Ninth Circuit Provides Roadmap for Reverse Confusion Claims

On July 7, 2017, the Ninth Circuit issued a decision clarifying issues related to pleading and proving reverse trademark confusion claims.

Marketquest Group, Inc. sued BIC over use of the phrase "The WRITE Pen Choice for 30 Years" based on Marketquest's rights in the mark "The Write Choice." The district court granted BIC's motion for summary judgment, holding that although there was some likelihood of confusion, further analysis was unnecessary because fair use provided a complete defense to Marketquest's infringement claims.

On appeal, the Ninth Circuit addressed several questions. First, Marketquest argued that this was a reverse confusion case (where consumers dealing with a smaller senior user believe they are dealing with a larger junior user). BIC argued that Marketquest's complaint did not adequately plead reverse confusion. The Ninth Circuit held that reverse confusion is not a separate claim that needs to be specifically plead, as long as reverse