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Date: 11-21-2015

Case Style: Multi Time Machine, Inc. v. Amazon.com, Inc.

Case Number: 13-55575

Judge: Barry G. Silverman

Court: United States Court of Appeals for the Ninth Circuit on appeal from the Central District of California (Los Angeles County)

Plaintiff's Attorney: Eric Levinrad (argued) and Ryan Stonerock,
Jeff Cohen for Plaintiff-Appellant.

Defendant's Attorney: Marc C. Levy (argued) and Kathryn Feiereisel for Defendants-Appellees.

Paul Alan Levy and Scott Michelman, Public Citizen
Litigation Group, Washington, D.C., for Amici Curiae Public
Citizen, Inc., and Electronic Frontier Foundation.

Catherine R. Gellis, Sausalito, California; Rebecca Tushnet,
Georgetown Law School, Washington, D.C., for Amicus
Curiae Intellectual Property Law Professors.

Margret Caruso and Carolyn Thomas, Quinn Emanuel
Urquhart & Sullivan LLP, Redwood Shores, California, for
Amici Curiae Google, Inc., Pinterest, Inc., Yahoo! Inc., eBay,
Inc., and Twitter, Inc.

Description: In the present appeal, we must decide whether the
following scenario constitutes trademark infringement: A
customer goes online to Amazon.com looking for a certain
military-style wristwatch — specifically the “MTM Special
Ops” — marketed and manufactured by Plaintiff Multi Time
Machine, Inc. The customer types “mtm special ops” in the
search box and presses “enter.” Because Amazon does not
sell the MTM Special Ops watch, what the search produces
is a list, with photographs, of several other brands of military
style watches that Amazon does carry, specifically identified
by their brand names – Luminox, Chase-Durer, TAWATEC,
and Modus.
MTM brought suit alleging that Amazon’s response to a
search for the MTM Special Ops watch on its website is
trademark infringement in violation of the Lanham Act.
MTM contends that Amazon’s search results page creates a
likelihood of confusion, even though there is no evidence of
any actual confusion and even though the other brands are
clearly identified by name. The district court granted
summary judgment in favor of Amazon, and MTM now
We affirm. “The core element of trademark
infringement” is whether the defendant’s conduct “is likely to
confuse customers about the source of the products.” E. & J.
Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th
Cir. 1992). Because Amazon’s search results page clearly
labels the name and manufacturer of each product offered for
sale and even includes photographs of the items, no
reasonably prudent consumer accustomed to shopping online
would likely be confused as to the source of the products.
Thus, summary judgment of MTM’s trademark claims was
I. Factual and Procedural Background
MTM manufactures and markets watches under various
brand names including MTM, MTM Special Ops, and MTM
Military Ops. MTM holds the federally registered trademark
“MTM Special Ops” for timepieces. MTM sells its watches
directly to its customers and through various retailers. To
cultivate and maintain an image as a high-end, exclusive
brand, MTM does not sell its watches through Amazon.com.
Further, MTM does not authorize its distributors, whose
agreements require them to seek MTM’s permission to sell
MTM’s products anywhere but their own retail sites, to sell
MTM watches on Amazon.com. Therefore, MTM watches
have never been available for sale on Amazon.com.
Amazon is an online retailer that purports to offer
“Earth’s Biggest Selection of products.” Amazon has
designed its website to enable millions of unique products to
be sold by both Amazon and third party sellers across dozens
of product categories.
Consumers who wish to shop for products on Amazon’s
website can utilize Amazon’s search function. The search
function enables consumers to navigate Amazon.com’s large
marketplace by providing consumers with relevant results in
response to the consumer’s query. In order to provide search
results in which the consumer is most likely to be interested,
Amazon’s search function does not simply match the words
in the user’s query to words in a document, such as a product
description in Amazon.com’s catalog. Rather, Amazon’s
search function – like general purpose web search engines
such as Google or Bing – employs a variety of techniques,
including some that rely on user behavior, to produce relevant
results. By going beyond exactly matching a user’s query to
text describing a product, Amazon’s search function can
provide consumers with relevant results that would otherwise
be overlooked.
Consumers who go onto Amazon.com and search for the
term “mtm special ops” are directed to a search results page.
On the search results page, the search query used — here,
“mtm special ops” — is displayed twice: in the search query
box and directly below the search query box in what is
termed a “breadcrumb.” The breadcrumb displays the
original query, “mtm special ops,” in quotation marks to
provide a trail for the consumer to follow back to the original
search. Directly below the breadcrumb, is a “Related
Searches” field, which provides the consumer with alternative
search queries in case the consumer is dissatisfied with the
results of the original search. Here, the Related Search that
is suggested to the consumer is: “mtm special ops watch.”
