F OR P UBLICATION



### UNIT E D ST AT E S CO URT O F APPE AL S FO R T H E NINT H CIRCUIT

M U L T I T I M E M A C H I

N E , I N C ., Plaintiff-Appellant

,

v

.

A M A Z O N

. C O M , I

N C .; A M A Z O N S E R V I C E S , L L C,

Defendants-Appellees

. N o. 13-55575

D.C. No. 2:11-cv-09076- DDP-MAN

OPI NI ON

A ppeal from the United States District Court for the Central District of California Dean D. Preg erson, District J udg e, Presiding

Arg ued and Submitted April 9, 2015—Pasadena, California

F iled J uly 6, 2015

B efore: B arry

G. Silverman and Carlos T. B ea, Circuit J udg es and Gordon J . Quist, * Senior District J udg e.

Opinion by

J udg e B ea; Dissent by

J udg e Silverman

* T h e Ho n o rab le Go rd o n J

. Q u i st, S en io r D istrict J u d g e f or th e U .S. District C o u rt f

o r th e W estern D istrict o f Mich ig an , sittin g b y d esig n atio n

.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 2

SUMMARY * *

Tradem ark

The panel reversed the district court’s summary judg ment in a trademark infring e ment a ction under the L anham A ct ag ainst online retailer Amaz o n.com.

Multi Time Machine, I nc., manufacturer of MTM Special Ops watches, alleg ed that Amaz on’s website infring ed its trademark because of the manner in which the we b site responded to a shopper’s search request for the watches. The panel h el d that a jury could find that Amaz on had c reated a likelihood of confusion unde r a n “initial interest confusion” theory by responding to a search request with a pag e showing “MTM S p e cial Ops” three times a bove a search result display ing s imilar w atches manufactured b y MTM’s competitors.

Dissenting

, J u dg e Silverman w rote that because Amaz on’s search re s u l t clearly labeled the name a nd manufacturer of each product offered for sale a nd even inclu d ed photog raphs of the items, no reasonably prudent shopper a ccustomed to shopping online would likely be confused as to the source of the products.

** T h is su m m ary co n stitu

t es n o p ar t o f t h e o p in io n o f th e co u rt. It h as b een p rep ared b y

co u rt staf

f f o r th e co n v en i en ce o f

th e read er.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 3

COUNSEL

Eric L evinrad (arg

u ed) and Ry an Stonerock, W olf

, Rifkin, Shapiro, Schulman, & Rabkin, L L P, L os Ang eles, California; J ef f rey Cohen, Millen, W hite, Z elano & B r anig an, P.C., Arling ton, Virg inia, for Plaintiff-Appellant.

Marc C. L evy (arg

u ed) and Kathry

n F eiereisel, F aeg r e B aker Daniels L L P, Denver, Colorado, for Defendants-Appellees.

OP INION

B EA, Circuit J udg e:

W e are c alled upon to determine w hether the operation o f

a retailer’s website infring es a trademark b e c a u s e of the

manner in which it responds to a shopper’s search request for the trademarked g o ods. W hat the website’s response states, tog ether with what its response d oes not stat e , d etermines whether its re s p o nse is likely to cause c onfusion. I f confusion results f

rom the website’s response, there may be trademark infring ement.

MTM Special Ops watches are hig h

- e n d, military sty le watches manufactured by Multi-Ti m e Machines, I nc. (“MTM”). Online retailer Amaz on.com (“Amaz on”) does
not carry MTM w a tches. I f her brother mentioned MTM Special Ops watches, a frequent Amaz o n shopper mig ht try to purchase one for h im throug h Amaz on. I f she w e r e to enter “MTM Special Ops” a s her search request o n the Amaz on website, Amaz on would respond wi t h its pag e showing MTM Special Ops ( 1) in the search field ( 2) “MTM Specials O ps” ag ain

— in q uotation marks—immediatelyM U L T I T I M E M A C H I N E V

. A M

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. C O M 4

below the search field and (3 ) y et ag ain in the phrase “Relate d S e a rches: MTM special ops watch ,” all before stating “Showing 1 0 Results.” 1 What the website’s response will not state is that Amaz on does not carry MTM products. R a t h e r, below the search field, and b elow the second a n d third mentions of “MTM Special O ps” noted above, the site will display aesthetically similar, multi-function watches manufactured by MTM’s competitors. The shopper will see that L uminox and Chase-Durer watches are offered for sale, in response to her MTM query

.

MTM asserts the shopper mig ht b e confused into thinking

a relationship ex ists between L uminox and MTM. A s a result of this initial c onfusion, MTM a sserts she m i gh t l o ok into

1 Ou r recitatio n o f th e f

acts, an d o u r d ecisio n , are b ased o n th e ev id en ce

su b m itted b elo w

. Ho w ev er, w e m ay t ak e j u d icial n o tice of f acts w h ich are p u b licly av ailab le an d “ n o t su b j ect to reaso n ab le d isp u te in t h at [th ey are]

. . . cap ab le of accu rate an d read y d eterm in atio n by reso rt t o so u rces

w h o se acc ur acy can n ot reaso n ab ly b e q u estio n ed .” S ee Da n iels-Ha ll v. Na t’l Ed

. Ass’n
, 6 2 9 F.3 d 9 9 2
, 9 9 8 –9 9 9 (9 th Cir. 2 0 1 0 ) (citin g Fed

. R. Ev

. 2 0 1 ). A m azo n ’ s w eb site is s u ch a so u rce. A s o f J u n e 2 6, 2 01 5
, A m azo n h o sts a static w eb p ag e w h ich states th at “ A t A m azo n .co m , w e n ot o n ly h av e a larg e co llectio n o f m tm sp e c i a l o p s w atch p ro d u cts [w h ich

, of

co u rse, is f

latly u n tru e], b u t also a co m

preh en siv e set o f rev i ew s f ro m ou r

cu s t o m ers. B elo w w e’ v e s elected a s u b set o f m

tm sp ecial o p s w atch
p r o d u cts an d th e co rresp o n d i n g rev iew s to h elp y o u d o b etter researc h

, an d ch o ose th e p ro d u ct t ha t b est su its y o u r n eed s.” A m azo n , h t t p ://w w w .am azo n .co m

/g p /f eatu re.h t m l ?i e = U TF 8 & d o c I d = 1 0 0 1 9 0 9 3 8 1

. As o f t h e sam e d ate, w

h en an A m azo n sh o p p er search es “ m tm sp e c i a l

o p s,” u n d er th e s earch q u e r y p l a y b a ck h e w ill see “ 9 resu lts f o r ‘ m tm sp ecial o p s.’ ” A m azo n , h ttp ://w w w .am azo n .co m

/s/ref =n b

_ sb

_ n oss_ 2 ? u rl=search

- alias%3 D ap s& f i eld

- k ey w o rd s=m tm +sp ecial+o p s. T h o u g h

u n n ecessary to o u r resu lt, w e th in k th at a j u ry m i g h t f in d th at th ese p ag es p r o v i d e in sig h t as to d ef

en d an t s’ in t en t to co n f

u se (p

. 1 8

– 1 9
, in

fra ) an d th u s g iv e rise to an ev en g re a t e r l ik elih o o d o f co n f u sio n th an th e earlier f o rm at u sed b y

A m azo n

.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 5

buy ing a L uminox w a tch, rather than junk the quest altog ether and seek to buy an MTM watch elsewhere. MTM
asserts that A maz o n’s use of MTM’s trademar ked name is likely to co n f

u se buy ers, who may ultimately b uy a competitor’s g oods.

The district c o urt found Amaz on’s use o f MTM’s trademark created no likelihood of confusion as a matter o f law. B ut w e think a jury could find that Amaz on has created

a likelihood of confusion. W e therefore reverse the dis t rict court’s g rant of summary judg ment in favor of Amaz on.

