September 01, 2014

Lexmark and the Death of Initial Interest Confusion

Deborah R. Gerhardt

©2014. Published in Landslide, Vol. 7, No. 1, September/October 2014, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

The most recent chapter in the Lexmark v. Static Control litigation saga will be remembered for much more than the big changes it made to false advertising law. The first of the Supreme Court’s two false advertising decisions in the 2013 term, Lexmark International, Inc. v. Static Control Components, Inc.,1 knocked down two decades of false advertising standing doctrine. In a unanimous opinion, the Court reframed basic concepts of federal jurisdiction. Decades of the Court’s jurisprudence had spoken of two standing doctrines that could be used to block access to federal court: Article III and prudential standing.2 In Lexmark, the Supreme Court recalled “prudential” standing and replaced it with “statutory” standing. Federal false advertising claims were an ideal excuse to create this new paradigm. The federal circuit courts had erected high prudential barriers to one subsection of the Lanham Act while using a liberal standard for another. In Lexmark, the Supreme Court replaced them all with a new standard. This change will permit more false advertising litigation in federal court. One open question is whether the new standing doctrine will affect other claims brought under the Lanham Act.3 Because the rule was branded as “statutory” standing, Lexmark may have forged a shiny new tool for knocking out trademark infringement claims.

Discarding Prudential Standing Doctrine for a Statutory Standard

In Lexmark, the Court revolutionized federal standing doctrine. Traditionally, federal courts considering whether plaintiffs had standing would look to both constitutional and prudential doctrines.4 Constitutional standing is grounded in Article III, which limits the judiciary’s power to deciding current “Cases” and “Controversies.”5 Courts have used prudential standing doctrine to decline to hear cases if jurisdiction would thwart “the general prohibition on a litigant’s raising another person’s legal rights, the rule barring adjudication of generalized grievances more appropriately addressed in the representative branches, and the requirement that a plaintiff’s complaint fall within the zone of interests protected by the law invoked.”6

Justice Scalia detests the term “prudential” standing,7 and in Lexmark converted the entire court to a new view. The opinion explains that standing should not turn on whether a judge believes it is prudent to give the plaintiffs their day in court. Instead, a court should apply traditional principles of statutory construction to determine whether the legislation created standing for the type of plaintiff before it.8 Perhaps because it was a Lanham Act case, the Court gave its revised approach a brand, instructing that the prudential label should be dropped in favor of what it calls “statutory” standing.9 This label was intended to describe the doctrine more accurately. Judicial prudence should be irrelevant, as courts do not have the power to create causes of action or limit those that Congress created “merely because ‘prudence’ dictates.”10

The Origin of the Dispute

The story of Lexmark v. Static Control was perfect for testing whether the restrictive prudential standing rules for false advertising claims made sense, and if so, which of the various tests should be used. Lexmark makes and sells printers and toner cartridges. To minimize competition, Lexmark designed its printers to work only with Lexmark cartridges. Nonetheless, remanufacturers began to refurbish the used cartridges and sell them to consumers. In response, Lexmark created a “prebate” program in which it sold its cartridges at a 20 percent discount under a shrink wrap license requiring consumers to return depleted cartridges to Lexmark for refurbishing. Lexmark’s prebate cartridges contained chips designed to disable them as soon as they ran out of toner.11

Static Control is not a direct Lexmark competitor. It does not make printers or toner cartridges. Static supplies parts to Lexmark’s competitors. It makes and sells toner, microchips, and other replacement parts to remanufacturers who refurbish used Lexmark cartridges. These remanufacturers sell refurbished Lexmark cartridges to consumers at a discounted price.12

Seeking to thwart this source of competition, Lexmark told consumers and remanufacturers that it was unlawful to market the refurbished Lexmark cartridges.13 Then, Lexmark sued Static, claiming that Static’s microchips infringed copyrights in Lexmark’s software and interfered with technological protection measures in violation of the Digital Millennium Copyright Act.14

Static responded offensively, filing false advertising counterclaims under 15 U.S.C. § 1125(a)(1)(A) based on allegations that Lexmark: (1) intentionally misled consumers into believing that the terms of the prebate program required them to return used cartridges to Lexmark, and (2) sent letters to the remanufacturers wrongfully stating it was illegal to use Static’s products to refurbish prebate cartridges.15 Static claimed injury to its reputation and lost sales as a result of the false accusations that it was engaged in illegal conduct.16 Lexmark moved to dismiss Static’s false advertising claims. Because the parties are not competitors, Lexmark argued that Static did not have standing to bring its false advertising claims.17 The district court granted the motion, and the Sixth Circuit reversed. The Supreme Court granted certiorari to determine whether Static had standing.