Directly below the “Related Searches” field is a gray bar
containing the text “Showing 10 Results.” Then, directly
below the gray bar is Amazon’s product listings. The gray
bar separates the product listings from the breadcrumb and
the “Related Searches” field. The particular search results
page at issue is displayed below:
Case: 13-55575, 11/26/2013, ID: 8878836, DktEntry: 17-2, Page 13 of 37
MTM watches are not listed on the page for the simple
reason that neither Amazon nor MTM sells MTM watches on
MTM filed a complaint against Amazon, alleging that
Amazon’s search results page infringes MTM’s trademarks
in violation of the Lanham Act. Amazon filed a motion for
summary judgment, arguing that (1) it is not using MTM’s
mark in commerce and (2) there is no likelihood of consumer
confusion. In ruling on Amazon’s motion for summary
judgment, the district court declined to resolve the issue of
whether Amazon is using MTM’s mark in commerce, and,
instead, addressed the issue of likelihood of confusion. In
evaluating likelihood of confusion, the district court utilized
the eight-factor test set forth in AMF Inc. v. Sleekcraft Boats,
599 F.2d 341 (9th Cir. 1979).1 Relying on our recent decision
in Network Automation, Inc. v. Advanced Systems Concepts,
638 F.3d 1137 (9th Cir. 2011), the district court focused in
particular on the following factors: (1) the strength of MTM’s
mark; (2) the evidence of actual confusion and the evidence
of no confusion; (3) the type of goods and degree of care
likely to be exercised by the purchaser; and (4) the
appearance of the product listings and the surrounding
context on the screen displaying the results page. Upon
reviewing the factors, the district court concluded that the
relevant Sleekcraft factors established “that there is no
likelihood of confusion in Amazon’s use of MTM’s
1 The eight factors enumerated in Sleekcraft are as follows: “1. strength
of the mark; 2. proximity of the goods; 3. similarity of the marks;
4. evidence of actual confusion; 5. marketing channels used; 6. type of
goods and the degree of care likely to be exercised by the purchaser;
7. defendant’s intent in selecting the mark; and 8. likelihood of expansion
of the product lines.” 599 F.2d at 348–49.
trademarks in its search engine or display of search results.”
Therefore, the district court granted Amazon’s motion for
summary judgment.
II. Jurisdiction and Standard of Review
We have jurisdiction pursuant to 28 U.S.C. § 1291.
“The decision to grant summary judgment in a trademark
infringement claim is reviewed de novo, and all reasonable
inferences are to be drawn in favor of the non-moving party.”
Surfvivor Media, Inc. v. Survivor Prods., 406 F.3d 625, 630
(9th Cir. 2005). “Although disfavored in trademark
infringement cases, summary judgment may be entered when
no genuine issue of material fact exists.” Id. Indeed, in
several trademark cases, we have concluded that there is no
likelihood of confusion as a matter of law and affirmed the
district court’s grant of summary judgment in favor of the
defendant. See, e.g., One Indus., LLC v. Jim O’Neal Distrib.,
578 F.3d 1154, 1162–65 (9th Cir. 2009); M2 Software, Inc. v.
Madacy Entm’t, 421 F.3d 1073, 1080–85 (9th Cir. 2005);
Surfvivor Media, 406 F.3d at 631–34.
III. Discussion
To prevail on a claim of trademark infringement under the
Lanham Act, “a trademark holder must show that the
defendant’s use of its trademark ‘is likely to cause confusion,
or to cause mistake, or to deceive.’” Fortune Dynamic, Inc.
v. Victoria’s Secret Stores Brand Mgmt., 618 F.3d 1025, 1030
(9th Cir. 2010) (quoting 15 U.S.C. § 1125(a)(1)–(a)(1)(A)).
“The test for likelihood of confusion is whether a ‘reasonably
prudent consumer’ in the marketplace is likely to be confused
as to the origin of the good or service bearing one of the
marks.” Dreamwerks Prod. Group v. SKG Studio, 142 F.3d
1127, 1129 (9th Cir. 1998). “The confusion must ‘be
probable, not simply a possibility.’” Murray v. Cable NBC,
86 F.3d 858, 861 (9th Cir. 1996).
Here, the district court was correct in ruling that there is
no likelihood of confusion. Amazon is responding to a
customer’s inquiry about a brand it does not carry by doing
no more than stating clearly (and showing pictures of) what
brands it does carry. To whatever extent the Sleekcraft
factors apply in a case such as this – a merchant responding
to a request for a particular brand it does not sell by offering
other brands clearly identified as such – the undisputed
evidence shows that confusion on the part of the inquiring
buyer is not at all likely. Not only are the other brands clearly
labeled and accompanied by photographs, there is no
evidence of actual confusion by anyone.
To analyze likelihood of confusion, we utilize the eightfactor
test set forth in Sleekcraft. However, “[w]e have long
cautioned that applying the Sleekcraft test is not like counting
beans.” One Indus., 578 F.3d at 1162; see also Network
Automation, Inc. v. Advanced Sys. Concepts, 638 F.3d 1137,
1145 (9th Cir. 2011) (“The Sleekcraft factors are intended as
an adaptable proxy for consumer confusion, not a rote
checklist.”). “Some factors are much more important than
others, and the relative importance of each individual factor
will be case-specific.” Brookfield Commc’ns v. West Coast
Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).
Moreover, the Sleekcraft factors are not exhaustive and other
variables may come into play depending on the particular
facts presented. Network Automation, 638 F.3d at 1145–46.
This is particularly true in the Internet context. See
Brookfield, 174 F.3d at 1054 (“We must be acutely aware of
excessive rigidity when applying the law in the Internet
context; emerging technologies require a flexible approach.”).
