consumer confusion Archives

Oh brother: Draft settlement agreements carefully

by Ashley K. Justice | Sep 18, 2025 | Copyrights, Trademarks

The US Court of Appeals for the Eighth Circuit affirmed a district court judgment, finding that the plaintiff failed to sufficiently prove damages for its copyright claim, the jury instructions accurately applied the sophisticated consumer exception to initial-interest confusion, and the district court properly submitted ambiguous contract language to the jury for interpretation. Hoffmann Brothers Heating and Air Conditioning, Inc. v. Hoffmann Air Conditioning & Heating LLC, Case No. 24-1289 (8th Cir. Sept. 8, 2025) (Graza, Stras, Kobes, JJ.)

Brothers Tom and Robert Hoffmann were partners in Hoffmann Brothers. After Robert bought out Tom, they entered into a settlement agreement that included a four-year restriction barring Tom from using the name “Hoffmann” in connection with an HVAC business. After four years, Tom began using “Hoffmann Air Conditioning & Heating, LLC” (Hoffmann AC). Hoffmann AC’s advertising agency later mistakenly used pictures of Hoffmann Brothers. Hoffmann Brothers sued for trademark and copyright infringement. Hoffmann AC prevailed on some issues at summary judgment, and the jury reached a mixed verdict on the remaining claims. Both parties were denied attorneys’ fees, and Hoffmann Brothers appealed.

On appeal, the Eighth Circuit affirmed that Hoffmann Brothers did not sufficiently prove damages for its copyright claim based on Hoffmann AC’s use of its photographs. Because the photographs were unregistered works, Hoffmann Brothers was required to prove actual damages and/or additional profits of the infringer attributable to the infringement. Hoffmann Brothers’ only evidence of actual damages was Hoffmann AC’s monthly fee paid to its marketing agency. The Court found that using the monthly fee was too speculative because it did not reflect the benefit to Hoffmann AC or the harm to Hoffmann Brothers. For evidence of additional profits, Hoffmann Brothers’ expert report failed to link the use of the photographs to Hoffmann AC’s gross revenue. The Court explained that the Hoffmann Brothers could have linked additional profits attributable to the use of the photographs by, for example, demonstrating that:

Hoffmann AC gained customers because of the ads.
The photographs actually influenced purchasing decisions.
There was spike in monthly revenue that coincided with use of the photographs.

Regarding Hoffmann Brothers’ trademark claim, the jury found that the names were not so similar as to cause confusion. Hoffmann Brothers appealed, arguing that the district court erred in its jury instructions. The Eighth Circuit rejected the argument, finding the instructions fair and legally adequate. The instruction was directed to the issue of initial-interest confusion (a concept not adopted by Missouri courts), which occurs when consumer confusion arises at the outset, even if no sale ultimately results. The Court explained that under Eighth Circuit precedent, a sophisticated consumer exception applies to this theory, meaning that consumers who exercise a high degree of care are less likely to be initially confused. Here, the district court instructed the jury to consider initial-interest confusion only if it found that Hoffmann Brothers’ customers were not sophisticated. While the Eighth Circuit acknowledged some hesitation about the assumption that sophisticated consumers are never susceptible to initial-interest [...]

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Actual or Potential Consumers in Related Goods Context Doesn’t Require PURE Overlap

by Benjamin Ediger, Ph.D. | Mar 23, 2023 | Trademarks

The US Court of Appeals for the Federal Circuit reminded us that, in the context of related goods, the likelihood of confusion analysis does not require that actual or potential consumers of the goods be the same, but only that there be sufficient overlap. In re Oxiteno S.A. Industria e Comercio, Case No. 22-1213 (Fed. Cir. Mar. 9, 2023) (Dyk, Bryson, Prost, JJ.)

Oxiteno filed an intent-to-use trademark application for OXIPURITY, with its goods and services statement ultimately amended to include dozens of chemical products “for use in the pharmaceutical, veterinary, flavor and fragrance, and cosmetic fields.” The application was refused on likelihood of confusion grounds in view of FMC Corporation’s registered OXYPURE mark, largely because the hydrogen peroxide products covered by the OXYPURE registration moved through the same channels of trade as products recited in the Oxiteno application.

Oxiteno appealed the refusal to the Trademark Trial & Appeal Board. The Board analyzed likelihood of confusion using the DuPont factors and found the first four factors most relevant:

Factor 1: The similarity of OXIPURITY and OXYPURE. The Board concluded (as had the Examiner) that the two marks were “similar in sound, meaning and commercial impression,” and found that this factor strongly favored a likelihood of confusion.

