Supreme Court Passes on Clarifying Likelihood of Trademark Confusion


The U.S. Supreme Court has opted not to weigh in on a critical issue dividing the federal circuits – the standard of review for analyzing likelihood of consumer confusion in trademark infringement cases. By denying certiorari in Relish Labs v. GrubHub, the Court missed an opportunity to bring much-needed uniformity to this fundamental inquiry.

As veterans of high-stakes trademark battles, the intellectual property attorneys at Stevens Law Group were closely watching this case in hopes of getting definitive guidance on whether likelihood of confusion determinations should be reviewed deferentially as findings of fact or de novo as legal conclusions.

The Relish Labs Dispute

The case arose from a trademark fight between meal kit company Home Chef (owned by Relish Labs and Kroger) and food delivery giants Grubhub and Just Eat Takeaway. Home Chef alleged that Grubhub’s new logo following its acquisition by Takeaway.com created a likelihood of confusion with Home Chef’s family of “HC” marks.

After a U.S. magistrate judge recommended a preliminary injunction based on confusion, the district court denied injunctive relief, providing only a cursory analysis of some of the likelihood of confusion factors. On appeal, the Seventh Circuit affirmed while applying different standards to the various factors.

This divergent approach reflected the uncertainty plaguing trademark law across the circuits. As the Relish Labs petition pointed out, appeals courts are fractured over how to review confusion findings – as pure fact, law, or some combination.

Missed Opportunity for Clarity

In seeking Supreme Court review, Relish Labs argued persuasively that this lack of uniformity creates unpredictability for trademark owners and muddles a doctrine so critical to brand protection and consumer faith in the marketplace.

Those arguments resonated for the amici – law students and faculty highlighting the circuit split on “who decides” likelihood of confusion – the judge as the ultimate legal arbiter or the jury as fact-finder more attuned to the ordinary consumer’s perspective.

Unfortunately, the Court passed on a chance to settle this divergence of judicial philosophies. Its cert denial (See Certiorari) leaves the circuits to their own devices in assessing trademark confusion, forcing litigants to navigate indeterminate and circuit-specific precedents.

Thorough Multi-Factor Analysis Paramount

In light of the Court’s inaction, brand owners must insist that lower courts rigorously analyze each of the multi-factor likelihood of confusion tests (at least 6-8 factors in most circuits). As the Relish Labs petition emphasized, these factors are interrelated, so cursory analysis skipping factors can undermine the integrity of the overall conclusion.

Even when the outcome may seem obvious based on a few factors, demanding a comprehensive examination of actual and potential evidence is critical to withstand appellate review under the prevailing deferential standards. This meticulous approach also builds a more persuasive case should the matter ultimately reach a circuit applying de novo review.

Enduring Trademark Principles

Despite the uncertainty on standard of review, some overarching principles from the Relish Labs case and related precedent remain clear:

  • The core question is whether an appreciable number of ordinarily prudent consumers would likely confuse the marks at issue.
  • While a single factor like intent is rarely dispositive, the strength and similarities of the marks carry great weight.
  • The scope of protection expands for fanciful or arbitrary marks compared to merely descriptive ones.
  • Evidence of actual confusion, while not necessary, provides powerful proof of likely confusion.

As this case underscores, effectively proving – or challenging – likelihood of confusion demands keen legal expertise and a firm command of the multi-factor tests. The trademark attorneys at Stevens Law Group have repeatedly achieved success in this arena through meticulous case development and advocacy at both the trial and appellate levels.

We encourage brand owners to contact us to discuss fortifying their trademark portfolios and enforcement strategies in this perpetually complex legal environment. While greater national uniformity would be preferable, we stand ready to diligently navigate the circuit-specific likelihood of confusion precedents to zealously protect our clients’ valuable brand identities.

Next Steps

For further guidance on navigating the complexities of intellectual property law in the age of AI, please contact us at Stevens Law Group. Our team of experienced IP attorneys is here to help you protect your innovations and grow your business in an evolving legal landscape.

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Introduction to Intellectual Property: A U.S. Perspective

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