Indeed, in evaluating claims of trademark infringement in
cases involving Internet search engines, we have found
particularly important an additional factor that is outside of
the eight-factor Sleekcraft test: “the labeling and appearance
of the advertisements and the surrounding context on the
screen displaying the results page.” Network Automation,
638 F.3d at 1154.
In the present case, the eight-factor Sleekcraft test is not
particularly apt. This is not surprising as the Sleekcraft test
was developed for a different problem — i.e., for analyzing
whether two competing brands’ marks are sufficiently similar
to cause consumer confusion. See Sleekcraft, 599 F.2d at
348. Although the present case involves brands that compete
with MTM, such as Luminox, Chase-Durer, TAWATEC, and
Modus, MTM does not contend that the marks for these
competing brands are similar to its trademarks. Rather, MTM
argues that the design of Amazon’s search results page
creates a likelihood of initial interest confusion2 because
2 “Initial interest confusion is customer confusion that creates initial
interest in a competitor’s product. Although dispelled before an actual
sale occurs, initial interest confusion impermissibly capitalizes on the
goodwill associated with a mark and is therefore actionable trademark
infringement.” Playboy Enters. v. Netscape Commc’ns. Corp., 354 F.3d
1020, 1025 (9th Cir. 2004).
Following the issuance of the original opinion in this action, several
amici filed briefs questioning the validity of the doctrine of initial interest
confusion in the context of the Internet. However, in the present appeal,
the parties did not dispute the application of the doctrine of initial interest
confusion, and we as a three-judge panel are bound by the precedent of
our court. See Miller v. Gammie, 335 F.3d 889, 899 (9th Cir. 2003) (“[A]
three-judge panel may not overrule a prior decision of the court.”).
when a customer searches for MTM Special Ops watches on
Amazon.com, the search results page displays the search term
used – here, “mtm special ops” – followed by a display of
numerous watches manufactured by MTM’s competitors and
offered for sale by Amazon, without explicitly informing the
customer that Amazon does not carry MTM watches.
Thus, the present case focuses on a different type of
confusion than was at issue in Sleekcraft. Here, the confusion
is not caused by the design of the competitor’s mark, but by
the design of the web page that is displaying the competing
mark and offering the competing products for sale. Sleekcraft
aside, the ultimate test for determining likelihood of
confusion is whether a “reasonably prudent consumer” in the
marketplace is likely to be confused as to the origin of the
goods. Dreamwerks, 142 F.3d at 1129. Our case can be
resolved simply by a evaluation of the web page at issue and
the relevant consumer. Cf. Brookfield, 174 F.3d at 1054 (“[I]t
is often possible to reach a conclusion with respect to
likelihood of confusion after considering only a subset of the
factors.”). Indeed, we have previously noted that “[i]n the
keyword advertising context [i.e., where a user performs a
search on the internet, and based on the keywords contained
in the search, the resulting web page displays certain
advertisements containing products or services for sale,] the
‘likelihood of confusion will ultimately turn on what the
consumer saw on the screen and reasonably believed, given
the context.’” Network Automation, 638 F.3d at 1153. In
other words, the case will turn on the answers to the
following two questions: (1) Who is the relevant reasonable
consumer?; and (2) What would he reasonably believe based
on what he saw on the screen?
Turning to the first question, we have explained that
“[t]he nature of the goods and the type of consumer is highly
relevant to determining the likelihood of confusion in the
keyword advertising context.” Network Automation,
638 F.3d at 1152. “In evaluating this factor, we consider ‘the
typical buyer exercising ordinary caution.’” Au-Tomotive
Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1076
(9th Cir. 2006) (quoting Sleekcraft, 599 F.2d at 353).
“Confusion is less likely where buyers exercise care and
precision in their purchases, such as for expensive or
sophisticated items.” Id. Moreover, “the default degree of
consumer care is becoming more heightened as the novelty of
the Internet evaporates and online commerce becomes
commonplace.” Network Automation, 638 F.3d at 1152.
The goods in the present case are expensive. It is
undisputed that the watches at issue sell for several hundred
dollars. Therefore, the relevant consumer in the present case
“is a reasonably prudent consumer accustomed to shopping
online.” Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d
1171, 1176 (9th Cir. 2010).
Turning to the second question, as MTM itself asserts, the
labeling and appearance of the products for sale on Amazon’s
web page is the most important factor in this case. This is
because we have previously noted that clear labeling can
eliminate the likelihood of initial interest confusion in cases
involving Internet search terms. See, e.g., Playboy Enters.,
354 F.3d at 1030 n.44 (explaining that clear labeling “might
eliminate the likelihood of initial interest confusion that exists
in this case”); Network Automation, 638 F.3d at 1154 (same).
Indeed, MTM itself argues: “The common thread of [the
Ninth Circuit’s decisions in Brookfield, Playboy, and Network
Automation] is that liability under the Lanham Act can only
be avoided as a matter of law where there is clear labeling to
avoid the possibility of confusion – including initial interest
confusion – resulting from the use of another’s trademark.”
Thus, MTM agrees that summary judgment of its trademark
claims is appropriate if there is clear labeling that avoids
likely confusion.
Here, the products at issue are clearly labeled by Amazon
to avoid any likelihood of initial interest confusion by a
reasonably prudent consumer accustomed to online shopping.
