Third Circuit case on reverse confusion: Freedom Card v. JPMorgan Chase. Small credit card issuer targeting sub-prime market uses FREEDOM CARD. Slightly after it ceases use Chase adopts CHASE FREEDOM for gas station-oriented credit card. Third Circuit affirms District Court holding of no likelihood of confusion.
(1) You have to live with your decision to adopt a weak mark.
Plaintiff had made a ‘crowded field’ argument in obtaining its registrations, specifically it had entered evidence of widespread third party use of the FREEDOM element. When you make arguments that part of your mark is weak, you consign yourself to an extremely narrow field of protection, making results like this likely.
(2) Third Circuit test for reverse confusion:
In the typical case in which there is a claim of
reverse confusion, a court should examine the
following factors [in determining] whether or not
there is a likelihood of confusion:
(1) the degree of similarity between the owner’s
mark and the alleged infringing mark;
(2) the strength of the two marks, weighing both
a commercially strong junior user’s mark and a
conceptually strong senior user’s mark in the
senior user’s favor;
(3) the price of the goods and other factors
indicative of the care and attention expected of
consumers when making a purchase;
(4) the length of time the defendant has used the
mark without evidence of actual confusion
(5) the intent of the defendant in adopting the
(6) the evidence of actual confusion;
(7) whether the goods, competing or not
competing, are marketed through the same
channels of trade and advertised through the same
(8) the extent to which the targets of the parties’
sales efforts are the same;
(9) the relationship of the goods in the minds of
consumers, whether because of the near-identity
of the products, the similarity of function, or
other factors;
(10) other facts suggesting that the consuming
public might expect the larger, more powerful
company to manufacture both products, or expect
the larger company to manufacture a product in
the plaintiff’s market, or expect that the larger
company is likely to expand into the plaintiff’s
(3) Third Circuit on Bad Intent by Junior User For Reverse Confsuion:
[Plaintiff] attempts to advance that contention by correctly
noting that the intent inquiry in a reverse confusion case differs
from an intent inquiry in a direct confusion case. However,
[Plaintiff]’s argument is misleading. As noted earlier, intent to
confuse is relevant to both reverse confusion and direct
confusion. A&H V, 237 F.3d at 232. The difference is that the
tenor of the intent to confuse evidence changes from the
deliberate intent to palm off or exploit the goodwill of the senior
user’s mark (deliberate confusion), id. at 225-26, to the
deliberate intent to push the senior user out of the market
(reverse confusion). Id. at 232.