gen. v. DaimlerChrysler (Nov. 18, 2002)

w   Remedy: Equitrac’s home page displays disclaimer containing plaintiff’s TMs

n    Who won this case?


5.      If you are plaintiff…


w   Initial Interest Confusion permits you to bypass standard likelihood of confusion multi-factor test (Brookfield)

w   Initial Interest Confusion occurs when defendant tries to influence search listing placement through metatags or otherwise (Eli Lilly, Promatek, JK Harris)

w   Initial Interest Confusion occurs when consumers experience momentary confusion (NYSSCPA, OBH)

w   Initial Interest Confusion occurs when defendant obtain marketplace attention through goodwill association (Mobil Oil, Elvis Presley, Promatek)


6.      If you are defendant…


w   Initial Interest Confusion requires passing off/bait ‘n’ switch (Dorr-Oliver, Northland Ins.)

w   No Initial Interest Confusion unless word is used as source identifier (Netscape)

w   Nominative fair use (Welles)

n    Product not readily identifiable without the mark

n    Mark used only as reasonably necessary to identify the product

n    No suggestion of sponsorship or endorsement

w   Disclaimers cure any Initial Interest Confusion (Bihari)

w   Initial Interest Confusion only applies if parties are competitors (Dorr-Oliver, Netscape, TNN, Checkpoint, Clue)

w   Initial Interest Confusion is insufficient confusion (TeleTech, Chatam, Strick)


7.      Academic Criticism


w   Initial Interest Confusion lacks definition and structure

w   Efforts to attract attention are everywhere

n    By definition, marketing tries to “capture initial consumer attention”

n    Search engines index every word

n    Possibility v. likelihood of confusion

w   TM owners can use Initial Interest Confusion to curtail publication of criticism, parody, neutral information, comparative advertising and ads by ancillary servicers without any real confusion

w   Courts make questionable assumptions about consumer/search behavior

n    Consumers expect perfect relevancy in searches

n    Consumers searching on TM expect to find only TM owner

n    Consumers seeing search listing are confused about what’s at the destination

n    Consumers stop their searches mid-stream

n    Hitting the back button is a “harm”

n    Metatags make a difference in relevancy algorithms

n    Consumers accept irrelevant search results

w   An emerging TM right in gross?.