When a shopper goes to Amazon’s website and searches for
a product using MTM’s trademark “mtm special ops,” the
resulting page displays several products, all of which are
clearly labeled with the product’s name and manufacturer in
large, bright, bold letters and includes a photograph of the
item. In fact, the manufacturer’s name is listed twice. For
example, the first result is “Luminox Men’s 8401 Black Ops
Watch by Luminox.” The second result is “Chase-Durer
Men’s 246.4BB7-XL-BR Special Forces 1000XL Black
Ionic-Plated Underwater Demolition Team Watch by
Chase-Durer.” Because Amazon clearly labels each of the
products for sale by brand name and model number
accompanied by a photograph of the item, it is unreasonable
to suppose that the reasonably prudent consumer accustomed
to shopping online would be confused about the source of the
MTM argues that initial interest confusion might occur
because Amazon lists the search term used – here the
trademarked phrase “mtm special ops” – three times at the
top of the search page. MTM argues that because Amazon
lists the search term “mtm special ops” at the top of the page,
a consumer might conclude that the products displayed are
types of MTM watches. But, merely looking at Amazon’s
search results page shows that such consumer confusion is
highly unlikely. None of these watches is labeled with the
word “MTM” or the phrase “Special Ops,” let alone the
specific phrase “MTM Special Ops.” Further, some of the
products listed are not even watches. The sixth result is a
book entitled “Survive!: The Disaster, Crisis and
Emergency Handbook by Jerry Ahem.” The tenth result is
a book entitled “The Moses Expedition: A Novel by Juan
Gómez-Jurado.” No reasonably prudent consumer,
accustomed to shopping online or not, would assume that a
book entitled “The Moses Expedition” is a type of MTM
watch or is in any way affiliated with MTM watches.
Likewise, no reasonably prudent consumer accustomed to
shopping online would view Amazon’s search results page
and conclude that the products offered are MTM watches. It
is possible that someone, somewhere might be confused by
the search results page. But, “[u]nreasonable, imprudent and
inexperienced web-shoppers are not relevant.” Tabari,
610 F.3d at 1176; see also Network Automation, 638 F.3d at
1153 (“[W]e expect consumers searching for expensive
products online to be even more sophisticated.”). To
establish likelihood of confusion, MTM must show that
confusion is likely, not just possible. See Murray, 86 F.3d at
MTM argues that in order to eliminate the likelihood of
confusion, Amazon must change its search results page so
that it explains to customers that it does not offer MTM
watches for sale before suggesting alternative watches to the
customer. We disagree. The search results page makes clear
to anyone who can read English that Amazon carries only the
brands that are clearly and explicitly listed on the web page.
The search results page is unambiguous – not unlike when
someone walks into a diner, asks for a Coke, and is told “No
Coke. Pepsi.” See Multi Time Mach., Inc. v. Amazon.com,
Inc., 792 F.3d 1070, 1080–81 (9th Cir. 2015) (Silverman, J.,
In light of the clear labeling Amazon uses on its search
results page, no reasonable trier of fact could conclude that
Amazon’s search results page would likely confuse a
reasonably prudent consumer accustomed to shopping online
as to the source of the goods being offered. Cf. Playboy,
354 F.3d at 1030 n.44 (Clear labeling “might eliminate the
likelihood of initial interest confusion that exists in this
case.”); Network Automation, 638 F.3d at 1154 (same). As
Judge Berzon put it, “I do not think it is reasonable to find
initial interest confusion when a consumer is never confused
as to source or affiliation, but instead knows, or should know,
from the outset that a product or web link is not related to that
of the trademark holder because the list produced by the
search engine so informs him.” Playboy, 354 F.3d at
1034–35 (9th Cir. 2004) (Berzon, J., concurring).
MTM attempts to argue that summary judgment of its
claims is inappropriate because there are numerous factual
disputes related to Amazon’s search results page. But, to the
extent there are factual disputes between the parties, none is
material to the analysis. MTM cannot dispute the fact that
the watches at issue sell for hundreds of dollars. Therefore,
as a matter of law, the relevant consumer would be a
reasonably prudent consumer accustomed to shopping online.
See Tabari, 610 F.3d at 1176; Network Automation, 638 F.3d
at 1152–53. Further, MTM cannot dispute the contents of the
web page at issue. A review of Amazon’s web page shows
that each product listed for sale is clearly labeled with the
product’s name and manufacturer and a photograph, and no
product is labeled with MTM’s mark. Thus, the undisputed
facts show that it is highly unlikely that a reasonably prudent
consumer accustomed to shopping online would be confused
as to the source of the goods offered for sale on Amazon’s
web page.
The likelihood of confusion is often a question of fact, but
not always. In a case such as this, where a court can conclude
that the consumer confusion alleged by the trademark holder
is highly unlikely by simply reviewing the product
listing/advertisement at issue, summary judgment is
appropriate. Cf. M2 Software, 421 F.3d at 1085 (explaining
that summary judgment of a trademark claim is appropriate
where the plaintiff has failed to present “sufficient evidence
to permit a rational trier of fact to find that confusion is
‘probable,’ not merely ‘possible’”). Indeed, in the similar
context of evaluating claims of consumer deception when
dealing with false advertising claims, we have at least twice
concluded – after a review of the label or advertisement at
issue – that there was no likelihood of consumer deception as
a matter of law because no reasonable consumer could have
been deceived by the label/advertisement at issue in the
manner alleged by the plaintiff. See, e.g., Davis v. HSBC
Bank, 691 F.3d 1152, 1162 (9th Cir. 2012); Freeman v. Time,
Inc., 68 F.3d 285, 289–90 (9th Cir. 1995).
Further, we are able to conclude that summary judgment
is appropriate in the present case without delving into any
factors other than: (1) the type of goods and the degree of
care likely to be exercised by the purchaser; and (2) the
labeling and appearance of the products for sale and the
surrounding context on the screen displaying the results page.
