Notwithstanding the differences in the color of the frame, and other differences indicated by the defendants (some of which are a matter of dispute), the photographs clearly demonstrate that the two carriers bear a very striking visual similarity in their overall appearance. However, the tendency of the similarity to confuse must be assessed in light of the presence of labels placed on the rear of the products bearing the trademarks of the respective companies.
The court in Bristol-Meyers held that "the presence and prominence of markings tending to dispel confusion as to the origin...of the goods in question is highly relevant to an inquiry concerning the similarity of the two dresses. When prominently displayed, it can go far towards eliminating any possible confusion." 973 F.2d at 1046. However, "the appearance of the junior user's name does not in all cases eliminate the possibility of consumer confusion." Id. In particular, the prominence of the label as a feature of the product is relevant to the determination. Id.
Plaintiff correctly notes that the carrier labels are not as prominent as were the labels in the Bristol-Meyers. However, a label does not need to be the dominant feature to affect the likelihood of confusion. The court in Landscape Forms, Inc. found that labels placed on outdoor furniture such as benches contributed to making confusion less probable. 113 F.3d at 193. Similarly, labels placed on the lower corner of stereo speaker equipment were found to "go far to eliminate confusion of origin." See Bose Corp. v. Linear Design Labs, Inc., 467 F.2d 304, 309 (1972).
Courts have found such markings inadequate in certain specific circumstances: where arbitrary elements of packaging or elements of a trademark have also been duplicated, see LeSportsac, Inc., 754 F.2d at 79 (defendant duplicated repeating ellipse containing logo), and Banff, Ltd., 841 F.2d at 492(presence of defendant's name did not offset similarity of trademark "B Wear" to plaintiff's trademark "Bee Wear"); where the label would not have been visible to the ordinary consumer, see Krueger Int'l, Inc, 915 F. Supp. at 607 (chair's label insufficiently prominent primarily because the label was placed underneath the product, in a position where consumers were unlikely to see it); and where the product was of such a large size that the label would be overlooked, see Kompan, at 11175 (three by two inch label was too small in comparison to size of playground equipment).
In this case, the parties' trademarks have been placed on labels several inches across that are positioned at the upper rear exterior section of their carriers, so that the label is visible at all times. Further, no part of Tough Traveler's trademark has been copied in defendants' logo, and the carriers themselves are not of such a size that the labels are likely to be overlooked by consumers. The considerations that might reduce the label's effectiveness are thus not apparent here, and the danger of confusion from the design similarity is significantly reduced.
3) Actual Confusion
Evidence of actual confusion is a strong indicator that a likelihood of confusion exists. Coach Leatherware Co. v. AnnTaylor, Inc., 933 F.2d 162, 170-71 (2d Cir. 1991). Plaintiff offers as evidence of actual confusion one individual's name and address along with the allegation that this individual was confused as to the source of the Outbound carrier. See Pl. Resp. Def. Supp. Interrogs., P 131. In addition, plaintiff points to testimony by Nancy Gold in which she alleges that five or six Canadian retailers indicated confusion. See Pl. Exh. 15. Defendants object to all of plaintiff's evidence on the grounds that it is inadmissible hearsay.
Hearsay is defined in the Federal Rules of Evidence as "a statement, other than one made by the declarant while testifying at the trial or hearing, offered in evidence to prove the truth of the matter asserted." Fed. R. Ev. 801. It is clear that testimony as to another person's statement concerning his confusion, offered to prove the existence of that confusion, is hearsay unless it falls within one of the exceptions to the hearsay rule. At least one court has concluded that such testimony is exempt from exclusion under the exception for statements expressing a state of mind, such as confusion. See Frank Brunckhorst Co. v. G. Heileman Brewing Co., 875 F. Supp. 966, 980 fn. 22 (E.D.N.Y. 1994). However, that exemption cannot be applied in this case, as it covers only utterances of a then-existing state of mind. There is no evidence that, here, the declarant' statements were made contemporaneously with their confusion.