F acts and P rocedural History

F ounded in 1992, MTM manufactures and markets watches under various b rand names, including MTM, MTM Sp e c i al Ops, and MTM Military O ps. MTM holds a reg istered trademark in “MTM SPECI AL O P S ” 2 for timepieces. MTM sells its watches dir ectly to customers, throug h various distributors and retail e r s , and on military bases. MTM markets its watches to men 22–55 y ears of ag e who are drawn to rug g ed, military -sty le o utdoor p roducts. Thinking to cultivate and maintain an i mag e as a hig h-end,

ex c lusive b ra n d

, MTM decided n ot to sell its watches to Amaz on for resale. Nor does MTM authoriz e its distributors
to sell MTM watches on Amaz on. MTM’s ag reements with its distributors require them to seek MTM’s permission to sell MTM’s products any

where but at their own retail sites.

Amaz on claims to offer “Eart h ’s B ig g est Selection o f products,” products which include watches manufactured b y

2 W e ref er to th e v a r i o u s cap italizatio n s of th e trad em ark as “ MT M Sp ecial Op s” h erein

.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 6

various competitors of MTM. Amaz on users who search for “MTM Special Ops” on Amaz on’s site are routed to a screen which shows the p h rase “MTM Special Ops” in the query field (the “ search query play back”); ag a in immediately below

as “MTM Special Ops” with quotation marks, directly below the search line; and i m m ediately ag ain after with the words “Re l a ted Searches.” After the three iterations of MTM’s trademark the screen lists search r esults, i ncluding watches manufactured by MTM’s competitors and listed by name. Customers c annot p u rchase t h e w atches from the search results pag e, but must navi ga t e to the “ product d etail” pag e by clicking on a particular search r esult. Once the customer has clicked on a particular r e sult, he will see the p ar t i c u lar product’s brand name and the product title, which also shows the b rand n ame (e.g

., L

uminox ). On t h e t o p of the product detail pag e, the customer’s initial i n quiry

, “MTM Special Ops,” will still appear in the search field. Nothing on either of the pag es states th a t Amaz on does not c arry MTM products. Not so the websites o f Amaz on’s competitors B uy .com and O verstock.com. They clearly announce that no search results match the “ MTM Special Ops” query and those websites do not route the visitor to a pag e with both MTM’s trademark “ MTM Specia ls Ops” repeatedly at the top a nd

c o mpetitors’ watches b elow. Their pag es show the sear c h
query play

back but then forthrig htly state that no results for the “MTM Special Ops” s ea r ch query w ere found, and then list competitors’ products.

MTM’s competitors’ pr o d u cts appear in the Amaz on search query response in p art b e c ause Amaz on’s s e arch algo r ithm responds to its customers’ behavior u sing a B ehavior B ased Search technolog y (“B B S”), which uses data about what customers v iew and purchas e after searching certain terms. Amaz o n does not prog ram the t e rm s; theM U L T I T I M E M A C H I N E V

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. C O M 7

function responds so l e l y to customer behavior. I f enoug h
customers search for a certain key word, “X,” and then look
at o r purchase another product “ Y
, ” even if X and Y are not obviously related, f

uture customers who search for X m a y receive search results including Y. B ut the B B S function is

n o t solely responsible for the search results. The r esults list also includes matches based on a search of terms on Amaz on’s pag es—for insta n c e , streaming video of a show called Special Ops Mission may be c alled up. W hether a particular result appears b ecause o f B B S or a traditional search of matching terms is not evident from the matches, a nd the relevant products (which are based o n search terms) a nd recommended products (based on B B S) are ming led tog ether.

MTM sued Amaz on, alleg ing that Amaz on had infring ed MTM’s trademarks in violati o n of the L anham Act. MTM
soug h t injunctive relief barring use o f t h e trademark a nd damag es. On Amaz on’s motion, the di s trict court g ranted
summary judg ment to Amaz on. MTM timely appealed.

Standard of

Review

W e review de novo the district court’s g rant of summary judg ment, and must c onsider the e v i d e n c e in the lig ht most favorable to the nonmovi n g p a r t y

. S urfvivor Media, Inc. v

. Survivor Prods

., 406 F .3d 6 25, 630 (9th Cir. 2 005). This
court may affirm the g rant of summary judg ment on any g round t h a t finds support in the record. Karl Storz Endoscopy Am., I

nc. v. Surgical Technologies, Inc
., 285 F .3d 848, 855 (9th Cir. 2002).M U L T I T I M E M A C H I N E V

. A M

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. C O M 8

Discussion

Under the L anham Act, a defendant infring es a trademark when the defendant uses the mark in c ommerce in a manner likely to cause confusion as to a g ood’s source. Trademark infring ement also occurs w h e n the trademark’s use in

commerce is likely to cause confusion as to the affiliation, association, or a

pproval of t h e t r ademark holder with the trademark user. 3 A defendant who infring es another’s trademark is liable f

o r damag es and subject to i n j unction. 15 U.S.C. §§ 11 1 4 (1)(a), 1125(a)(1). Put another way , a d e f e ndant w ho creates likelihood of confusion by usi n g another’s mark has infring ed the mark. Playboy Enterprises, Inc. v

. Netscape Commc’ns Corp.
, 354 F .3d 1020, 1024 (9th Cir. 2004). 4

3 “[A ]n y p erso n w

h o sh all, w ith o u t co n sen t o f th e reg istran t, “ u se in

c o m m erce an y rep ro d u ctio n , co u n terf eit, co p y , o r co lo rab le im itatio n o f

a reg i stered m ark in co n n ectio n w ith t h e sal e , o ffe r in g f

o r sale, d istrib u tio n , o r ad v erti sin g o f an y g o o d s o r serv ices o n o r in co n n ectio n

w ith w h ich su ch u se is lik ely to cau s e co n f u si o n , o r to cau se m istak e” is liab le f o r d am ag es, an d th e reg istran t m ay b e en titled to in j u n ctiv e relief

. 1 5 U.S.C. § 1 1 1 4 (1 )(a). A n y p erso n w

h o “ u ses in co m

m erc e a ny w o rd

, term , n am e, sy m

b o l, o r d ev i ce . . . w h ich is lik ely to cau se co n f

u sio n

. . . as to th e af

f iliatio n , co n

n ectio n , o r asso ciatio n of su ch perso n w ith an o th er p erso n , o r as t o th e o rig in

, sp o n so r s h ip

, o r ap p ro v al o f h is o r h er g o o d s,

serv ices o f

co m m ercial activ ities” is also su b j ect to in j u n ctio n an d liab le f o r d am ag es to o n e lik ely

to b e d am ag ed . 1 5 U.S.C. § 1 1 2 5 (a)(1 ).

4 In Pla yb o y , d ef en d an t search en g in e Netscap e req u ired ad u l t- o rien ted

w eb sites w

h o p u rch ased ad v ertisin g f ro m Netsca p e to lin k th eir ad v ertisem en t s to search k ey w o rd s “ play

b o y ” an d “ p lay

m ate,” trad em ark s

o f P lay b o y En terp rises (“ P EI”). 3 54 F.3 d at 1 0 2 3

. Wh en Netscap e u sers search ed th e term s, th ey w o u ld b e p resen ted w ith b an n er ad s f o r n o n

- P EI

o p e r a t e d w eb sites th at said “ click h ere” an d ro u ted u sers to ad v ertisers’

w eb sites. Id

. PEI su e d N e t s cap e f o r L an h am A ct v io latio n s, an d th e d istrict co u rt g ran ted su

m m ary j u d g m en t i n f

av or o f d ef

en d an t s. Id

. T h isM U L T I T I M E M A C H I N E V

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. C O M 9

A defendant can create likelihood of confusi on, a nd thereby infring e the trademark, th r o u gh a ty pe of confusion referred to as “initi al i n t erest confusion.” I nitial interest confusion occurs not where a customer is confused about the

source of a product at the time of purchase, but earlier in the

s h opping process, if “customer confusion

. . . creates i n i t i al interest in a competitor’s p r oduct.” Id

. a t 1025. Even if that confusion is dispelled before an a c tual sa l e o c curs, initial interest conf

u s i o n still c onstitutes trademark infring ement because it “impermissibly c apitaliz es on the g oodwill associated with a mark and is therefore a ctionable trademark infring ement.” I

d

.