Cf. Brookfield, 174 F.3d at 1054 (“[I]t is often possible to
reach a conclusion with respect to likelihood of confusion
after considering only a subset of the factors”). However, if
we were to evaluate each of the remaining Sleekcraft factors,
those factors would not change our conclusion, here, because
those factors are either neutral or unimportant.
“Actual confusion” – We have held that “[a] showing of
actual confusion among significant numbers of consumers
provides strong support for the likelihood of confusion.”
Playboy, 354 F.3d at 1026 (noting that a strong showing by
the plaintiff in regard to this factor alone can reverse a grant
of summary judgment). However, here, there is no evidence
of actual confusion. The only “evidence” MTM presented to
the district court of actual confusion is the deposition
testimony of MTM’s president stating that someone named
Eric told him, in reference to Amazon’s web page, “it’s
confusing.” Hearsay problems aside, this testimony is too
speculative to show actual confusion because there is no
evidence showing that Eric was a potential consumer.
Indeed, at oral argument, MTM conceded that it does not
have evidence of actual consumer confusion. Therefore, this
factor does not weigh in MTM’s favor.
“Defendant’s Intent” – We have also held that “[a]
defendant’s intent to confuse constitutes probative evidence
of likely confusion: Courts assume that the defendant’s
intentions were carried out successfully.” Playboy, 354 F.3d
at 1028 (footnote omitted). MTM argues that the design of
Amazon’s search results page is evidence of its intent to
cause confusion. The design, however, indisputably produces
results that are clearly labeled as to the type of product and
brand. Amazon has designed its results page to alleviate any
possible confusion about the source of the products by clearly
labeling each of its products with the product’s name and
manufacturer. Therefore, this factor also does not weigh in
MTM’s favor.
“Strength of the Mark” – MTM argues that it has
presented sufficient evidence below from which a jury could
properly conclude that its trademark is both conceptually
strong and commercially strong. However, we find that this
factor is unimportant under the circumstances of this case.
Even assuming MTM’s mark is one of the strongest in the
world – on the same level as Apple, Coke, Disney, or
McDonald’s – there is still no likelihood of confusion
because Amazon clearly labels the source of the products it
offers for sale.
Further, as we previously found in Network Automation,
the remaining Sleekcraft factors are unimportant in a case,
such as this, involving Internet search terms where the
competing products are clearly labeled and the relevant
consumer would exercise a high degree of care. See Network
Automation, 638 F.3d at 1150–53 (finding “proximity of
goods,” “similarity of marks,” “marketing channels,” and
“likelihood of expansion” to be unimportant in a trademark
case involving Internet search terms where the advertisements
are clearly labeled and the relevant consumers would exercise
a high degree of care).
IV. Conclusion
In light of Amazon’s clear labeling of the products it
carries, by brand name and model, accompanied by a
photograph of the item, no rational trier of fact could find that
a reasonably prudent consumer accustomed to shopping
online would likely be confused by the Amazon search
results. Accordingly, we affirm the district court’s grant of
summary judgment in favor of Amazon.
BEA, Circuit Judge, dissenting:
Today the panel holds that when it comes to internet
commerce, judges, not jurors, decide what labeling may
confuse shoppers. In so doing, the court departs from our
own trademark precedent and from our summary judgment
jurisprudence. Because I believe that an Amazon shopper
seeking an MTM watch might well initially think that the
watches Amazon offers for sale when he searches “MTM
Special Ops” are affiliated with MTM, I must dissent.
If her brother mentioned MTM Special Ops watches, a
frequent internet shopper might try to purchase one for him
through her usual internet retail sites, perhaps Overstock.com,
Buy.com, and Amazon.com.1 At Overstock’s site, if she
typed “MTM special ops,” the site would respond “Sorry,
your search: ‘mtm special ops’ returned no results.”
Similarly, at Buy.com, she would be informed “0 results
found. Sorry. Your search for mtm special ops did not
return an exact match. Please try your search again.”
Things are a little different over at “Earth’s most
customer-centric company,” as Amazon styles itself. There,
if she were to enter “MTM Special Ops” as her search request
on the Amazon website, Amazon would respond with its page
showing (1) MTM Special Ops in the search field (2) “MTM
Specials Ops” again—in quotation marks—immediately
below the search field and (3) yet again in the phrase
“Related Searches: MTM special ops watch,” (emphasis in
original) all before stating “Showing 10 Results.” What the
website’s response will not state is the truth recognized by its
competitors: that Amazon does not carry MTM products any
1 MTM sells its products only through its own approved distributors.
more than do Overstock.com or Buy.com. Rather, below the
search field, and below the second and third mentions of
“MTM Special Ops” noted above, the site will display
aesthetically similar, multi-function watches manufactured by
MTM’s competitors. The shopper will see that Luminox and
Chase-Durer watches are offered for sale, in response to her
MTM query.2
MTM asserts the shopper might be confused into thinking
a relationship exists between Luminox and MTM; she may
think that MTM was acquired by Luminox, or that MTM
manufactures component parts of Luminox watches, for
instance. As a result of this initial confusion, MTM asserts,
she might look into buying a Luminox watch, rather than junk
the quest altogether and seek to buy an MTM watch
elsewhere. MTM asserts that Amazon’s use of MTM’s
trademarked name is likely to confuse buyers, who may
ultimately buy a competitor’s goods.
