Mattress manufacturer accused of using competitors trademark to pique interest. SELECT COMFORT v. PERSONAL TOUCH

A trademark is something which signals to consumers the identity of a producer of a product. Traditionally trademarks are thought of as a word phrase or symbol, but anything that serves the purpose of identifying the source of a product can qualify for trademark protection.

When a product producer starts using a trademark to brand goods, the producer is granted certain rights to the trademark. A trademark can be registered with the United States Patent and Trademark Office to be strengthen an owner’s rights associated with the trademark, however registration is not a prerequisite to begin using a trademark to brand goods.

The first person to use a trademark to brand products is referred to as the senior user, subsequent users of the same trademark are known as junior users. If a junior trademark user brands products in a way that causes consumers to confuse the junior user’s products with the senior trademark user’s products, that can be considered trademark infringement. A trademark owner who feels that their trademark is being infringed upon can attempt to stop trademark infringement by filing a lawsuit which requests an injunction and get monetary damages for trademark infringement which has occurred.

Many different factors lead up to a consumer’s decision to make a purchase. Depending on the product being sold a sale may take minutes or months. Historically, trademark infringement focused on point of sale consumer confusion, meaning the point at which a consumer makes a purchase. For instance when a customer buys a pair of shoes thinking the shoes were made by Brand A and the consumer later discovers the shoes are poor quality imitations made by Brand B.

As trademark law has matured the concept of liability for consumer confusion has expanded to pre and post sale events. Post-sale consumer confusion is a theory of liability based on a third party observing a infringing product in public. For example, if a consumer knowingly purchases an imitation pair of shoes and wears them in public, other people looking at the shoes might be confused into thinking the shoes are genuine.

Pre sale consumer confusion is when a trademark a trademark is used to lure a consumer in, but at the point of sale consumer confusion does not occur. This legal theory is also known as initial interest confusion. For instance if a store advertises Brand A but when a consumer enters the store only Brand B is available for sale. The consumer knows they purchased Brand B, but confusion about the availability of Brand A is what got the consumer into the store. As online advertising and consumer shopping on the internet has grown, so has the number of cases that touch on pre-sale confusion.

A case which focuses on pre-sale confusion is SELECT COMFORT CORP, v. PERSONAL TOUCH BEDS, 19-1077 (8th Cir 2020). The two parties in this case are retailers of mattresses. Mattresses are generally an expensive item that consumers buy once a decade. Defendants in this case do not sell mattresses manufactured by the Plaintiff, but Defendant’s online advertisements use Plaintiff’s trademark to attract consumers.

On November 16, 2012, Plaintiffs filed suit asserting trademark infringement, trademark dilution, unfair competition, false advertising, and other claims. Prior to trial the district court granted summary judgment for the Defendants on presale, initial interest confusion and held that Plaintiff would be required to “establish a likelihood of actual confusion at the time of purchase.” At trial in October 2017 a jury found trademark infringement had not occurred, however Defendant was found liable for several false statements. Plaintiff appealed the decision to the Court of Appeals for the 8th Circuit.

Plaintiff’s primary argument on appeal is that the District court improperly granted summary judgement with respect to pre-sale consumer confusion. The primary question on appeal will be when ads do not cause pre-sale confusion as a matter of law how can those exact same ads could cause confusion at the point of sale? It is a contradictory concept that will likely result in this case be remanded for another trial.

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