Same Statute, Different Standards

While standing has not proven to be an especially difficult hurdle for trademark infringement claims filed under § 1125(a), it has been a significant bar to false advertising claims brought under the same statute. Preliminary data in a study the author is conducting with Mark P. McKenna and Kevin T. McGuire suggest that over the past two decades, federal district courts decided 40 percent of false advertising decisions on motions to dismiss, and when they did, those motions were granted more often than not.18 When faced with false advertising allegations, defendants frequently used prudential standing doctrine to block claims early in the litigation. One need not be a competitor to file a trademark infringement claim under § 1125(a). But some circuits did require a plaintiff to be a competitor or show competitive injury before it could pursue a false advertising claim under the same statute.

Therefore, whether Static had standing to sue Lexmark for false advertising was not clear. The Lanham Act provides that a claim may be brought “by any person who believes that he or she is or is likely to be damaged by such act.”19 Although these same words in § 1125(a) apply to both trademark infringement claims under § 1125(a)(1)(A) and false advertising claims under § 1125(a)(1)(B), federal courts read them very differently. They routinely permitted noncompetitors to bring trademark infringement claims but required direct competition or a competitive injury (of the type required in antitrust cases) for false advertising claims.20 While trademark infringement standing was liberally granted, the federal circuits created a forum shopping feast by offering a diverse menu of prudential standing tests that often blocked false advertising claims.

More than half of the false advertising cases decided in the past two decades were litigated in the Second, Third, and Ninth Circuits, and each one used a different standing test. The Second Circuit applied a “reasonable interest” standard, permitting false advertising claims to be adjudicated if the plaintiff could articulate a “reasonable interest to be protected” and a “reasonable basis” for alleging harm from the false advertisement.21 When confronted with a standing question, district courts in the Second Circuit found plaintiffs had standing in 47 percent of their decisions.

The Third Circuit used an antitrust standing rule crafted in 1998 by Justice Samuel A. Alito. In Conte Bros. Automotive, Inc. v. Quaker State-Slick 50, Inc., the Third Circuit held that a retailer did not have standing to bring false advertising claims against a manufacturer of competitive products.22 Following Conte, the Fifth, Eighth, and Eleventh Circuits adopted antitrust tests as well.23 In circuits applying a multifactor antitrust standard, 38 percent of plaintiffs were found to have standing in district court. District judges in the Third Circuit alone granted standing in 41 percent of their false advertising decisions in which standing was at issue.

The Ninth Circuit adopted what turned out to be the most restrictive test. It decided that only commercial competitors had standing to bring false advertising claims under the Lanham Act. A plaintiff had to demonstrate “that the injury is ‘competitive,’ or harmful to the plaintiff’s ability to compete with the defendant.”24 When a plaintiff’s standing was challenged, only 36 percent were found to have standing by district courts in the Ninth Circuit.

Two Decades of False Advertising Standing Doctrine Meets Its Demise

Static did not have a chance to forum shop, as it was sued in the Sixth Circuit. The district court found that Static did not have standing to bring a false advertising claim because the parties were not competitors.25 The Sixth Circuit reversed. Using the Second Circuit’s test, it found that a reasonable commercial interest was at stake, and therefore Static had standing.26

Although the issue before the Supreme Court was particular to the parties before it, the real source of suspense was over which circuit test would win the Court’s approval. Lexmark argued for adoption of one of the more stringent tests so that Static would not have standing. Static asserted the Court should apply a more liberal test, like the Second Circuit’s reasonable interest standard.