MTM may be mistaken. But whether MTM is mistaken
is a question that requires a factual determination, one this
court does not have authority to make.
2 As of June 17, 2015, the shopper might be subject to even more
confusion if she began her search of Amazon’s wares through Google. If
she searched Google for “Amazon MTM special ops watch,” one of the
search results would be a static page on Amazon’s website. Amazon’s
static webpage stated that “At Amazon.com, we not only have a large
collection of mtm special ops watch products [which, of course, is flatly
untrue], but also a comprehensive set of reviews from our customers.
Below we’ve selected a subset of mtm special ops watch products [a
repetition of the untruth] and the corresponding reviews to help you do
better research, and choose the product that best suits your needs.”
Amazon, http://www.amazon.com/gp/feature.html?ie=UTF8&docId=
1001909381. Amazon has since removed the page.
By usurping the jury function, the majority today makes
new trademark law. When we allow a jury to determine
whether there is a likelihood of confusion, as I would, we do
not make trademark law, because we announce no new
principle by which to adjudicate trademark disputes. Today’s
brief majority opinion accomplishes a great deal: the majority
announces a new rule of law, resolves whether “clear
labeling” favors Amazon using its own judgment, and, sub
silentio, overrules this court’s “initial interest confusion”
Capturing initial consumer attention has been recognized
by our court to be a grounds for finding of infringement of the
Lanham Act since 1997. Dr. Seuss Enterprises, L.P. v.
Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir.
1997) (identifying “initial consumer attention” as a basis for
infringement). In 1999, citing Dr. Seuss, we expressly
adopted the initial interest confusion doctrine in the internet
context, and never repudiated it. Brookfield Communications,
Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1062
(9th Cir. 1999). It may not apply where the competing goods
or services are “clearly labeled” such that they cause only
mere diversion, but whether such goods or services are
clearly labeled so as to prevent a prudent internet shopper’s
initial confusion depends on the overall function and
presentation of the web page. The issue is whether a prudent
internet shopper who made the search request and saw the
Amazon result—top to bottom—would more likely than not
be affected by that “initial interest confusion.” That is, an
impression—when first shown the results of the requested
MTM Special Ops search—that Amazon carries watches that
have some connection to MTM, and that those watches are
sold under the name Luminox or Chase-Durer. Whether there
is likelihood of such initial interest confusion, I submit, is a
jury question. Intimations in our case law that initial interest
confusion is bad doctrine notwithstanding, it is the law of our
circuit, and, I submit, the most fair reading of the Lanham
Tellingly, the majority does not cite to the statutory text,
which provides that the nonconsensual use of a registered
trademark will infringe where “such use is likely to cause
confusion, or cause mistake, or deceive.” 15 U.S.C.
§ 1114(1)(a). The majority reads the statute to contain
language that it does not, essentially reading the clause “at
point of sale” into the end of § 1114(1)(a). Similarly, the
majority reads 15 U.S.C. § 1125 to apply only at point of
sale—the majority writes that it is unreasonable to suppose
that a reasonably prudent consumer accustomed to shopping
online would be confused about the source of the goods
where Luminox and Chase-Durer watches are labeled as
such, but does not address the possibility that a reasonably
prudent consumer might initially assume that those brands
enjoyed some affiliation with MTM which, in turn, could
cause such a shopper to investigate brands which otherwise
would not have been of interest to her.3
To reach its conclusion, the majority purports to apply
this court’s precedent in Network Automation, Inc. v.
Advanced Systems Concepts, Inc., 638 F.3d 1137, 1145 (9th
Cir. 2011). In so doing, the majority ignores the procedural
3 Any person who “uses in commerce any word, term, name, symbol, or
device . . . which is likely to cause confusion . . . as to the affiliation,
connection, or association of such person with another person, or as to the
origin, sponsorship, or approval of his or her goods, services of
commercial activities” is also subject to injunction and liable for damages
to one likely to be damaged. 15 U.S.C. § 1125(a)(1).
posture of that case. There, plaintiff Network Automation
and defendant Advanced Systems Concepts both sold job
scheduling and management software. Id. at 1142. Network
Automation advertised its product by purchasing certain
keywords—including registered trademarks belonging to
Advanced Systems—which, when typed into various search
engines, included Network Automation’s website
“www.NetworkAutomation.com” as a labeled, sponsored link
among the search results. Id. Advanced Systems alleged
violation of the Lanham Act and moved for a preliminary
injunction. Id. at 1143. The district court granted a
preliminary injunction to Advanced Systems, and Network
Automation appealed. Id. On appeal, this court reversed and
vacated the preliminary injunction.
To do so, this court did not find that there was no genuine
issue of fact as to likelihood of confusion. Instead, this court
properly considered whether the facts, as the court understood
them, favored Advanced Systems in Network Automation
because a preliminary injunction requires “the moving party
[there, the plaintiff alleging infringement] demonstrate a fair
chance of success on the merits or questions serious enough
to require litigation.” Arc of California v. Douglas, 757 F.3d
975, 993 (9th Cir. 2014). Therefore, the Network Automation
court properly considered the weight of the evidence to
decide whether Advanced Systems had a fair chance of
success on the merits. Here, we are not tasked to determine
whether MTM is likely to succeed, nor to consider the weight
of the evidence. As this is an appeal from a summary
judgment, we must decide whether the non-moving party
(MTM) tendered a genuine issue of fact. Network
Automation did not announce a rule that clear labeling is per
se a question of law, nor that a judge’s determination that
products are clearly labeled precludes a triable issue of fact as
to trademark infringement.
