The Sixth Circuit Court of Appeals vacated a permanent injunction granted to Gibson Guitar Corp. preventing Paul Reed Smith Guitars (PRS) from manufacturing, selling, or distributing their “Singlecut” line of guitars. Gibson brought suit against PRS claiming that their Singlecut guitars infringed on the trademarked body shape of Gibson’s Les Paul guitar line. Although they conceded that no purchaser would be confused at the point of sale, Gibson argued that either the doctrine of initial-interest confusion or post-sale confusion, or a combination of the two, should be allowed to substitute for the point-of-sale confusion requirement.Initial-interest confusion involves the improper use of a trademark to create initial customer interest in a product and applies even if the customer realizes the product is not manufactured by the trademark holder prior to purchase. This doctrine has mainly been applied in the context of Internet domain names, but Gibson argued that it should apply here on the trademark of their guitar shape because a customer entering a guitar store might see PRS guitars on the far side of the room and approach them thinking they were Gibson guitars, thereby diverting potential Gibson customers to PRS. The court refused to apply the initial-interest confusion doctrine to product-shape trademarks, holding that because many consumer products would look alike if viewed at a sufficient distance, such an extension of the doctrine would have severe anti-competitive effects.
The court also dismissed Gibson’s post-sale confusion argument. Post-sale confusion occurs when use of a trademark leads people other than the buyer to mistakenly believe the product is manufactured by the trademark holder. The concern with this type of confusion is damage to the trademark holder’s reputation. However, in this case, Gibson concedes that PRS guitars are not clearly inferior to their own guitars. Since the PRS guitars are not inferior, no damage will be done to Gibson’s reputation by any post-sale confusion. Thus, the court holds that post-sale confusion cannot substitute for the point-of-sale confusion necessary to find trademark infringement.
Last, the court dismisses Gibson’s argument described as the “smoky-bar theory of confusion.” According to this theory, consumers who see their favorite musician playing a PRS in a smoky bar on a distant stage might confuse it with a Gibson. However, the court found that this type of confusion would help, rather than hurt, Gibson, since it would lead to people buying a Gibson instead of a PRS guitar.
Since Gibson conceded that no actual point-of-sale confusion occurred, and the court held that neither initial-interest confusion nor post-sale confusion could serve as a substitute for this requirement, the court vacated the injunction against PRS.
Judge Kennedy dissented in part, arguing that if a plaintiff can show that its product shape identifies its source from the vantage point alleged, it should be allowed to present evidence supporting initial-interest confusion.