When being confused is not confusion: are you confused?

As all Kat readers know, consumer confusion (and its wonderful legal extension, “likelihood of confusion”), is the bedrock of classic trade mark law. Wearing his consumer hat, however, this Kat is hard-pressed to remember the last time that he actually was confused about the source of a product or service solely because of the similarity of name. Against that backdrop, this Kat thought that the last place that he would encounter an instance of actual confusion would be at the Annual Meeting of the International Trademark Association, where trade mark sensibilities are meant to be especially acute. In particular, he could not imagine an instance of actual confusion regarding the names of hotels. And yet, it happened… and then it did not happen. Confused about the confusion? Read on.

It happens that one of the so-called convention hotels in San Diego was the Hotel Solamar. This Kat dutifully carried with him a map of the convention hotels, since many convention activities took place at these various hotels. And so it was when he bounded out of his hotel room early one morning to attend a meeting of outside counsel of a particular client, which he was sure was to take place at the Hotel Solamar (having quickly checked his schedule the night before). He confidently entered the Hotel Solamar, but to his frustration, he could not find a notice of the meeting at the hotel. Finally admitting defeat, he sheepishly approached the front desk for clarification, which was quick to come. “Sir, you are the wrong hotel. You don’t want the Hotel Solamar, you want the Hotel Palomar” (which is about a 10-minute walk away).

What I had obviously done in checking the name of the hotel the evening before was to focus on the “mar” part of the name and wrongly assume that the hotel in question was a convention hotel. The only hotel that met that description was the Hotel Solamar. Having now understood the error of my ways, I then continued: “How often does it happen that a person will confuse one hotel for the other”? The answer, “it happens sometimes, but we don’t really care, since both the Hotel Solamar and the Hotel Palomar belong to the same group, the Kimpton Hotels.” So there it was—as a consumer I had been confused, but from the point of view of the trade mark owner, it would appear that the confusion did not matter. In the famous words of a well-known US basketball commentator, “no harm, no foul”, meaning that since there was no damage, the act complained-of does not amount to a legal claim. It was consumer confusion engendered by the very same hotel owner. What can we make of this?

First, having regard to the circumstances giving rise to my confusion (irrespective of the common ownership of the two hotels), could it be said that I was at least partially responsible for my own confusion? After all, one would think that a consumer typically spends more time fixating on the name of a hotel as compared, e.g., with buying peanut butter at the local supermarket, such that the likelihood of actually being confused by a hotel name should be unlikely. A set of unusual circumstances conspired against me—wrongly assuming the sought-after hotel was a convention hotel and rechecking the information the night before in the face of too little sleep and too much mental multitasking. Under such circumstances, could I, as the confused consumer, be deemed culpable for my own mistake, akin to tortious contributory negligence? When does the conduct of the consumer exculpate a trade mark owner from a claim of infringement, even where there is an instance of actual confusion as a matter of fact?

Secondly, this Kat wonders why it is that the Kimpton Hotel group is prepared to tolerate the possibility that confusion may occur with respect to the names of the respective hotels. After all, what happened was an instance of initial interest confusion (which was later corrected). At least under United States jurisprudence, initial interest confusion has been found to be a basis for liability based on infringement. Here, however, there is no reason to assert a claim of infringement—“no harm, no foul” with respect to the trade mark owner, but harm to me as a consumer in the form of time lost and energy misspent, not to mention a sense of personal embarrassment.

Professor James Gibson of the University of Richmond delivered an academic paper as part of the Scholarship Symposium at the INTA Annual Meeting, “Trademark Law as an Agency Problem”, where he discussed the recognized problem that the trade mark interests of the trade mark owner and consumer are not always in alignment. This Kat’s experience in confusing the Hotel Solamar with the Hotel Palomar is an excellent case in point. This Kat is skeptical that the law is able to micro-manage these misalignments, as Professor Gibson suggested, even though they may impose frictions, and even costs, to the various trade mark actors. After all, costs/benefits are inherently part of all intellectual property rights.

Katnote from Jeremy: at the INTA Meeting some years ago in San Antonio, Texas, I was confused between the San Antonio Marriott Rivercenter and the San Antonio Marriott Riverwalk.  One's eye has to travel virtually the full length of the alphabet before getting to the bit that's different.  
When being confused is not confusion: are you confused? When being confused is not confusion: are you confused? Reviewed by Neil Wilkof on Friday, May 15, 2015 Rating: 5


Barbara Cookson said...

I fear you suffered initial interest confusion and in the USA that seems to be tolerable and yet Lord Neuberger in NOW seem to give overseas hotels a special status in the law of UK passing off. The real harm would have been done had you been booking an event, and perhaps the average paying consumer is less likely to be confused

Miri Frankel said...

Neil, great post! Both Jeremy's and your anecdotes reminded me of a similar occurrence about 10 years ago. Some friends and I planned a weekend trip to Boston. This was back when Lehman Brothers was still around, and one friend who worked there used Lehman's travel discounts to book us a suite at the Ritz Carlton Boston Commons. We didn't have GPS then, but were familiar enough with Boston that we figured we could find the hotel, which was, we assumed, situated along Boston Commons.

Driving along one side of Boston Commons, we saw the hotel, parked and went inside to check in. The reception staff could not find our reservation and said "Oh, you must have a reservation at the Ritz Carlton Boston Commons." We were stunned - "isn't that where we are?" Apparently, we were at a second Ritz Carlton called Ritz Carlton Back Bay or something like that. The choice of names was odd considering the Ritz Boston Commons was the name used for the property not actually located on Boston Commons. Apparently, this confusion happened so frequently that the staff was trained to assume the mistake and they were armed with pre-printed direction cards with instructions on how to get from one hotel to the other! I suspect Ritz Carlton had the same feeling as the Kimpton Hotels: no harm, no foul if the confusion is related to hotels in the same group.

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