Indeed, even if Network Automation were not so readily
distinguishable by its procedural posture, it is factually
distinguishable. In Network Automation, the “diversionary”
goods were clearly labeled on the response page as
“Sponsored Links,” showing that the producers of those
products were the ones advertising for themselves, not for the
firm named in the search request. Network Automation,
638 F.3d at 1144. Unlike the sponsored links at issue in
Network Automation, and unlike its competitors Buy.com and
Overstock.com, Amazon does not forestall any confusion by
informing customers who are searching “MTM Special Ops”
that Amazon does not carry any such products. Amazon does
just the opposite. It responds by twice naming MTM, and
once specifically naming watches.
On this record, a jury could infer that users who are
confused by the search results are confused as to why MTM
products are not listed. There is a question of fact whether
users who are confused by the search result will wonder
whether a competitor has acquired MTM or is otherwise
affiliated with or approved by MTM. See Brookfield
Communications, 174 F.3d at 1057. This is especially true as
to a brand like MTM, as many luxury brands with distinct
marks are produced by manufacturers of lower-priced, betterknown
brands—just as Honda manufactures Acura
automobiles but sells Acura automobiles under a distinct
mark that is marketed to wealthier purchasers, and Timex
manufactures watches for luxury fashion houses Versace and
Salvatore Ferragamo. Like MTM, Luminox manufactures
luxury watches, and a customer might think that MTM and
Luminox are manufactured by the same parent company. The
possibility of initial interest confusion here is likely much
higher than if, for instance, a customer using an online
grocery website typed “Coke” and only Pepsi products were
returned as results. No shopper would think that Pepsi was
simply a higher end version of Coke, or that Pepsi had
acquired Coke’s secret recipe and started selling it under the
Pepsi mark.
In any event, even as to expensive goods—for instance,
pianos sold under a mark very similar to the famous Steinway
and Sons brand’s mark—the issue is not that a buyer might
buy a piano manufactured by someone other than Steinway
thinking that it was a Steinway. The issue is that the
defendant’s use of the mark would cause initial interest
confusion by attracting potential customers’ attention to buy
the infringing goods because of the trademark holder’s hardwon
reputation. Brookfield, 174 F.3d at 1063 (citing
Grotrarian, Helfferich, Schulz, Th. Steinweg Nachf. v.
Steinway & Sons, 523 F.2d 1331, 1341–42 (2d. Cir. 1975)).
A jury could infer that the labeling of the search results,
and Amazon’s failure to notify customers that it does not
have results that match MTM’s mark, give rise to initial
interest confusion. If so, a jury could find that Amazon
customers searching for MTM products are subject to more
than mere diversion, since MTM is not required to show that
customers are likely to be confused at the point of sale.
Playboy Enterprises, Inc. v. Netscape Communications Corp.,
354 F.3d 1020, 1025 (9th Cir. 2004).
Assuming arguendo that the majority properly found that
Amazon’s search results are clearly labeled, the majority
extends its factual determinations further by determining that
in this case, clear labeling outweighs the other eight factors
considered in trademark suits, factors that remain the law of
this circuit: (1) strength of the mark(s); (2) proximity or
relatedness of the goods; (3) similarity of the marks;
(4) evidence of actual confusion; (5) marketing channels;
(6) degree of consumer care; (7) the defendants’ intent; and
(8) likelihood of expansion. Network Automation, 638 F.3d
at 1145 (citing AMF v. Sleekcraft Boats, 599 F.2d 341,
348–49 (9th Cir. 1979)). To be sure, courts must be flexible
in their application of the factors, as some may not apply in
every case. Playboy, 354 F.3d at 1026. Here, for instance,
the likelihood of expansion does not apply because both
MTM and Amazon already sell luxury watches, so whether
either is likely to expand its sales into the luxury watch
market is not a question. However, where the Sleekcraft
factors could tip in either direction, there is a jury question.
Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand
Management, Inc., 618 F.3d 1025, 1039 (9th Cir. 2010).
Simply stating that the Sleekcraft factors do not favor the
plaintiff, or don’t bear on the clarity of the labeling, does not
resolve the underlying factual question.
Having exercised its own judgment to determine that this
presentation is not confusing, the majority purports to
consider the Sleekcraft factors, though the opinion essentially
states that some of the factors are per se irrelevant—for
instance, as to the Sleekcraft factor, “strength of the mark,”
the majority assert that “under the circumstances of this
case,” the factor is unimportant because “Amazon clearly
labels the source of the products it offers for sale.” Slip op.
at 20. By reiterating the conclusion at which it had already
arrived, the majority ignores the factor and the fact-intensive
analysis it entails. A mark’s strength is a measure of how
uniquely identified it is with a product or service, and
therefore how deserving of trademark protection. Fortune
Dynamic, 618 F.3d at 1032. “A mark’s conceptual strength
depends largely on the obviousness of its connection to the
good or service to which it refers. The less obvious the
connection, the stronger the mark, and vice versa.” Id. at
1032. Conceptual strength is considered along a continuum,
and in this circuit, marks may be classified as falling into one
of five categories, from conceptually weak to conceptually
strong: generic, descriptive, suggestive, arbitrary, or fanciful.