A. Likelihood of

Conf usion

This court c onsiders eig ht non-ex haustive factors, known

as the Sleekcraft factors, to d etermine whether a t r a demark

use g ives rise to a likelihood of confusion: (1) streng th of the mark(s); (2) prox imity o r relatedness of the g oods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels; (6) deg ree of consumer care; (7) the defendants’ intent; and (8) likelihood of e x pansion. Network Automation, Inc., v. Advanced Sys. Concepts, Inc.
, 638 F .3d 1137, 1 145 (9th Cir. 2011) (citing AMF Inc. v. Sleekcraft Bo a t s , 599 F .2d 341, 348–49 (9th Cir. 1979)). As the Network A ut o m a t ion court e x plained, in the c ontex t o f internet commerce, thoug h likelihood of confusion mig h t be shown where “consumers saw ba n n e r advertisements that

were ‘confusing ly labeled or not labeled at all’.

. . . cl e ar labeling ‘mig h t e l i minate the likelihood of c onfusion.’”

co u rt rev ersed

. We f

o u n d th at in itial in terest co n f u sio n su pp o r ted an in f rin g em en t th eo r y e v e n if u sers realized th ey w ere n o t at a P EI site b ef o re m ak in g a p u rch ase. Id . at 1 0 25 , 1 0 2 6

– 2 9

.M U L T I T I M E M A C H I N E V

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. C O M 10

Network Automation
, 6 38 F .3d at 1153–54 ( c iting Playboy

, 354 F .3d at 1023, 1030 n.43). 5

Network Automation and P layboy addressed the unauthoriz ed use of a trademark to sell advertising key words

5 In Netwo rk Au to ma t io n , p lain t if f Netw o rk A u

to m atio n an d d ef

en d an t A d v an ced Sy stem s Co n cep ts b o th so ld j ob sc h e d u lin g an d m an ag em en t

so f t w are. 6 3 8 F .3 d at 1 1 4 2

. Netw o rk A u to m atio n ad v ertised its p ro d u ct b y p u rch asin g certa i n k ey w ord s—in clu d in g reg istered trad em ark s b elo n g in g to A d v an ced Sy stem s —w h ich

, w h en t y p ed in to v ario u s search

en g in es, pro d u ced a resu l t s p a g e th at in clu d ed Netw ork A u to m atio n ’ s

w e b s ite “ w

w w .Netw o rk A u to m atio n .co m ” as a lab eled

, sp o n so red lin k

. Id

. A d v an ced S y s t e m s a lleg ed v io latio n o f th e L an h am A ct an d m ov ed f o r a p relim in ary in

j u n ctio n

. Id

. at 1 1 4 3. T h e d istrict co u rt g ran ted a p relim i n ary in

j u n ctio n to A d v an ced Sy stem s, an d N e t w o rk A u t om atio n ap p ealed

. Id

. On ap p eal, th is co u rt rev ersed an d v acated th e p relim in ary in j u n ctio n

. T h is co u rt co n sid ered t h e eig h t S leekcra

ft f acto rs an d h eld th at th e d istrict co u rt h ad n o t w eig h ed th e f acto rs f l ex ib ly an d th at “ [b ]ecau s e th e lin ch p in o f t rad em ark i n f

rin g em en t is co n su

m er co n f u sio n , th e d istrict

co u rt ab u sed its d iscretio n i n en terin g th e in j u n ctio n .” Id

. at 1 1 5 4

. T h e

co u rt h eld th at b ecau se “ th e s i n e q u a n o n o f trad em ark in f rin g em en t is

co n su m er co n f u sio n , w h en w e ex am in e in itial in terest co n f u sio n , th e

o w n er o f th e m ark m

u s t d em o n strate l ik ely co n f u sio n , n ot m ere d iv ersio n .” Id

. at 1 1 4 9

. A m azo n co n ten d s th at b ecau se “ m ere div ersio n ” d o es n ot co n stitu

te in itial in terest co n fu sio n , th e d o ctrin e is i n ap p licab le
to th e in t ern et. H o w ev er, w h eth er cu sto m ers are m erely d iv erted is a q u estio n o f f

act. T h is co u rt p ro p erly co n sid ered w h eth er th e f

acts f av o red A d v an ced Sy stem s i n Netwo r k Au t o ma t io n b ecau se a p relim in ary in j u n ct i o n r eq u ires “ th e m o v in g p arty [th ere, th e p lain tif f alleg in g in f rin g em en t] d em o n strate a f ai r ch an ce of s u ccess o n th e m erits or q u estio n s serio u s en o u g h to req u ir e l i t i g a t io n .” Arc o f Ca l. v. Do u g la s , 7 5 7 F.3 d 9 7 5
, 9 9 3 (9 th Ci r

. 2 0 1 4 ). T h eref o re, th e Netwo rk Au to ma tio n

co u rt pro p erly co n sid ered th e w eig h t o f t h e ev id en ce to d e c i d e w

h eth er A d v an ced Sy stem s h ad a f air ch an ce o f

su ccess o n th e m erits. Here, w e

are n o t task ed to d eterm in e w h eth er M T M is lik ely to su cceed

, n o r to

co n sid er th e w eig h t o f th e ev id en ce. A s th is is an ap p eal f ro m a su m m ary j u d g m en t, w e m

u st d ecid e w

h eth er th ere is a g en u in e triab le issu e of

m aterial f act.M U L T I T I M E M A C H I N E V

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t o s e a rch eng ines, not the use of a trademark to se l l

c ompetitors’ products. However, we think that in the sa l e contex t, just as the “labeling a nd appearan ce of the advertisements as they a p p ear o n the r esult pag e includes

more than the t e x t of the a dvertisement, and must be considered as a whole, ” here the labeling of search r esults which feature competitors’ products is important. Network Automation
, 638 F

. 3d a t 1154. B ecause of its importance, we first address labeling

—which w e find g ives rise to a g enuine issue of fact—and then turn t o t h e traditional Sleekcraft factors.

1. Labeling

MTM submitted an ex p er t report that stated that the search results on Amaz on are “ ambig uous, misleading

, a nd confusing .” Dist. Ct. Order, 9 26 F .Supp.2d 1130, 1 141 (N.D. Cal. F e b. 20, 2015). The d istrict court found that the ex pert analy sis showed only that customers could be confused about why they receive certain search results, but that there was no evidence that Amaz on u sers were likely to be c onfused as to the source w ho manufactured the competing g oods W e disag ree. A jury could inf e r that users w ho a

re confused b y the search results are confused as to why MTM products are
not listed. Unlike its compe titors B uy .com a nd Overstock.com, Amaz o n does not forestall any confusion b y informing customers who are searching “ MTM Special Ops” that Amaz o n does not carry any such products.

