Multi Time Machine (“MTM”) sued Amazon.com for trademark infringement, claiming that when potential customers searched for MTM products on Amazon.com’s website, search results appeared for other products as Amazon.com does not sell MTM products. MTM claimed that this created “initial interest confusion” such that, although the potential customer was looking for an MTM watch, it would instead be introduced to a competitor’s product and perhaps buy that instead. Although any actual confusion over what product is being sold should dissipate as soon as the potential customer sees the results, the Ninth Circuit has long recognized that the alleged “bait and switch” of enticing a consumer in by advertising one brand only to show it another brand instead is actionable trademark infringement pursuant to the Ninth’s Circuits somewhat unique “initial interest confusion” doctrine.

MTM’s claims against Amazon.com were initially dismissed by the trial court, which found that no reasonable consumer could be confused when confronted with a list of other products that clearly were not MTM’s products. MTM appealed. On July 6 of this year, the Ninth Circuit reversed the trial court and found that MTM had a colorable claim for trademark infringementthat should go to the jury, relying on initial interest confusion, because a “jury could infer that users who are confused by the search results are confused as to why MTM products are not listed” and Amazon’s competitors return results that simply state the branded product is not available. In dissent, Judge Barry Silverman cited to an old “Saturday Night Live” skit:

“The scene is the Olympia Restaurant, Chicago, January, 1978. Dan Aykroyd is manning the grill, Bill Murray is working prep, and John Belushi is up front taking orders. A customer, Jane Curtin, yells to the grill: “Cheesborger, cheesborger.” Curtin then orders a Coke. Without looking up, Belushi replies: ‘No Coke, Pepsi.’

Pause it right there.

Would anyone seriously contend that the diner violated Coke’s trademark by responding to the customer’s order that it doesn’t carry Coke, only Pepsi?”

But imagine how confused MTM must now be when last week, the Ninth Circuit reversed itselfon the same record, and upheld the trial court’s dismissal! Judge Silverman is now the author of the majority opinion, and although he does not abandon initial interest confusion, he certainly weakens its viability. As held by the (new) majority opinion: “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.” Now, the Ninth Circuit finds that such a reasonable consumer is not likely to be confused as to what it is being shown even if it searched for a product that Amazon.com does not sell.

Given the interest of many in the viability of this doctrine, to say nothing of the stakes involved for online retailers, and the seriatim 2-1 opinions, the likelihood of en banc review by 11 Ninth Circuit judges or even Supreme Court review is high. As the customers in the fictional Olympia Restaurant used to complain, this one needs to be cooked some more.