Fortune Dynamic, 618 F.3d at 1033. Whether a mark is
descriptive or suggestive is a question of fact. Id. at 1034. In
an infringement suit, “the distinction [between a descriptive
and suggestive mark] is important because if the mark is
suggestive, there is a stronger likelihood that the ‘strength of
the mark’ factor favors the [plaintiff].” Id. Here, the phrase
“MTM Special Ops” requires “a mental leap from the mark
to the product,” because the phrase does not expressly refer
to watches. Fortune Dynamic, 618 F.3d at 1033. Indeed, by
evoking elite military forces (“Special Ops”), the goods
suggested by the phrase are as likely to be protective gear,
binoculars, weapons, or boots as they are watches. A jury
could find that the mark is suggestive and conceptually strong
because it does not obviously refer to watches, or that it is
merely descriptive because the watches are made in a military
style. Either way, the weight of the evidence is a question of
fact, and there is a genuine issue of fact as to the conceptual
strength of the mark. As in Fortune Dynamic, “a jury should
assess the conceptual strength of [plaintiff’s] mark in the first
instance.” 618 F.3d at 1033. However, the majority simply
brushes off the question as irrelevant “under the
circumstances.” The circumstances surrounding the case are
questions of fact, not law, and should be given to a jury to
Similarly, the majority finds that Amazon’s intent weighs
in favor of Amazon. A defendant’s intent is relevant because
a “defendant’s intent to confuse constitutes probative
evidence of likely confusion.” Playboy, 354 F.3d at 1029.
MTM submitted evidence that Amazon vendors and
customers had complained to Amazon because they did not
understand why they received certain non-responsive search
results when they searched for products that are not carried by
Amazon. The evidence showed that Amazon employees did
not take action to address the complaints by explaining to the
public how its search function works.4 One Amazon
employee noted that explaining BBS to the public might draw
customers’ and vendors’ unwanted scrutiny to the matter.
Amazon did not disclose to shoppers that its search function
responds to customer behavior.
As in Playboy, this evidence suggests, “at a minimum,
that defendants do nothing to alleviate confusion . . .
Although not definitive, this factor provides some evidence
of an intent to confuse on the part of defendants.” Playboy,
4 Amazon’s search algorithm responds to its customers’ behavior using
a Behavior Based Search (“BBS”) technology, which uses data about what
customers view and purchase after searching certain terms. Amazon does
not program the terms; the function responds solely to customer behavior.
If enough customers search for a certain keyword, “X,” and then look at
or purchase another product “Y,” even if X and Y are not obviously
related, future customers who search for X may receive search results
including Y. But the BBS function is not solely responsible for the search
results. The results list also includes matches based on a search of terms
on Amazon’s pages—for instance, streaming video of a show called
Special Ops Mission may be called up. Whether a particular result
appears because of BBS or a traditional search of matching terms is not
evident from the matches, and the relevant products (which are based on
search terms) and recommended products (based on BBS) are mingled
354 F.3d at 1029. From evidence that “Earth’s most
customer-centric company” took no action on these
complaints, a jury could infer that Amazon intended to
confuse its customers.
The majority ignores this evidence on the basis of its
conclusion that Amazon created a page with clearly labeled
wares, and further concludes that Amazon must not have
intended to confuse customers, or its page would not be
clearly labeled. Slip op. at 19–20. However, to conclude that
there is no triable issue of fact, the majority may not overlook
or ignore evidence to the contrary in the record, or assume
that a jury would weigh evidence the same way that the panel
Finally, the majority repeatedly states that not only does
Amazon clearly label its products, but there is no evidence of
actual confusion. Assuming arguendo that there is no
evidence from which a jury could infer actual confusion,5 the
absence of actual confusion is not dispositive of whether
there is a genuine issue of fact. Where evidence of actual
confusion is submitted, it is “strong support for the likelihood
5 Amazon submitted evidence that purports to show that no customers
were confused, because customers who searched for “Luminox” were 21
times as likely to purchase a Luminox watch as were customers who
searched for “MTM Special Ops.” It isn’t surprising that customers who
search for an item (Luminox watches) are more likely to buy that item
than customers who did not search for it but searched for another product
(MTM watches). However, a jury might view this purported evidence of
no actual confusion as flawed because a user researching watches might
initially be confused about the availability of MTM watches online and so
not purchase a Luminox the same day. Further, some users did search for
“MTM Special Ops” and purchase a competitor’s watch the same day,
which a jury could find probative of some confusion.
of confusion.” Network Automation, 638 F.3d at 1151. But
actual confusion “is not necessary to a finding of likelihood
of confusion under the Lanham Act. Indeed, proving actual
confusion is difficult and the courts have often discounted
such evidence because it was unclear or insubstantial.” Id.
A plaintiff need not show actual confusion to prevail.
Through its cursory review of the Sleekcraft factors and
conclusory statements about clear labeling, the majority
purports to apply this circuit’s trademark law, and ignores the
doctrine of initial interest confusion. In so doing, the
majority today writes new trademark law and blurs the line
between innovation and infringement.
More troubling, the majority ignores the role of the jury.
Summary judgment law is an aid to judicial economy, but it
can be so only to the extent that it comports with the Seventh
Amendment. Were we to reverse and remand, MTM might
well lose. The likelihood of that outcome is irrelevant to the
question whether there is a genuine issue of fact. I
respectfully dissent.

Outcome: Affirmed

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