The Supreme Court rejected all of them.27 The Court surveyed the circuit standing tests as though they were obstacle courses built in varying shapes and sizes, and requiring lawyerly dexterity to overcome. Then it replaced the whole lot with a speed bump. The Court adopted a “zone-of-interests test” as the “appropriate tool” to determine who may litigate a false advertising claim.28 Under this test, courts must analyze whether a claimant “falls within the class of plaintiffs whom Congress has authorized to sue under § 1125(a).”29 Standing rules for false advertising claims had been viewed as notoriously stringent.30 In contrast, the Supreme Court described the new test as “not especially demanding.”31 In close cases, the “benefit of any doubt goes to the plaintiff.”32

Application of Statutory Standing to Trademark Infringement Claims

As a result of this loosening of the standing rules, more false advertising claims will be brought, and more are likely to survive motions to dismiss. Over the past two decades, federal district courts decided an increasing number of false advertising opinions. In the early 1990s, federal district courts issued only about 10 of these decisions each year. Despite the development of strict standing rules, district courts have been deciding more than 50 false advertising decisions per year since 2005.33 After Lexmark, we can expect even more false advertising claims to be brought and decided on the merits.

The new standing rule may have some other interesting consequences for Lanham Act litigation. Federal district courts will soon confront questions about how Lexmark applies to trademark infringement claims. Although the same statutory language grounds both claims, federal courts have interpreted them differently. In sharp contrast to false advertising claims, no special standing barriers were erected for business plaintiffs claiming to be harmed by trademark infringement. As one court bluntly put it, “We have said that different causes of action alleged pursuant to the different subsections of 15 U.S.C. § 1125(a) have different standing requirements.”34 For example, competition was never a prerequisite for trademark infringement claims under § 1125(a)(1)(A), but some courts used noncompetitor status as a basis to dismiss false advertising claims under § 1125(a)(1)(B).

This double standard may be a relic of the past. Now that the Court has instructed us to apply the new statutory standing rule, a district court should not use “prudential” considerations to deny standing to false advertising plaintiffs that it would not give a trademark infringement plaintiff. After all, both claims arise from the same statutory words, and it is not clear that the purposes of the two subsections are sufficiently different to support different standing rules.35

If the same standard will be applied in both contexts, more questions arise about how the zone of interests test will affect trademark litigation. In Lexmark, the Court instructed us to look at two considerations. The first is whether the plaintiff is seeking to protect interests the statute was designed to redress. Citing the legislative history, the Court identified the purpose of the false advertising statute as protection from “unfair competition,” specifically “injuries to business reputation and present and future sales.”36 This purpose is the foundation for both trademark infringement and false advertising claims.37 Therefore, it does not provide a basis for applying the test any differently to trademark infringement litigation.

Proximate cause is the second requirement of the statutory standing test. To meet it, a plaintiff must “plead (and ultimately prove) an injury to a commercial interest in sales or business reputation proximately caused by the defendant’s misrepresentations.”38 The Court held that Static had standing because it pleaded injuries of the type meant to be protected by the statute that were “proximately caused by Lexmark’s misrepresentations.”39 Static alleged it lost sales and suffered harm to its business reputation from Lexmark’s assertion that Static’s business model was illegal.40 Although the parties were not direct competitors, this was not a difficult case in which to establish that Static’s alleged injuries were proximately caused by Lexmark’s misrepresentations. The Court found that “[t]aking Static Control’s assertions at face value, there is likely to be something very close to a 1:1 relationship between the number of refurbished Prebate cartridges sold (or not sold) by the remanufacturers and the number of Prebate microchips sold (or not sold) by Static Control.”41

Proximate causation is more difficult to prove in situations where an intervening force interrupts the causal chain of events. In Lexmark, the Court noted that the “causal chain linking Static Control’s injuries to consumer confusion is not direct, but includes the intervening link of injury to the remanufacturers.”42 Here, the Court was willing to overlook the intervening presence of the remanufacturers in the causal chain because Static’s harm was a direct consequence of the alleged statutory violation and could be directly quantified by each sale.

