TechLaw

What do you get when you cross reverse consumer confusion with initial interest confusion? Utube.com.

A recent trademark dispute involving the YouTube video aggregation service could be the false dawn of the reverse initial interest confusion doctrine.

Universal Tube & Rollform Equipment Corp. sells used pipe-making equipment, which it promotes on its site, utube.com. It has held the domain since 1996. But recently, tens of thousands of consumers seeking out YouTube have inundated utube.com, forcing the Ohio-based company to incur significantly higher Web hosting fees to keep the site from crashing. Universal Tube sued YouTube under various trademark theories as well as trespass and nuisance.

Professor Edward Lee of the Moritz College of Law at Ohio State University has an interesting post on the dispute at his blog on the video sharing industry. He argues that the plaintiff is making what is essentially a reverse initial interest confusion argument: a senior user's Web site receives a greater number of visitors because of the popularity of the junior user's mark. Given that the Sixth Circuit does not recognize the initial interest confusion doctrine as an independent basis for trademark infringement, this novel twist to the doctrine would be a stretch, Lee argues.

Might a common law dilution claim fare better? Universal Tube alleged one under Ohio common law. Lee mentioned in a follow-up post that he has not come across an Ohio case that recognizes common law dilution. Our own research revealed only one reported case that addresses the subject, United States Playing Card Co. v. Bicycle Club, No. C-960265, 1997 Ohio App. LEXIS 2143 (Ohio Ct. App. May 21, 1997). There, the plaintiff brought a trademark dilution claim "grounded in Ohio common law," in the words of the court. But the court never reached the merits, determining that the claim was time barred.

Dilution has the advantage of getting Universal Tube out of having to prove likelihood of confusion, a tough task given the disparity between used tube-making equipment and a site that hosts home videos. Then again, trying to establish "utube" as highly distinctive for a company that sells tube-making machinery is no cake walk either.