A jury could infer that users who a re c onfused b y the search result will wonder whether a competitor has acquired MTM or is otherwise affiliated with or approved by MTM. See Brookfield Commc’ns, I nc. v. W est Coast Entm’t Co r

p

. , 174 F .3d 1036, 1057 (9th Cir. 1999). This is especially trueM U L T I T I M E M A C H I N E V

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as to a brand like MTM, as many lux ury brands w ith d istinct marks are produced by manufacturers o f lower-priced, betterknown b ra nds—just as Honda manufactures Acura automobiles but sells Acura automobiles u nder a di s t i n ct

m a rk that is marketed to w ealthier purchasers, and Ti m e x manufactures watches f

or lux ury fashion houses Versace a nd Salvatore F errag amo. L ike MTM, L um i n o x manufactures lux ury watches, and a customer mig ht think t h a t M TM a nd L uminox are manufactured by the same parent company

. The
p o ssibility of initial interest confusion here is likely m u c h hig her than if, for instance, a customer using an online
g rocery website ty

ped “ Coke” and only Pepsi products were

r e t urned as results. No shopper would think that Pepsi was simply a higher end version of Coke, or that Pepsi h ad acquired Coke’s secret recipe and started selling it under the Pepsi mark. 6

I n any event, even as to ex pensive g oods—for instance, pianos sold under a mark very similar to the famous Steinway and Sons b rand’s mark—the issue is not t h a t a b uy er mig ht buy a p iano manufactured by someone other than Stein way th i nking that it was a Steinway

. The issue is that the defendant’s use of the mark would c ause initial int erest

6 T h e d issen t also m en tio n s Co k e an d P ep si in co n j u n ct i o n w i t h th e lab elin g in q u iry

, an d J o h n B elu sh i ’ s S a tu rd a y Nig h t Live “ ch eezb o rg er” ref rain —“ No Co k e. P ep s i.” Ho w ev er, Belu sh i’ s lin e is an alo g o u s to th e

m essag e on Ov ersto ck ’ s an d B u y ’ s w eb sites, w h ich state th e eq u iv ale n t

o f “ No Co k e” rath er th an s i m p l y in u n d atin g t h e sh op p er w ith im ag es of P ep si. T h e d issen t ack

n o w led g es t

h at a retailer w

h o o f f ers co m p etito rs’
p ro d u cts fo r s a l e, w ith o u t m en tio n in g th at h e d o es n o t carry a b ran d
req u ested b y a cu sto m er, is “ so rt o f l ik e w h at h ap p en s w

h en y o u o rd er a Co k e, an d are clearly to ld th at th ey o n ly h av e P ep si.” Dissen t at 2 3. Bu t it is o n ly so rt o

f l ik e th e B elu sh i scen ario

, b ecau se u n lik e B elu sh i’ s “ No Co k e,” A m azo n

d o es n o t say

“ No MT M.”M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 13

confusion by attracting potential customers’ attention to buy the infring ing g oods because of the trademark holder’s hardwon reputation. Brookfield

, 174 F .3d at 1063 (citing Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons , 523 F .2d 1331, 1341–42 (2d. Cir. 1975)).

A jury could infer t hat the labeling of the search results, and A maz on’s failure to not i fy c u stomers that it does not have resu l ts that match MTM’s mark, g ive rise to initial interest confusion. I f so, a j u r y mig ht find that Amaz on customers searc h i n g for MTM p roducts are subject to more than mere diversion, since MTM is not required to show that
customers are likely to be confu s e d a t the point o f sale. Playboy , 354 F .3d at 1025.

W e ag ree with the d istrict court’s conclusion that the product details for competitors’ itemiz ed products were clearly labeled, but we find that the c larity of the search results pag e at issue is open to dispute. W e m u s t not

s u b stitute our determination of what constitutes clear labeling , nor its importance, for that of a jury

.

2. Sleekcraft

F actors

The S leekcraft “eig ht-factor test for likelihood o f confusion is pliant. Some facto r s a r e much more important than others, and t h e relative importance of each individual factor will be case-specific.” Brookfield

, 174 F .3d at 1054. On a motion for summary judg ment, c ourts may consider whether any of the Sleekcraft factors g ive rise to a g enuine issue of fact. Fortune Dyn a m i c , Inc. v. Victoria’s Secret Stores B rand Mgmt., Inc.
, 618 F .3d 1025, 1031 (9th C i r. 2010). A court may be “far from certain that consumers were likely to be confused [ and still be] confident that the questionM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 14

is close enoug h that it should be answered as a matter of fact by a jury

, not as a matter of law by a court.” Id . I f there is a g enuine issue of fact as to any of the facto r s , t h ere is more likely to b e a g enuine issue o f f ac t as to whether there is likelihood of confusion. To avoid summary judg ment a plaintiff need n ot show that every factor weig hs in his favor, only to make a strong showing a s to some of them ( thoug h we note that, b ecause the factors are not e x h a u stive, a p laintiff could p resumably s u rvive summary judg ment by adducing evidence of likelihood of confus i o n t hat did not f a ll within one of the factors). Surfvivor , 406 F .3d at 630.

Mindful that our analy sis must be tailored to this case, we discuss below the five S

leekcraft factors we deem r e levant to resolution o f the question of summary judg ment: the streng th of the mark, relatedness/prox imity of the g oods, evidence o f

a c t u a l confusion, d efendant’s intent, and the deg ree of c a r e

e x e r cised b y purchasers. Three of the Sleekcraft f a ctors are irrelevant: similarity o f marks, market i n g channels, a nd likelihood of ex pansion. As to similarity of marks, Amaz on is using MTM’s mark, not another mark in its d isplay o f “search results.” A s to marketing channe ls, both MTM a nd Amaz on sell watches on the internet, which is too widespread

a market to af

f e ct the likelihood of confusion a mong customers. The p ossibility of ex p ansion is irrelevant since MTM and Amaz on both already sell h ig h-end timepieces, a s discussed b elow unde r t he heading “ relatedness of the
g oods.”

W e find that three of the remaining five relevant f actors appear to weig h in favor of a finding of a likelihood o f confusio n , a n d we address these first. W e hold that it is the
p rovince of a jury to determine how heavily each of t h e s e factors should weig h.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 15

a. Strength of

the Mark

A mark’s streng th is a measure o f how uniquely identified it is with a product or service, and therefore how deserving o f trademark protection. Fortune Dynamic
, 618 F .3d at 1032. Two ty pes of trademark streng th are relevant: commercial and c onceptual. Commercial streng th r e f e r s to a mark’s
recog nition in the marketplace, t h a t is, how widely
recog niz ed th e m a r k is b y customers. I d

. at 1034. Neither MTM n or Amaz on p resented evidence of MTM’s

co m m e rc i a l streng th. W e do not consider it; we turn to consideration of conceptual streng th.

“A mark’ s conceptual streng th depends larg e ly on the obviousness of its connection to the g ood or service to which it refers. Th e l e s s obvious the connection, the strong er the mark, and vice versa.” Id

. at 1032–33. Conceptual streng th is considered a long a continuum, and in this c i r cuit, marks
may b e classified as falling into one of f ive categ ories, from

co n c e ptually weak to conceptually strong : g eneric, descriptive, sug g estive, arbitrary

, or f anciful. Id

. at 1033. W h ether a mark is descriptive or s u ggestive is a q uestion o f fact. Id

. at 1034. I n an i n f ri n ge ment suit, “the distinction [ between a descriptive and sug g estive mark] is important

. . . because if the mark is sug g estive, there is a strong er likelihood that a jury could reasonably concl u d e t h at the ‘streng th of the mark’ f

actor f avors the [ p laintiff] .” Id. Here, the district court found that “Amaz o n’s evid e n c e is p ersuasive in showing that the marks are not strong ; they are a t best
sug g estiv e, a

nd more likely d escriptive.” 926 F .Supp.2d at 1139. However, the p hrase “MTM Special Ops” requires “a mental leap from the mark to the p roduct,” because the phrase does not ex pressly r efer to w atches. F o rtune Dynamic
, 618 F .3d at 1034. I ndeed, b y evoking elite military for c e sM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 16

(“Special O ps”), the go o d s sug g e sted by the phrase are a s likely to be protective g ear, b inoculars, weapons, or boots a s they are watches

