Actual Confusion

Herbal Stamina-Rx

Confusion, or lack thereof, is a vitally important concept in trademark law. Proving your client’s mark may be confused with an infringer’s mark is critical to prevailing on an infringement claim. This is generally accomplished by marshalling evidence to show a likelihood of confusion between your client’s mark and the infringer’s.

In Hi-Tech Pharmaceuticals, Inc. v. Herbal Health Products, Inc., the Eleventh Circuit in Atlanta issued a per curiam decision on May 26th in which it held that proof of actual confusion is required for trademark infringement. The case has since been designated as unpublished though it can be found at 132 Fed. Appx. 348, 2005 U.S. App. LEXIS 9791.

Here are the facts: Hi-Tech, a maker of nutritional supplements, sued Herbal, a competing manufacturer of nutritional supplements because Herbal started selling a product called Stamina Pro that Hi-Tech claimed infringed on its product Stamina-RX. (Incidentally, in June of 2003 the FDA issued a “Talk Paper” warning of the dangers of Stamina-RX.)

The parties were not strangers when the lawsuit was brought. In fact, for some time Herbal had been a distributor of Hi-Tech’s Stamina-RX product. At some point Herbal began manufacturing, marketing, and selling their own nutritional supplement for improving male sexual performance called Stamina Pro in competition with Hi-Tech’s Stamina-RX.

The similarity between the product names, their appearance, and their packaging was, to say the least, uncanny. The Stamina-RX pill is blue in the shape of a hexagon. It is packaged in a clear bottle with a white top. The bottle has an image of a robot with raised arms holding a sphere on it. Underneath the robot appear the words “Maximum Sexual Stimulant.”

Herbal’s Stamina Pro product is also a blue pill in the shape of a hexagon. It is also sold in a clear bottle with a white top. It also has an image of a robot on bottle, though this robot has his arms at his sides. The words “Maximum Male Sexual Enhancement Formula” are on the bottle with a statement that says “compared to Stamina_RX.”

The Eleventh Circuit looked at these two products and decided that the lower court got it right when it found there was no infringement. On these facts this outcome is, to say the least, pretty confusing. Almost everything about Stamina Pro screams infringement when compared to Stamina RX. Clear plastic, white topped robots holding blue hexagon shaped pills called Stamina that provide maximum sexual something is a pretty clear case of infringement if you ask me.

However, the reason given by the Eleventh Circuit for why there was no infringement is even more bizarre. According to the Eleventh Circuit, Hi-Tech’s problem was that it had no evidence of actual confusion.

Confusion in trademark cases comes in two flavors: actual confusion and the likelihood of confusion. In every successful trademark infringement case there will be a likelihood of confusion. However, in most cases it is unlikely for there to be evidence of actual confusion.

Actual confusion means actual evidence of actual customers who were actually confused. Sometimes, these actual customers contact the trademark owner looking for the infringer, or contact the infringer looking for the trademark owner. These customers are actually confused because they think the senior user of the mark is the junior user, or vice versa.

Actual confusion is the holy grail for an infringement plaintiff. Evidence that actual customers were actually confused is powerful proof of infringement. As a result, proof of actual confusion will generally lead to a finding of infringement.

However, evidence of actual confusion is also hard to come by. It is the unusual case where evidence is presented showing actual consumers were actually confused. Instead, actual confusion is more commonly proven using market research surveys conducted by experts who survey random members of the public and then testify about whether there was confusion as to the source and origin of the goods or services to which the trademark is applied.