Would this same proximate causation test apply to trademark infringement claims? The opinion suggests it would. The Supreme Court used the language of confusion, not falsity, in explaining the role of an intervening link. In its conclusion, the Court did not limit its ruling specifically to false advertising claims by referencing § 1125(a)(1)(B) but stated “that Static Control has alleged an adequate basis to proceed under § 1125(a).”43 These references suggest that the same statutory standing test adopted by the Court should also apply to trademark infringement claims.

Proximate Cause and Initial Interest Confusion

Here is where things get especially interesting. Application of the proximate causation prong of this test could eviscerate an entire category of Lanham Act liability. Trademark infringement requires proving a likelihood of consumer confusion. Courts have recognized trademark infringement liability from confusion that occurs before, during, or after the moment of a purchase. Consumer confusion that occurs before the point of sale is known as initial interest confusion. For such claims, the consumer is momentarily confused but has a corrected understanding before making his or her purchase. The alleged harm results in the following chronological order: (1) momentary initial confusion, (2) corrected understanding, and (3) purchase.

This chronology has repeatedly been at issue in litigation over keyword advertising in search engines. For example, someone seeking to buy a hybrid car may conduct an Internet search for a “Prius.” If this search yields a sponsored link to a site selling hybrid Honda Civics, some argue that such “confusion” is enough to give Toyota grounds for a trademark claim against Honda and the Internet search firm whose services triggered the sponsored ad. The consumer may be momentarily confused about whether the car he or she is looking at is a Prius, or if it was made by Honda or Toyota, but before the consumer buys the car, that confusion will be gone. Nonetheless, the initial interest confusion doctrine recognizes that trademark liability is possible based on the consumer’s momentary confusion.

Under the initial interest confusion theory, courts have found infringement if a consumer is diverted to consider another product or service even if there is no proof of actual confusion,44 or if the momentary confusion was dispelled before the consumer made a purchase.45 Will courts now view this past practice as erroneous?

In explaining the zone of interests test, the Supreme Court states that injuries are proximately caused only when the causal chain between the statutory violation and the harm is direct and unbroken.46 The intervening step of the manufacturer between Lexmark’s statements and Static’s harms did not help Static’s case. The court emphasized that there is a “general tendency not to stretch proximate causation beyond the first step.”47 If the requisite injury might have resulted from other forces or if there had been a break in the causation chain, proximate causation would not be present. The allegation of the 1:1 relationship between the alleged false statement and the harm brought Static within the zone of interests notwithstanding the extra step in the causation chain. Generally, plaintiffs would not be given such a pass.

After Lexmark, courts will be asked to reconsider whether initial interest confusion is sufficient to establish liability or even a viable claim that can survive a motion to dismiss. Here are some of the questions courts should be asking: Is the corrected understanding before the point of sale enough to break the chain required to establish proximate cause? Is use of the brand in this context immaterial to the consumer’s purchase so that it never really affects his or her purchasing decision? If the consumer’s use of the brand as a search term does not affect his or her purchasing decision at all, how does it proximately cause harm to the trademark owner’s reputation? Confusion may result from the use of search terms, but is it the specific type of confusion that arises to a federal trademark claim?

To answer these questions, uncertainty and confusion must be disentangled. Social science research indicates that consumers may not know what they will find if they click on paid links, but this uncertainty is different from the type of source or sponsorship confusion the Lanham Act was meant to remedy.48 Questions, uncertainty, confusion, and curiosity may motivate consumers to use brands to find information. But using brands as information tools should not lead to the conclusion that sponsored results featuring competitive products results in source or sponsorship confusion. A consumer may be confused about whether the name of a well-known product is a brand or a general category of goods.

For example, a consumer may think of “Prius” cars (or Cokes, Band-Aids, Kleenex, or Rollerblades) as synonyms for the generic category of goods to which it belongs. The consumer’s use may have been intended to generate sponsored results that would include competitive brands. Perhaps “Prius” was one brand of many the consumer meant to consider. Perhaps he or she chose to use “Prius” instead of the generic term “hybrid” to yield more responsive results and avoid being distracted by interesting references to animal hybrids such as ligers (lion-tiger hybrids), plant hybrids, or mythological and biblical hybrids.49 Or the consumer may simply buy the car that best fits his or her needs at the best price irrespective of the brand in his or her initial search. If so, any initial interest confusion the consumer encountered while searching will be immaterial to his or her purchasing decision and cannot form the required causal link between violation and proximately caused harm.