. A jury could find that the mark is

s u g g e stive and conceptually strong because it does n o t

o b viously refer to watches, or that it is merely descript i v e because the watches are made in a military sty le. Either way , the weig ht o f the evidence is a q uestion of fac t , a n d there is

a g enuine issue of fact as to the conceptu a l s treng th of the mark. As in Fortune Dynamic
, “a jury should as s e s s the conceptual streng th of [ plaintiff’s] mark in the first instance.” 618 F .3d at 1033.

b. Sim ilarity of

the G oods

L ike MTM, A maz on sells spec ializ ed, military

- sty le watches. The similarity o f t h e goods Amaz on is selling weig hs in favor of a finding of infring em e n t

. T h e district
court cited Network Automation for th e proposition that “thoug h the products were interchang ea b le

. . . that fact would ‘become less important if advert i sements a re clearly labeled or consumers e x ercise a hig h d eg ree o f care, because rather than be i n g misled, the consumer would merely be confronted w ith choices among similar p r oducts.’” 926 F .Supp.2d at 1137 (citing Network Automation
, 638 F .3d at 1150). The district court found “ the same is true in this case; althoug h Amaz on and MTM both sell wa t ch e s, which a re identical products, this is misleading only if the consumer is confused, not if the consumer si m ply has clearly marked

o p t i o n s.” Id

. This conclusion assumes that Amaz on customers will n o t be confused, and that the options a re clearly marked, which are questions of fact as to which both parties submitted evidence. The facts of this case a re disting uishable from Network Automation
, where the claimant trade m a rk holder’s products were display edM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 17

along side the alleg ed infring ers’ products, thereby presenting “clearly marked options.” MTM watches are n o t display ed
at all on the Amaz on website. W h ether customers will believe the options on Amaz on’s pag e, which do n ot include MTM products, are clearly marked as having no a ssociation with, or approval by

, MTM, and whether they will be confused, is an open question, and its answer d o es not render the identity of the g oods here moot. Rather, a jury could find that it weig hs in favor of finding likelihood of confusion.

On s u m m ary judg ment, the court may not make assumptions about the sophistication of would-be purchasers. Fortune Dynamic
, 618 F .3d at 1030. Some member s o f MTM’s targ e t demog raphic, men of 22–55 y ears of ag e w ho like military -sty led, rug g ed products, may n ot be f requent internet shoppers. Such purchasers “may incorrectly believe that [d e f endant] licensed [ the mark] from [ plaintiff]

. . . . Other consumers may simply believe th a t [ defendant or the manufacturers it features] boug ht out [ p laintiff] , or that they

are r elated companies.” Brookfield Commc’n, Inc. v

. W e st Coast Entm’t Corp.
, 174 F .3d 1036, 1057 (9th C i r

. 1999). This is e specially possible here b ecause Amaz on touts itself

as offering “Earth’s B ig g es t Selection of products,” and, a s noted above, manufacturers sometimes market lux ury brands under d istinct marks. Even if f urther internet research could clarify the matter for a customer who w ondered if MTM h ad been acquired or had acquired i t s c ompetitor watch-makers, it is incorrect to c onclude that “ likelihood of confusion ex ists only when consumers are confused a s to the source of a product they actually purchase. I t is

. . . w ell established that the L anham A ct p rotects aga i n s t many other forms o f confusion.” Brookfield

, 174 F .3d at 10 5 7

. Network Au tomation found that on the internet, initial interest confusion is a

n untenable theory where spons o r e d linksM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 18

a p p e a r on search pag es that have “partitioned their searc h results pag es so that the a dvertisements appear in separately labeled sections for ‘ sponsored’ links.’” 638 F .3d at 1154. Here, the c ompetitors’ products are not clearly labele d a s being B B S r es u l t s r ather than key word searches. The similarity of the g oods means that an A maz on customer w ho searches for “MTM Special Ops” and then investig ates watches manufactured by L u minox or Chase-D u re r , even if he later purc h a s e s s u c h a watch without any c onfusion as to its source, w ill have been subject to “confusion

, n ot mere diversi o n

. ” 7 Network A u tomation
, 638 F .3d at 1149. Even thoug h his confusion may be “ dispelled before an actual sale
occurs, initial interest confusion impermissibly capitaliz es on the g ood w i l l associated with a mark and is therefore actionable trademark infring ement. ” Playboy

, 354 F .3d at 10 2 5. Therefore, the similarity of g oods weig hs in favor o f MTM, and a jury

should determine just how much it weig hs in favor of MTM.

c. Def endant’s intent

“A defendant’s intent to c onfuse constitutes probative evidence of likely c o nfusion.” Pla y b o y , 3 54 F .3d at 1028. MTM submitted evidence that Amaz on vendors and
customers had com p l a ined to Amaz on b ecause they d id not understand why

they received certain non-responsive search results when they searched for products that are not carried b y Amaz on. The evidence showed that Amaz on employ ees did
not take action to address the complaints by ex plaining to the public how the B B S function works. One Amaz on employ ee noted that ex plaining B B S to the public mig ht draw

7 A m azo n ’ s ev id en ce th at cu sto m ers d o n o t p u rch ase co m p etito rs’

w atch es af

ter search in g “ MT M SP ECIA L OP S” is ad d ressed b elo w

.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 19

customers’ and vendors’ u nwanted scrutiny to the matter. Amaz on did not disclose to shoppers how its B B S worked.

As in P layboy

, this evide n ce sug g ests, “at a minimum,
t h a t defendants do nothing to alleviate confusion.

. . . Althoug h not definitiv e, t his factor provides some evidence of an intent to c o n f

u s e on the part of defendants.” Playboy

, 354 F

. 3d at 1029. F rom evidence t h a t “Earth’s most customer-centric company ” took n o action o n these complaints, a jury c ould infer that Am a z o n intended to confuse its c u s tomers. W e leave it to a jury to determine, if Amaz on so intended

, h o w important that intent is, a nd we turn to two factors that we think weig h in favor of Amaz on.

d. Evidence of

Actual Conf

usion

W h ere e vidence of actual confusio n is submitted, it is “strong support for the likelihood o f co n f u s i on.” Network Automation
, 638 F .3d a t 1 1 51 ( internal quotatio n marks omitted). B ut actual confusion “ is not necessary to a finding of likelihood of confusion under the L anham Act. I ndeed, proving actual confusion is difficult

. . . a n d t h e courts have often d iscounted such evidence because it was uncle a r o r insubstantial.” Id

. ( internal quotation marks, citation, a nd brackets omitted).

MTM did not submit color a ble evidence o f actual confusion. MTM offered its president’s testimony that he h ad knowledg e of actual confusion. The district court found this testimony was too vag ue to co n s t i t u te evidence. The president testified that someone he had met named Eric said, in reference to Amaz on’s pag e, “it’s confusing

. ” Such testimony d o es no t s u ffice to g ive rise to a g enuine issue o f f a ct, even were such hearsay admissible, as the record d o e sM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 20

not provide support for the speculation that Eric was a potential customer.

Amaz on submitted evidence that purports to show that no customers were confused, be ca use customers who searched for “L uminox ” were 2 1 times a s likely to purchase a L uminox

w a t ch as were customers who searched for “MTM Specia l Ops.” W e do n ot find it surprising that customers w ho search for an item (L

uminox watches ) are more likely to buy that item than customers w ho did not search f or it but searched for another product (MTM watches). B ut i n t h e absence o f evidence of actual confusion, we a g ree that the factor weig hs in favor of Amaz on. However, we a re n ot persuaded that a jury could not view this p urported e v idence of no actual confusion as flawed b e c ause a user researching watches mig ht initially be confused a b out t h e a vailability of MTM watches o nline and so not purchase a L uminox the same d ay

. 8 F urther, some users did search for “ M T M S p e cial Ops” a nd purchase a competitor’s watch the same d ay , which a jury could find probative of some confusion.