Factor 2: The similarity of the covered goods. The Board agreed with the Examiner that the respective goods, while not the same, were sufficiently related to favor a likelihood of confusion finding.

Factor 3: The similarity of channels of trade. The Board reviewed the third-party websites that the Examiner considered particularly dispositive. The websites sold hydrogen peroxide goods covered by the OXYPURE mark and the chemicals Oxiteno intended to sell under the OXIPURITY mark. The Board concluded that the same sources manufactured FMC’s established products and Oxiteno’s intent-too-use products, and directly sold these products to largely overlapping industries.

Factor 4: “[t]he conditions under which and buyers to whom sales are made.” Of the four most relevant factors in this case, this was the only factor that the Board found to favor registration. The Board concluded that the consumers of the established and intent-to-use products would be sophisticated and not act on impulse.

Despite the potential consumers’ presumed sophistication, the Board found that factors 1 through 3 “rendered confusion likely” and thus affirmed the Examiner’s refusal. Oxiteno appealed.

Oxiteno argued that likelihood of confusion could not be found when the actual or potential consumers of the respective products covered by two marks were not the same, as with the relevant products here.

The Federal Circuit affirmed the Board, noting statements made by a company selling Oxiteno’s products that explained why almost every business is a potential purchaser of FMC’s OXYPURE hydrogen peroxide products. The Court also noted that FMC’s brochures stated that it sold its hydrogen peroxide products under OXYPURE and other brand names to the same key industries to which Oxiteno sold its products. The Court, therefore, concluded that substantial evidence supported that at least some [...]

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Not on My Watch: Disclosure of Restored Goods’ Source Obviates Consumer Confusion

by Joshua Revilla | Sep 23, 2021 | Trademarks

The US Court of Appeals for the Second Circuit affirmed a ruling that a defendant’s use of a mark in connection with the sale of used goods did not create consumer confusion, finding that the district court adequately analyzed the relevant Polaroid factors and did not erroneously apply the 1947 Champion Spark Plug case. Hamilton Int’l Ltd. v. Vortic, LLC, Case No. 20-3369 (2d Cir. Sept. 14. 2021) (Cronan, J.)

Vortic is a watchmaker that specializes in the restoration and conversion of antique pocket watches into wristwatches. Hamilton International brought a trademark infringement suit against Vortic based on a watch that Vortic sold called the “The Lancaster.” The Lancaster name pays homage to Lancaster, Pennsylvania, which is where the Hamilton Watch Company was originally located. The watch was made with restored “Railroad-Era” movements (the internal mechanism of the watch with the hands and face attached) that were originally produced by Hamilton. The Hamilton mark could be seen both on the antique face of the watch and through the see-through back on the internal workings. Vortic’s mark, as well as “The Lancaster” and a serial number, were located on a ring on the rear of the watch.

The district court focused on the Polaroid factors in its likelihood of consumer confusion analysis and on the issue of disclosure under Champion. The district court found that Vortic’s labeling and disclosure were compliant with Champion, that there was no evidence of actual confusion or bad faith and that the buyers of these antique watches were sophisticated purchasers. The district court found no likelihood of confusion and entered judgment for Vortic on all claims. Hamilton appealed.

The main issue on appeal was whether the district court erred in finding no likelihood of consumer confusion. To show a likelihood of consumer confusion, “[a] plaintiff must show ‘a probability of confusion, not a mere possibility’ affecting ‘numerous ordinary prudent purchasers.’”

The Second Circuit considered the district court’s application of Champion. In that case, the Supreme Court determined that keeping the “Champion” logo on refurbished spark plugs would not mislead consumers as the plugs were originally Champion plugs and had the terms “Repaired” or “Used” stamped on them, which provided full disclosure. The Court explained that the lesson from Champion is that when a refurbished “genuine product” is resold, “the seller’s disclosures and the extent of a product’s modifications are significant factors to consider” in any infringement analysis.

Hamilton argued that the repair of the Hamilton parts that went into The Lancaster was so extensive that Champion should not have been applied. The Second Circuit disagreed, noting that the only modification to the original movement was a replacement lever, and that it was clear to consumers that The Lancaster was an “antique pocket watch modified into a wristwatch rather than an entirely new product.”

Hamilton also unsuccessfully argued that the district court erred by not first using the Polaroid factors before turning to the Champion analysis. The Second Circuit explained that since the plaintiff bears the burden [...]

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