Much of the liability based on keyword advertising was based on initial interest confusion. Eric Goldman had declared that keyword advertising litigation “is dead, dead, DEAD.”50 Lexmark may be used to bury more initial interest confusion claims, and may ultimately be used as grounds for declaring the entire doctrine dead. Evidence of buying behavior may now be used, not just on the merits, but to decide whether brand owners like Toyota may have standing to bring a claim against Honda and the search engine provider for initial interest confusion.

Outside the Internet context, initial interest confusion has been the basis for some hefty trademark verdicts. The highest damages award a jury ever gave to a trademark plaintiff ($305 million) was based solely on initial interest and post-sale confusion.51 In adidas v. Payless, adidas claimed that a four-striped shoe in Payless’s windows created initial interest confusion.52 Four and two-striped designs may have attracted buyers to walk into Payless stores (perhaps thinking the shoes were the iconic three-striped adidas shoes), but adidas conceded that any such initial interest confusion would be corrected by the time the shopper looked at the shoe and decided whether to buy it. Adidas admitted there was no point-of-sale confusion. Nonetheless, evidence of initial interest and post-sale confusion resulted in what still stands as the highest trademark damages award ever. The break in the causal link between confusion and point of sale may be problematic to future plaintiffs who will have to somehow show that reputational harm was proximately caused nonetheless. Based on the proximate cause requirement, those accused of trademark infringement based on initial interest may now have a powerful new tool to knock out claims early in litigation.

Initial interest confusion may not be the only trademark doctrine that is vulnerable in the wake of Lexmark v. Static Control. Whenever the alleged injury is not a direct consequence of the confusion, the claim will be vulnerable. Some trademark scholars have been arguing for years that material harm should be a requirement for all trademark liability. Mark A. Lemley and Mark P. McKenna assert that trademark suits should be brought only if the confusion had a material impact on the alleged harm. In their view, plaintiffs must show:

(1) that their injury flows from confusion about the actual source of the defendant’s goods or about who is responsible for the quality of those goods, or (2) that the defendant’s use causes confusion about some other relationship that is material to consumer purchasing decisions. . . . [P]laintiffs should bear the burden of demonstrating materiality. If mark owners can neither show confusion about source or responsibility for quality nor that the alleged confusion is material, then any “injury” the mark owner suffers is not a trademark injury.53

After Lexmark, the asserted statutory violation must proximately cause the alleged harm. If it doesn’t, the court should decline to hear the case. In explaining its proximate cause requirement, the Supreme Court said “a plaintiff suing under § 1125(a) ordinarily must show that its economic or reputational injury flows directly from the deception . . . and that occurs when deception of consumers causes them to withhold trade from the plaintiff.”54 These words are nearly identical to those used by Lemley and McKenna to describe their proposed materiality requirement for trademark liability. The Supreme Court had no problem sweeping aside years of established standing doctrine in this opinion, so no one should assume that trademark doctrine could not be similarly eviscerated.


After Lexmark v. Static Control, much will change. “Statutory” standing based on traditional rules of statutory construction and proximate causation will replace prudential standards. For false advertising claims, standing will not be the barrier it once was. But the Court did not limit its zone of interests analysis requiring proximate causation to false advertising cases under the Lanham Act. The opinion suggests that the same test will apply to trademark infringement actions as well. And if it does, initial interest confusion will be dead, and any other trademark claim in which the injury does not flow directly from consumer confusion will be vulnerable to dismissal early in the life of the case.


1. 134 S. Ct. 1377 (2014).

2. Erwin Chemerinsky, Federal Jurisdiction § 2.3, at 58–59 (6th ed. 2012).

3. 15 U.S.C. § 1125(a).