8 In resp o n se t o MT M’ s critiq u e th at th e d ata d id n o t f u lly acco u

n t f or

co n su m er b eh av io r, th e d istrict co u rt o p in ed th at “ A m azo n p ersu asiv ely
resp on ds th at th e v alu e o f th e d ata is n ot ab so lu te b u t relativ e; th ere is n o

reaso n to th in k t

h at th o se co n su

m ers s earch in g f

o r L u m in o x w o u ld ex h i b i t d if f eren t b eh av io rs f

ro m th o se search in g f

o r MT M Sp ecial Op s.” 9 2 6 F.Su p p

. 2 d at 1 1 4 0

. Ho w ev er, th e v ery relativ ity o f th e d ata m ak es its

v alu e a q u estio n f

o r a j u ry , w

h o m ig h t d eterm in e th at L u m in o x cu s to m ers

o n A m azo n are d if

f eren t f ro m w o u ld

- b e MT M Sp ecial Op s p u r c h a sers: L u m i n o x cu sto m ers m ak e sam e- d ay p u rch ases becau se th e p ro d u ct th ey

so u g h t is av ailab le o n A m azo n

. MT M Sp ecial O p s cu sto m ers m ay w ait

a f ew d ay s to b u

y a L u m in o x w atch b ecau s e it is n o t w h at th ey so u g h t, b u t th eir in terest in a L u m in o x w atch w as p i q u ed b ecau se th ey w ere u n certain

w h eth er o r h o w

L u m in o x is af

f iliated w i th

o r ap p ro v ed b y

MT M.M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 21

e. Degree of

Care

As to the deg ree of care ex pected of a purc h a s e r , when
g oods are ex pensive, purchasers can be ex pected to ex ercise
g reater c are, thoug h confusion may still be likely

. Network Automation
, 6 38 F .3d a t 1152. MTM’s watches are priced between several h undred dollars to two thousand dollars. The district c ourt did not err in finding that consumers c ould be presumed to use a hig h deg ree of c are in purchasing such watches. Ho w e v e r, in lig h t of our determination that other factors g ive rise to g e nuine issues of fact, we note that a jury
may find that Amaz o n p resented evidence that “same d ay sales” are h ig h for L u minox

. This could be interpreted, by a j u ry , as proof that at least some persons who seek milita r y watches are impulse buy ers w ho do not spend as much time

co m paring products as careful buy ers mig ht. I f so, the jury mig ht accord the price of the watches little weig h t compared
to the oth e r factors. This factor and its relative importance are matters for a jury

.

B. Use in Com m erce

This co u r t has held that use of a trademark as a search
eng ine key

word that trig g ers the display of a competitor’s advertisement is a “ use in commerce” under the L anham Act. Network Auto m a t i on , 6 38 F .3d at 1144–45. Amaz on contends that the user-g enerated search term “MTM Special Ops” is not a use in commerce wi t h i n t h e meaning of the L anham Act. W e hold that the customer-g enerated use of a trademark in the retail search c ontex t is a u se in commerce. As the district c ou r t correctly observed, thoug h Network Automation is disting u i shable because the search eng ines

were selling the use of c ompetitor’s trademarks, Ama z o n’s
p urpose is n ot less commercial just because it is sel l i n gM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 22

wares, not advertising space. Therefore, we decline to affirm the district court on the alternative g r ound that Amaz on’s use is not a use in commerce.

Conclusion

W e are by no means ce r t a i n t h at MTM will be able to prove likelihood of confusion under an initial interest confusion theory

, but we are confident the matter can be determined o nly by resolving g enuine issues of material fact.

REVERSED AND REMANDED.

SI L VERMAN, Circuit J udg e , dissenting :

L i v e ! From New Y

ork! I t’s S aturday Night!

. . . a

nd t h e

s cene is the Oly

mpia Restaurant, Chicag o, J anuary , 197 8

. D a n A y kroy d is manning the g rill, B ill Murray is w orking
prep, and J ohn B e lushi is up front taking orders. A customer, J ane Curtin, walks in and orders two cheeseburg ers. B elushi
y ells to the g rill: “Cheez borg e r, cheez bor ge r.” Curtin then orders a Coke

. W ithout looking up, B elushi replies: “No Coke. Pepsi.”

Pause it rig ht there.

W o uld a ny one seriously c o ntend that the diner v iolated Coke’s trademark by responding to the c ustomer’s order that it doesn’t carry

Coke, only

Pepsi?

Now, fast-forward to the present. A customer g oes online
to Amaz on.com looking f or a certain military

- sty leM U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 23

wristwatch

– specifically the “MTM Special Ops” – marketed and manufactured by Plaintiff Multi Time Machine, I nc. The
customer ty

pes “mtm special ops” in the sea r ch box a nd
presses “enter.” B ecause Amaz on does not sell the M T M Special Ops w atch, what t h e s earch produces is a list, with photog raphs, of several other brands of military sty le watches that A maz on d

oes carry , specifically identified by their brand

names – L uminox

, Chase

- D urer, TAW A TEC, and Modus

– sort of l i k e w hat happens when y ou order a Coke, and a re clearly told that th ey only have Pepsi. T he particular search results pag e at issue is display ed below:M ULTI T IME M ACHINE V

. A MAZON

. COM

24M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 25

MTM broug ht suit alleg ing that Amaz on’s response to a search for the MTM Special Ops w atch o n i t s website is trademark infring ement in violation of the L a n h am Act. M TM contends that A maz o n’s search results pag e cre a t e s a likelihood of confusion, even thoug h there is no evidence of
any actual confusion and e v e n t houg h the o ther b r ands a re clearly identified by name a nd e a ch product is display ed with

a photog r aph. The district court g ranted summary judg ment in favor of Amaz on.

I would affirm. “ The core element of trademark infring ement” is whether the defendant’s conduct “ is likely to confuse customers about the source of the products.” E. & J

. Gallo W inery v. Gallo Cattle Co.
, 967 F .2d 1 280, 1 290 (9th Cir. 1992). B ecause Amaz on’s sear ch r esults pag e clearly labels the n ame and manufacturer o f each product offered for

s ale a nd even includes photog raphs of the items, n o reasonably p rudent consumer accustomed to shopping online would likely b e confused as to the sour c e o f the p roducts. Thus, summary judg ment o f MTM’s trademark claims was proper.

I.

“A lthoug h disfavored in trademark infring ement cases, summary judg ment may be entered when no g enuine issue o f material fact ex ists.” I

d. I ndeed, in several trademark cases,

we have c oncluded that there is no likelihood of confusion a s

a matter of l aw , a n d affirmed the district court’s g rant o f
summary judg ment in favor of the defendant. See, e.g.
, One Indus., LLC v. Jim O’Neal Distrib.

, 5 78 F .3d 1154, 1162–65 (9th Cir. 2009); M2 Software, Inc. v. Madacy Entm’t
, 421 F .3d 1073, 1080–85 (9 t h Cir. 2 005); Surfvivor Media, Inc. v. Survivor Prods.

, 406 F .3d 625, 6 31–34 (9th Cir. 2005).M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 26

To prevail on a claim of trademark infring ement under the L anham Act, “a trademark holder must show that the defendant’s use of its trademark ‘is likely to cause confusion,
or to cause mistake, o r to d eceive.’” Fortune Dynamic, Inc.

v. Victoria’s Secret Stores B rand Mgmt.
, 618 F .3d 1025, 1030 (9th Cir. 2010) (quoti n g 15 U.S.C. § 1125(a)(1)-(a)(1)(A)). “The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused

as to the orig in of the g ood or service bearing o n e o f the marks.” Dreamwerks P rod. Group v. SKG Studio , 142 F .3d 1127, 1129 (9th Cir. 1998). “The c onfusion must ‘be probable, not simply a possibility .’” M urray v. Cable NBC
, 86 F .3d 858, 861 (9th Cir. 1996).

