IP Tech Knowledgy

A longstanding business suffers harm when a new entity with grand plans and a big marketing splash decides to start using its trademark.  This concept of “reverse confusion” is a problem because the prior —though smaller —user is unable to control how its brand is perceived, even though it has superior rights under trademark law.  The prior user, even if it has not registered its trademark, can assert its “common law” trademark rights to stop any subsequent user that is selling similar goods and services in the same territory.  The dilemma is whether this superior rightsholder has the finances to fight the larger infringer if the infringer fights back.  This issue has recent pop culture interest because Megan Markle chose the phrase AS EVER for her brand, when a prior clothing designer had been using the name for many years.  The reverse confusion issue is whether the new powerful entrant’s brand and offerings —like Ms. Markle’s —is likely to confuse consumers “in reverse,” and have them believe that the longtime purveyor is infringing on the new boisterous entrant to the marketplace.  Ms. Markle’s peril is a good opportunity for businesses thinking of new brands to consider – and research -- whether they may fall into the trap of reverse confusion when rolling out a new brand that may dispossess a current small user of its control of its market.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com