Hi-Tech could have commissioned a survey of men to determine whether they confused one sexual enhancement product with another, but considering the nature of the product getting objective scientific results might be difficult. Moreover, the requirement of showing actual in order to demonstrate a likelihood of confusion places an undue burden on trademark holders. In fact, the Lanham Act, which governs trademark infringement, says that to establish infringement the Johnny-come-lately mark need only be “likely to cause confusion, or to cause mistake, or to deceive…”

But market research surveys are time consuming, and the experts who conduct them are expensive. Since time and money is often in short supply in infringement cases, trademark owners have traditionally resorted to relying on the other “Polaroid factors” (strength of the senior mark, the similarity between the two marks, the similarity between the products or services that the marks represent, the infringer’s bad faith in adopting the infringing mark, the quality of the infringer’s product, and the level of sophistication of customers) to prove likelihood of infringement. If, on balance, these factors weigh more heavily in favor of the senior user, infringement will be found even without evidence of actual confusion.

If the potential for confusion is strong in other ways, evidence of actual confusion is unnecessary to prove infringement. Hi-Tech seemed to have almost all the other factors going for it, which is why the Eleventh Circuit’s decision in Hi-Tech is confusing. Hi-Tech had no evidence of actual confusion, but a very strong case that Herbal had blatantly ripped-off its “male enhancement” nutritional supplement.

The Eleventh Circuit’s reliance on actual confusion (or the lack thereof) appears to be misplaced. Critics have pointed out that actual confusion is a subjective measure that is easily exagerated in importance. See, Robins, Actual Confusion in Trademark Infringement Litigation: Restraining Subjectivity Through A Factor-Based Approach to Valuing Evidence 2 Nw. J. Tech. & Intell. Prop. 1 at

In fact, it appears that the Eleventh Circuit in Hi-Tech has fallen into the actual confusion trap as described by Robins in his article.

In determining whether confusion is likely, evidence of actual confusion is often given considerable weight and preferred status. Some courts view evidence of actual confusion as “persuasive” evidence of likelihood of confusion. Other courts have used a variety of adjectival phrases to describe the utility of the presence or lack of evidence of actual confusion. Some decisions even give evidence of actual confusion status as a preferred method of proving infringement. Courts are receptive to inferring likely confusion from instances of actual confusion because instances of actual confusion are seen as representative examples of how others in the marketplace are likely to react. As put by one court: “[a]ctual confusion is… extremely probative of the likelihood of confusion, in that proof of confusion by actual customers is strong evidence that a hypothetical reasonable customer would also be deceived.” As another court explained: “[i]f enough people have been actually confused, then a likelihood that people are confused is established.” Not all evidence of actual confusion, however, is entitled to preferred or favored status. Rather, such evidence must first survive the particular level of scrutiny given to evidence of the types at issue by the jurisdiction in question.

¶ Notwithstanding this seeming judicial preference, statements giving undue weight to evidence of actual confusion are not consistent with other judicial pronouncements regarding the infringement test as a multi-factor test or with other judicial pronouncements giving preferred status to other factors in that test. For example, a number of courts have stated that the similarity of the parties’ marks is the most important factor in determining likely confusion. Intuitively, that approach makes sense. Where the parties are competitors for the same type of goods, at least one court has gone one step further to opine that, in such cases, courts generally need not look beyond the marks at issue. Indeed, try as the courts may to escape the appearance of subjective comparisons between the parties’ marks by using a multi-factor test, nearly all judicial recitations of factors place the similarity of the marks first in the list of factors. Judges reason that, ultimately, it is the similarity of the marks that will drive consumer confusion. Yet, in instances where the defendant intended to trade on the plaintiff’s good will, that factor has also been recognized to have potential preeminent status. Courts in the Seventh Circuit have deemed three factors—similarity of the marks, the defendant’s intent, and actual confusion—to be the most important. In other cases, courts have found different subsets of the likelihood of confusion factors to be of paramount importance, with emphasis on the similarity of marks. Two commentators have deemed the most important factors to be the strength of the plaintiff’s mark, the similarity between the marks, and the defendant’s intent. In any event, actual confusion is but one of several factors relevant to determining the likelihood of confusion.

Actual confusion has never been a requirement to demonstrate infringement in any trademark case. That’s why the Eleventh Circuit’s requirement of actual confusion in Hi-Tech has created some actual confusion.


Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.

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