Here, t h e district court was correct in ruling that there is

no likelihood of c onfusion

. A m a z o n is responding to a customer’s inquiry about a brand it does not car ry by doing

no more than stating clearly (and showing p ictures!) of what brands it does c arry

. To whatever ex te n t the Sleekcraft factors 1 apply in a case such as this – a merchant responding
to a r equest for a particular brand it does not sell by offering other brands clearly identified as such – the un disputed evidence shows that confusion on th e p a r t of the inquiring buy er is not a t all likely

. Not only are the other brands clearly labeled a nd accompanied by a photog raph, there is no evidence of actual confusion by any one.

1 T h e eig h t

- f

acto r test f

ro m ou r d ecisio n in AMF In c. v. S leekcra ft Bo a ts , 5 9 9 F.2 d 3 4 1
, 3 4 8

- 4 9 (9 th Cir. 1 9 7 9 ), a b ro ga ted in p a rt o n o th er g ro un d s

a s reco g n ized

in Ma ttel, In c. v. W

a lkin g Mo u n ta in Pro d

s. , 35 3 F.3 d 7 9 2 (9 th Cir. 2 00 3 ).M U L T I T I M E M A C H I N E V

. A M

A Z O N

. C O M 27

To analy z e likelihood of confusion, we utiliz e the eig h tfactor test set forth in Sleekcraft

. 2 However, “[ w ] e have long cautioned that apply ing the Sleekcraft test is not like counting beans.” One Indus.

, 5 7 8 F .3d at 1 162; see also Network Automation, Inc. v. Advanced Sys. Concepts
, 638 F

. 3d 1137, 1145 ( 9th Cir. 2011) (“The S leekcraft factors are intended a s

a n adaptable prox y for consumer confusion, not a rot e checklist.”). “Some factor s are much more important than
ot h e r s , and the relative importance o f each individual factor will b e c ase-specific.” Brookfield

, 1 7 4 F.3d at 1054. Moreover, the Sleekcraft factors are not e x haustive a nd other variables may come i n t o play depending on the particular facts presented. Network Automation

, 638 F .3d at 1145–46. This is p articula rly true in the I nternet contex t. See Brookfield

, 174 F .3d at 1054 (“W e must be acutely aware o f

ex c e ssive rig idity when a pply i n g t h e law in the I nternet contex t; e merg ing t e c h n o l o g i e s r e q u ire a flex ible approach.”). I ndeed, in e valuating c laims of trade m a r k infring ement in

cases involving I nternet search eng ines, w e hav e f ound particularly important an a dditional factor that is ou t s i d e o f the Sleekcraft test: “the labeling a n d appear a n c e of the advertisements and the surrounding contex t on th e screen display ing the results pag e.” Network Automation
, 638 F .3d at 1154.

I n the p rese nt case, the eig ht-factor Sleekcraft test is not particularly apt. This is not surprising as th e Sleekcraft test

2 T h e eig h t S leekcra

ft f acto rs are: “ 1. s tren g th o f th e m ark ; 2

. p ro x i m ity

o f th e g o od s; 3

. sim ilarity o f t h e m ark s; 4

. ev i d en ce o f actu al co n f u sio n ; 5

. m ark etin g ch an n els u sed ; 6

. ty p e o f g o o d s an d th e d eg ree o f care lik ely
t o b e ex ercised b y th e p u rch aser; 7

. d ef

en d an t’ s in ten t in selectin g t h e

m ark ; an d 8

. lik eli h o o d o f ex p an s io n o f th e p ro d u ct lin es.” 59 9 F.2 d at 3 4 8

– 4 9

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was d eveloped for a different problem

– i.e., for analy zing whether two competing brands’ marks are sufficiently similar
to cause consumer conf

u s i o n

. See Sleekcraft

, 599 F

. 2d at 348. Althoug h the present case involves brands that compete with MTM, such as L uminox

, Chase-Durer, TAW ATEC, a nd Modus, MTM does not cont e n d t h at the marks for these competing brands are similar to its trademarks. Rather, MTM
arg ues that the desig n o f A m az on’s search results pag e creates a likelihood of initial interest confusion because when

a c u s t o mer searches for MTM Special Ops watches on Amaz on.com, the search results pag e display s the search term used

– here, “mtm special ops”

– f o llowed by a display o f

numerous w atches manufactured by MTM’s competitors a nd offered for sale by Amaz on, without ex plicitly informing the customer that Amaz on does not carry MTM watches.

Thus, the present case focuses on a different ty pe o f confusion than was at issue in Sleekcraft

. Here, the confusion is not caused by the desig n of the c o mpetitor’s m a rk, but b y the desig n of the web pag e that is disp l ay i n g the c ompeting

m a r ks and offering the c o mpeting products f or sal e. Sleekcraft aside, 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 orig in of the
g oods. Dreamwerks

, 142 F .3d at 112 9

. O u r c ase can be resolved simply b y an evaluation of the web pag e at issue a nd the r elevant consumer. Cf. Brookfield

, 174 F .3d at 1 054 (“[ I ] t is often possible to r each a con c l u s i on w ith respect to likelihood of confusion after considering only a subset of the factors.”). I n d eed, we h a v e previously noted that “ [ i ] n the key word advertising contex t [ i

. e., w here a user performs a search on the internet, a

n d based on the key

words contained in the search, the resulting web pag e d i s play s c ertain advertisements containing products or services for sale,] theM U L T I T I M E M A C H I N E V

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‘likelihood o f confu s i o n will ultimately turn on w hat the

consumer saw on the screen and reasonably believed, g iven the contex t.’” Networ k Automation
, 638 F .3d at 1153. I n other words, the case wil l turn on the answers to the following two questions: (1) Who is the relevant reasonable consumer? ; and (2) W hat would he reasonably believe based on what he saw on the screen?

Turning to the fi rst question, we h ave ex plained that “[ t] he n ature o f the g oods and the ty p e of consumer is hig hly relevant to determining the likelihood of confu s ion in the key word advertising contex t.” N etwork Automation
, 638 F .3d at 1152. “ I n evaluating this factor, we consider ‘the ty pical buy er ex ercising ordinary c a u tion.’” Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.
, 457 F. 3 d 1 0 62, 1076 (9th Cir. 2006) ( quoting S leekcraft

, 599 F .2d at 353). “Confusion is less likely where b u y ers ex ercise care a nd precision in their purchases, such as fo r ex pensive o r sophisticated items.” Id. Moreover, “the defa u l t d eg ree o f

consumer care is becoming more heig htened as the n ovelty o f the I n ternet evaporates and online commerce becom e s commonplace.” Network Automation , 638 F .3d at 1152.

The g oods in the present case are ex p e n s i v e. I t is undisputed that the watches at issue sell for several hundred dollars. Therefore, the relevant consumer in the present case “is a r e as o nably prudent consumer accustomed to shopping online.” Toyota M

otor Sales, U.S.A., Inc. v. Tabari

, 610 F .3d 1171, 1176 (9th Cir. 2010).

Turning to the second question, as MTM itself asserts, the labeling a nd appearance of the products for sale on A maz o n’s web pag e is the most important factor i n t h is case. This is because we have previously n o ted that clear labeling canM U L T I T I M E M A C H I N E V

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eliminate the likelihood o f initial interest confusion in cases involving I nternet search terms. See, e .g. , Playboy Enters. v

. Netscape Communs. Corp.
, 354 F .3d 1020, 103 0 n

. 4 4 (9th Cir. 2004) (ex p laining that clear labeling “mig ht eliminate the likelihood o f initial interest confusion that ex ists in t h i s case”); Network A utomati o n , 6 38 F .3d at 1154 (same). I ndeed, MTM itsel f arg ues: “The common thread of [ the Ninth Cir c u i t ’ s d e c i s i o n s in Brookfield

, Playboy

, and Network Automation ] i s t h a t liability under the L anham Act can only be avoided as a matter of law w here there is clear labeling to avoid the possibility of confusion

– including initial interest conf u s i o n – resulting f

rom the use of another’s trademark.” Thus, MTM ag rees that summary judg ment of its trademark claims is ap p r o p r iate if there is clear labeling that a voids likely confusion.