Further, it is not clear that plaintiff even alleges an instance of actual confusion. Merely providing the name and address of an individual is wholly conclusory, and inadequate to provide this Court with any means of determining the existence, nature and context of the confusion. Further, in Ms. Gold's testimony, she stated only that there were "maybe" five or six retailers confused. See Pl. Exh. 15. When prompted for further instances of confusion, Ms. Gold related:
I was in a store in Canada...and had a salesman, who did not know we were from Tough Traveler, show us the Outbound next to the Touch Traveler and said -- he said you can -- he showed us the features, showed us the Tough Traveler, and he said, "If you want to spend less, you can buy the Outbound. It's copied, it's a copy of the Tough Traveler."
Id. While this encounter does support the conclusion that the Outbound carrier is being sold as a cheaper substitute for the Tough Traveler carrier, it does not suggest that the retailer had any confusion about the distinct origins of the two carriers. To the contrary, it suggests that this retailer both knew that the products were made by different companies and took pains to point that out to customers. Thus, even were this Court to consider such hearsay admissible under a judicially-crafted exception for anecdotal evidence of actual confusion
, plaintiff's evidence would not establish any actual confusion in the marketplace.
Courts have not required plaintiffs to present evidence of actual confusion in order to prove a likelihood of confusion. Coach Leatherware Co., 933 F.2d at 170-171. However, where the products have been in competition for a substantial period of time, the absence of such evidence is considered "a strong indicator that the likelihood of confusion is minimal." Plus Products, 722 F.2d at 1006 (presumption applied after three-year period). Here, plaintiff's and defendants' products have been in direct competition from at least 1993 to the present. The absence of any admissible evidence on actual confusion is therefore a relevant factor.
4) Bad Faith
"Bad faith" on the part of the defendant has traditionally weighed heavily in the plaintiff's favor in whether likelihood of confusion exists, on the assumption that, "if [the junior user] adopts his designation with the intent of driving benefit from the reputation of the trademark or trade name, his intent may be sufficient to justify the inference that there is confusing similarity. Since he was and is intimately concerned with the probable reaction in the market, his judgment manifested prior to the controversy is highly persuasive." Perfect Fit Industries, Inc., v. Acme Quilting Co., Inc., 618 F.2d 950, 954 (2d Cir. 1980) (quoting Restatement of Torts, § 729 cmt. f (1938)) (internal quotations omitted).
Nevertheless, the importance of bad faith as a factor has more recently been reduced. Just as the presence of intent is not controlling in the determination of whether there is inherent distinctiveness, as discussed previously, the presence of bad faith does not control in the determination of whether there is a likelihood of confusion. Centaur Communications, 830 F.2d 1217 at 1228. "'If a comparison of the other objective factors reveals no fair jury issue concerning likelihood of confusion, then intent to copy [the trademark or trade dress], even if found from the proffered evidence, would not establish a Lanham Act violation.'" Id. (quoting Warner Bros. v. American Broadcasting Co., 720 F.2d 231, 246-47 (2d Cir. 1983)).
The most recent decision on the issue of "bad faith" has additionally clarified that proof that a defendant has copied is not proof that the defendant did so with "bad faith", i.e. the intent to confuse:
It cannot automatically be inferred that intentionally copying a plaintiff's trade dress is for the purpose of deceiving or confusing consumers as to the source of the product. See Andrew C. Finch, When Imitation is the Sincerest Form of Flattery: Private Label Products and the Role of Intention in Determining Trade Dress Infringement, 63 U. Chi. L. Rev. 1243, 1255 (1996). A defendant who copies his competitor's trade dress may have valid reasons, wholly apart from a desire to confuse consumers, for doing so. See id. (noting that copying may be motivated by belief that trade dress is functional or generic, or by belief that copying is the best way to inform consumers that a generic product is a lower-priced alternative to the competitor's products). Indeed copying in order to market a functionally equivalent alternative product might well benefit consumers, which is one of the aims of the Lanham Act.