Consistency of Confusion? A Fifteen-Year Revisiting of Barton Beebe's Empirical Analysis of Multifactor Tests for Trademark Infringement

In a typical case of trademark infringement, a plaintiff must show, among other things, that potential consumers would be confused as to the source of a good or service, due to the defendant's use of a mark (or in the case of trade dress infringement, the same or similar product packaging, design, labeling, etc.) that creates confusion as to source, sponsorship, or affiliation. This inquiry into the likelihood of confusion is most often governed by multifactor tests, the most prominent of which is the test articulated in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961) by the U.S. Court of Appeals for the Second Circuit. Professor Barton Beebe, in his empirical analysis of multifactor tests for trademark infringement nationwide, found that judges "employ 'fast and frugal' heuristics to short-circuit the multifactor analysis" and challenged the conventional wisdom that no single factor in the multifactor test is dispositive. However, the limited temporal scope of his inquiry (2000–2004) raises the question of whether his results are typical for trademark cases or just a five-year anomaly. This paper attempts both to determine whether Beebe's findings hold true over a longer, fifteen-year period and to discover any new information that sheds light on how judges decide trademark cases. It analyzes cases from the Southern District of New York, which apply the Second Circuit's Polaroid test, over a fifteen-year time span. Part I.A describes our methodology while Part I.B provides background statistics on our data set. Part II presents analysis of factor correlation, outcome classification trees, stampeding, and each individual factor, including comparison with Beebe's results, as well as description of historical trends in our data. Part III analyzes the effect of other considerations related to the multifactor test - whether or not the products are in competition, whether the party names are the trademarks at issue, whether the court indicates one factor can be dispositive of the outcome, and whether or not the court considers factors in addition to those listed in the Second Circuit’s Polaroid test. Our results of studying the fifteen-year set of cases in the District Court for the Southern District of New York were, for the most part, consistent with Beebe's national study of 2001-2004. There seem to be only a small number of key factors, with similarity being paramount among them. We noted less stampeding than Beebe observed, although he too found less stampeding in the district courts of the Second Circuit. We did observe what may be a moderate decline in the rate of finding likelihood of confusion as well as a potential decline in the use of the tarnishment theory alone. We also observed an apparent decrease in the importance of inherent strength and its connection to commercial strength. Of the new variables we observed, the one of most interest may be the consideration by the court of additional factors, as those seemed to affect decision-making the most. We would suggest a reformed test along the lines of the one Beebe recommends - focusing on similarity, proximity as perceived by the relevant consumers, evidence of actual confusion, marketplace strength, and the infringer's intent.