Here, the products a t issue are clearly labeled by Amaz on to avoid any likelihood o f initial inter e st confusion b y a reasonably prudent consumer accustomed t o online shopping

. W h en a shopper g oes to Amaz on’s website and searches for

a produ c t u sing MTM’s trademark “mtm special ops,” the resulting pag e display s several prod u c t s, all o f w hich a re clearly labeled with the product’s name and manufacturer in larg e , b rig ht, bold le t t e r s and includes a photog raph of the item. I n fa c t , t h e manufacturer’s name is listed twice. F o r

ex a mple, the first result is “ Lum inox Men’s 8401 Black Ops Watch by L uminox .” T he second result is “ Chase-Durer Men’s 246.4BB7-XL-BR Special F orces 1000XL Black Ionic-P lated Underw at e r Dem olition Team Watch b y Chase-Durer.” B ecause Amaz on clearly labels each of the products fo r sale b y brand name and model number accompanied by a p hotog raph of the item, it is simply biz arre to suppose that a reasonably p rudent consumer accustomed toM U L T I T I M E M A C H I N E V

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online shopping woul d b e confused about the source of the
g oods.

MTM arg ues that initial interest confusion mig ht o ccur because Amaz o n l ists the search term used – here the trademarked phrase “mtm s p e c i a l ops” – three times at the top of the search pag e. MTM arg ues t h a t b e c a use Amaz on lists the search term “mtm special ops” at the top of the pag e , a consumer mig ht conclude th a t the products display e d a re ty pes of MTM watches. B ut, a review of Amaz o n ’s sea r ch results pag e shows that such co n s umer confusion is hig hly unli k e l y

. N one of these products are labeled with the word “MTM” or the phrase “Special O ps , ” let alone the specific phrase “MTM Special Ops. ” F urther, some of the products

are not even watches. T h e six th r e sult is a b ook entitled

“ Survive!: The Disaster, C r i s i s a n d E m e r g ency Handbook by J erry Ahem.” The tenth result is a b o o k entitled “ The Moses Expedition: A Novel by J uan Gómez -J urado.” I t is perplex ing h ow o ne could assume that a b o o k entitled “The Moses Ex pedition” is a ty p e of MTM watch or is in any way affiliated with MTM watches. I t is h ard to f athom how a reasonably p rudent consumer accustomed to shopping online would view Amaz on’s search r esults pag e and conclude that the products o f

fered are MTM watches. Some o f the
p r o d u c t s are not even watches! And the watches that a re offered for sale are clearly labeled as being manufactured b y L uminox

, Chase-Durer, TAW ATEC, o r Modus – n ot b y MT M

. I t is possible that some dolt somewhere mig ht be confused by t h e s earch results pag e. B ut, “[ u] nreasonable, imprudent and inex perienced web-shoppers are not relevant.” Tabari

, 610 F .3d at 117 6 ; see also Network Automation
, 638 F .3d at 1153 (“[ W] e ex pect consumers searching for

ex p ensive products online to be even more sophisticated.”).M U L T I T I M E M A C H I N E V

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The majority h y

po t h e s iz e s, w ithout any evidence to support it, that a reasonable jury c o u l d infer that initial interest confusion is possible here because consumers mig ht view these search resul t s a nd wonder whether a competitor has a cquired MTM or is otherwise a ffiliated with MTM. There is n o evidence in the record that any one, any w here, has

ever labored u nder the mistaken impression that L uminox o r the other brands offered are in any way , s h a pe, or form affiliated with MTM. Moreover, to establish like l i h o o d o f confusion, MTM must show that confusion is likely

, not just possible

. See Murray , 86 F .3d at 861.

MTM arg ues t hat in order to eliminate the likelihood o f confusion, Amaz on must c h a n g e its s e ar c h results p ag e, so that it ex plains to custome r s t h a t it does n ot offer MTM watches for sale before sug g esting alternative watches to the
customer. “No MTM, L uminox ” is e ssential l y what MTM
say s is r equired. I disag ree. The search results pag e makes

c l e a r t o any one who can read Eng lish that A maz on only carries the brands of watches that are clearly a n d ex plicitly l i s t e d on the web pag e

. The search results pag e i s unambig uous.

I n l i g ht of the clear labeling Amaz o n uses on its sear c h results p ag e , no reasonable trier of fact could conclude that Amaz on’s sea r c h results pag e would likely confuse a reasonably p rudent consumer accustomed to shopping online

as to the source of the g oods b ei n g offered. See Playboy

, 354 F .3d at 1 0 30 n.44 (Clear l a beling “mig ht eliminate the likelihood o f initial interest confusion that ex ists i n this

cas e

. ” ) ; Network Automation
, 638 F .3d at 1154 (same). Therefore, s u m m ary judg ment of MTM’s trademark c laims was appropriate.M U L T I T I M E M A C H I N E V

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MTM attempts to a r gu e that summary judg ment of its claims is inappropriate because there are numerous factu al disputes related to Amaz on’s search results pag e. B u t, to the

ex tent there are any factual d isputes between the parties, none of them are material to the analy sis. MTM cannot dispute the fact that the watches at issue all sell for hundreds of dollars. Therefore, as a matter of law, the relevant consumer would be

a reasonably prudent consumer accustomed to sh opping online. See Tabari

, 610 F .3d a t 1176; Network Automation

, 638 F .3d at 1152–53. F urt h er, MTM cannot dispute the
contents o f the web pag e at issue. A review of A maz o n’s web p age s hows that each p roduct listed for sale is clearly label ed with the product’s name and manufacturer and a photog rap h

, a n d none of the products are labeled with MTM’s mark. Thus, the undisputed facts show that it is hig hly unlikely that a r e a sonably prudent c o n sumer accustomed to shopping online would b e c onfused as to the source of the g oods offered for sale on Amaz on’s web pag e

.

I t is true that likelihood of confusion is o ften a question of fact, but not alway s. I n a case such as this, where a court

ca n c o n clude that the consumer confusion alleg e d b y the trademark holder is hig hly unl i k e ly by simply reviewing the product listing /advertisement at issue, summary judg ment is appropriate. Cf. M2 Software , 421 F .3d at 1085 (ex plaining that summary judg ment of a trademark claim is a p p r opriate where the plaintiff h as failed to present “sufficient e v idence
to permit a rational trier of fact to find that confusion is ‘probable,’ n ot merely ‘possible’”). I ndeed, in the simi l ar contex t of evaluating alleg ations of consumer decept i o n w h en dealing with f

alse advertising c l aims, we have at least twice

con c l u d e d

– after a review o f the label or advertisement at issue – that there was no likelihood of c onsumer deception a s

a matter of law because n o reasonable consumer could haveM U L T I T I M E M A C H I N E V

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been deceived by the label/advertisement at issue in the

m a nner alleg ed by the plaintiff. See, e .g. , Davis v. HS B C Bank

, 691 F .3d 1152, 1162 (9th Cir. 2012); Freeman v

. Time, Inc. , 68 F .3d 285, 289–90 (9th Cir. 1995).

II.

I n lig ht of Amaz on’s cle ar labeling of the products it carries, by brand name and model, acc o m p anied by a photog raph of the item, no r ational trier of fact could possibly find that a r easonably prudent consumer a ccustomed to online

s h o p ping would likely b e confused by the Amaz on sear c h results. I would hold that the district court correctly g ranted
summary judg ment i n f

a vor of Amaz on, or as J ohn B elushi mig ht have put it, “No reversal. Affirm.”