4. Chemerinsky, supra note 2, § 2.3.

5. U.S. Const. art. III, § 2.

6. Lexmark, 134 S. Ct. at 1386 (internal quotation marks omitted).

7. Antonin Scalia, The Doctrine of Standing as an Essential Element of the Separation of Powers , 17 Suffolk U. L. Rev. 881, 885 (1983)(explaining that the prudential standing doctrine “leaves unexplained the Court’s source of authority for simply granting or denying standing as its prudence might dictate. As I would prefer to view the matter, the Court must always hear the case of a litigant who asserts the violation of a legal right.”).

8. Id. at 1388.

9. Id. at 1386–87.

10. Id. at 1388.

11. Id. at 1382–83.

12. Id. at 1384.

13. Id.

14. Lexmark Int’l, Inc. v. Static Control Components, Inc., 253 F. Supp. 2d 943, 947 (E.D. Ky. 2003), vacated, 387 F.3d 522 (6th Cir. 2004).

15. Respondent’s Brief on the Merits, Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377 (2014) (No. 12-873), 2013 WL 5666539, at *8.

16. Lexmark, 134 S. Ct. at 1384.

17. Id. at 1386.

18. To arrive at these estimates, we first searched Westlaw for all judicial opinions in federal courts that mentioned false advertising claims under § 1125(a) and were issued after Lanham Act amendments expressly providing for false advertising claims became effective on November 16, 1989. This search yielded 2669 district court opinions. Because we wanted to study only opinions that actually addressed a substantive false advertising issue, we asked law student research assistants to determine which opinions discussed either (1) standing to bring a federal false advertising claim, or (2) the merits of such a claim. After removing the opinions that satisfied neither of these conditions, 1380 opinions remained.

19. 15 U.S.C. § 1125(a).

20. See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992), cert. denied, 506 U.S. 1080 (1993).

21. See Famous Horse Inc. v. 5th Ave. Photo Inc., 624 F.3d 106, 113 (2d Cir. 2010); Ortho Pharm. Corp. v. Cosprophar, Inc., 32 F.3d 690, 694 (2d Cir. 1994) (quoting PPX Enters., Inc. v. Audiofidelity, Inc., 746 F.2d 120, 125 (2d Cir. 1984), and Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d 312, 316 (2d Cir. 1982)).

22. 165 F.3d 221, 233 (3d Cir. 1998) (adopting the rule stated in Associated Gen. Contractors of Cal. v. Cal. State Council of Carpenters, 459 U.S. 519 (1983), which considers (1) the nature of the plaintiff’s alleged injury, (2) the directness or indirectness of the asserted injury, (3) the proximity or remoteness of the party to the alleged injurious conduct, (4) the speculativeness of the damages claim, and (5) the risk of duplicative damages or complexity in apportioning damages).

23. See, e.g., Proctor & Gamble Co. v. Amway Corp., 242 F.3d 539, 562–64 (5th Cir. 2001) (noting that past dictum in Seven-Up Co. v. Coca-Cola Co., 86 F.3d 1379, 1383 (5th Cir. 1996), suggests that consumers should be denied standing under a “zone of interests” test).

24. Jack Russell Terrier Network of N. Cal. v. Am. Kennel Club, 407 F.3d 1027, 1037 (9th Cir. 2005); see also Coastal Abstract Serv., Inc. v. First Am. Title Ins. Co., 173 F.3d 725, 730 (9th Cir. 1999); Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1109 (9th Cir. 1992) (holding “a discernibly competitive injury must be alleged”).

25. Static Control Components, Inc. v. Lexmark Int’l, Inc., 697 F.3d 387, 423 (6th Cir. 2012), cert. granted, 134 S. Ct. 1377 (2014).

26. Id. at 411.

27. Lexmark, 134 S. Ct. at 1389–90.

28. Id. at 1388–89.

29. Id. at 1387.

30. Rebecca Tushnet, Running the Gamut from A to B: Federal Trademark and False Advertising Law, 159 U. Pa. L. Rev. 1305, 1374 (2011) (noting that compared to false advertising doctrine, “[s]tanding in trademark is, characteristically, much more relaxed”).

