A recent Eastern District of New York decision, Sussman-Automatic Corp. v. Spa World Corp., —F.Supp.2d.—, 2014 WL 1651953 (E.D.N.Y. 2014), holds that use of a trademark in “bait and switch” advertising does not constitute trademark infringement (although it might constitute false advertising). In dismissing the plaintiff’s trademark infringement complaint, the decision appears to have unduly narrowed the scope of Lanham Act actionable “confusion.” We analyze this case and discuss why its reasoning is flawed and inconsistent with the Second Circuit interpretation of the Lanham Act.
Actionable Confusion
The linchpin of any trademark infringement case is “likelihood of confusion,” which the statutory language states more expansively as “likely to cause confusion, or to cause mistake, or to deceive.” 15 USC §1114(1). Although historically such confusion was limited to confusion as to the source of the product, in 1962 Congress amended Section 32 of the Lanham Act to remove any such limitation. Under Second Circuit law, an action for trademark infringement can be maintained on confusion, mistake or deception “of any kind.” Syntex Laboratories v. Norwich Pharmacal, 437 F.2d 566 (2d Cir. 1971). Among the “kinds” of actionable confusion recognized over the years have been post-sale confusion, initial interest confusion and confusion as to sponsorship or approval.