31. Lexmark, 134 S. Ct. at 1389 (internal quotation marks omitted).

32. Id. (internal quotation marks omitted).

33. These data are estimates based on Westlaw search results, which have inherent limitations. Because the search focuses on judicial decisions, it does not measure the number of disputes or claims filed in federal court. Some of this uptick may be due to circuit court practices about the publication of decisions or an increase in Westlaw’s inclusion of unpublished decisions. Nonetheless, Westlaw results offer a basis for estimating how often federal judges decide false advertising disputes.

34. Jack Russell Terrier Network of N. Cal. v. Am. Kennel Club, 407 F.3d 1027, 1037 (9th Cir. 2005).

35. See Trademark Law Revision Act of 1987: Hearing on S. 1883 Before the Subcomm. on Patents, Copyrights and Trademarks of the S. Comm. on the Judiciary, 100th Cong. 70 (1988) [hereinafter Hearing on S. 1883].

36. Lexmark, 134 S. Ct. at 1389–90.

37. Hearing on S. 1883, supra note 34, at 46–48.

38. Lexmark, 134 S. Ct. at 1395 (emphasis added).

39. Id. at 1393.

40. Id. at 1384–85.

41. Id. at 1394.

42. Id. (emphasis added).

43. Id. at 1395 (emphasis omitted).

44. See, e.g., 1-800 Contacts, Inc. v., Inc., 722 F.3d 1229, 1244 (10th Cir. 2013) (“[I]nitial-interest confusion would arise as follows: a consumer enters a query for ‘1-800 Contacts’ on Google; sees a screen with an ad for that is generated because of’s purchase of one of the nine Challenged Keywords; becomes confused about whether is the same source as, or is affiliated with, 1-800; and therefore clicks on the ad to view the site. has exploited its use of 1-800’s mark to lure the confused consumer to its website.”).

45. Storus Corp. v. Aroa Mktg., Inc., 87 U.S.P.Q.2d 1032, 1037 (N.D. Cal. 2008); see also adidas-America, Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1057 (D. Or. 2008) (“As an initial matter, adidas acknowledges that there is no likelihood of consumer confusion at the point-of-sale.”); Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997) (“[U]se of the Cat’s stove-pipe hat or the confusingly similar title to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion, may be still an infringement.”). But see Astra Pharm. Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 1206–08 (1st Cir. 1983) (finding that infringement liability requires confusion influencing “the ultimate decision of a purchaser whether to buy a particular product”); Teletech Customer Care Mgmt. (Cal.), Inc. v. Tele-Tech Co., 977 F. Supp. 1407, 1410, 1414 (C.D. Cal. 1997) (finding initial interest confusion insufficient for trademark liability because such “brief confusion is not cognizable under the trademark laws”).

46. Lexmark, 134 S. Ct. at 1390–91.

47. Id. at 1394 (internal quotation marks omitted).

48. David J. Franklyn & David A. Hyman, Trademarks as Search Engine Keywords: Much Ado about Something?, 26 Harv. J.L. & Tech. 481, 524 (2013).

49. Google search results for “hybrid” provide a link to the Wikipedia entry containing information about all of these subjects. See Hybrid (Biology), Wikipedia, (last modified July 3, 2014).

50. Eric Goldman, Tenth Circuit Kills the Initial Interest Confusion Doctrine—1-800 Contacts v., Tech. & Marketing Law Blog (July 18, 2013),

51. Verdict Form, at 5–6, adidas-America, Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029 (D. Or. 2008) (No. 01-1655-KI), 2008 WL 2140813.

52. adidas, 546 F. Supp. 2d at 1057.

53. Mark A. Lemley & Mark P. McKenna, Owning Mark(et)s, 109 Mich. L. Rev. 137, 188 (2010) (emphasis added).

54. Lexmark Int’l, Inc. v. Static Control Components, Inc., 134 S. Ct. 1377, 1382 (2014) (emphasis added).

Deborah R. Gerhardt

Deborah R. Gerhardt is an assistant professor of law at the University of North Carolina School of Law. She is grateful to Madeleine Pfefferle for excellent research assistance.