On October 21, 2015, on a granted petition for panel rehearing, an opinion was filed in the case of Multi-Time Machine, Inc. v. Amazon.com, Inc., et al., No. 13-55575, D.C. No. 2:11-cv-09076-DDP-MAN. The panel granted a petition for rehearing, withdrew its prior July 6, 2015 opinion and filed a superseding opinion in an appeal from the lower court’s summary judgment in a trademark infringement action under the Lanham Act against the defendant, Amazon.com (“Amazon”).

On Amazon’s motion for summary judgment, the District Court granted summary judgment in favor of Amazon on the grounds that Multi-Time Machine, Inc. (“Multi-Time”) did not put forth sufficient evidence from which a jury could determine that there was a likelihood of confusion. Multi-Time appealed. The Ninth Circuit reversed the District Court’s grant of summary judgment, holding that Multi-Time presented sufficient evidence for a jury to determine that Amazon’s search function causes a likelihood of confusion under the “initial interest confusion” test.

Military-style watch manufacturer Multi-Time owns the trademark “MTM Special Ops” and does not sell watches on Amazon.com. When Amazon consumers searched for “MTM Special Ops” on Amazon.com, the search results included several of Multi-Time’s competitors’ watches bearing the competitors’ labels and marks but without an explicit warning that Amazon does not sell Multi-Time watches.

The District Court focused on particular factors in Sleekcraft to reach its conclusion and up on appeal, the Ninth Circuit seemed to as well. The Ninth Circuit determined that Multi-Time’s trademark, “MTM Special Ops,” is suggestive and conceptually strong because it does not merely describe its military-style watches, but is potentially suggestive of them. Additionally, the Court determined that the “similarity of the goods” factor weighs in favor of infringement because Amazon sells military-style watches and even displays them in response to a search for Multi-Time’s trademark. The Court held that a jury could infer that the search results page, coupled with Amazon’s failure to warn the customer that it does not carry Multi-Time products, gives rise to an initial interest confusion. Therefore, because there was sufficient evidence to demonstrate likelihood of confusion, the Court reversed the District Court’s grant of summary judgment and remanded the case for a jury trial.

On rehearing, the panel of the Ninth Circuit reversed itself and held that the District Court was correct in ruling that there is no likelihood of confusion, but did so for different reasons. In so holding, the Ninth Circuit seemed to dispense with the Sleekcraft factors or a vast majority of the Sleekcraft factors, stating that it “is not particularly apt,” because it was developed for a different problem, “i.e., for analyzing whether two competing brands’ marks are sufficiently similar to cause consumer confusion.”

Here, Multi-Time argued that the design of Amazon’s search results page created a likelihood of initial interest confusion; that is, the issue focuses on a different type of confusion, not caused by a competitor’s mark, but by the design of a webpage that is displaying the competing marks and offering the competing products for sale. Setting aside the multifactor confusion test, the Ninth Circuit focused on the conduct of Amazon.com, as a non-competitor, clear labeling, and the arrangement and design of its webpage stating “the confusion is not caused by the design of the competitor’s mark, but by the design of the webpage that is displaying the competing mark and offering the competing products for sale.”

The panel went on to indicate that this “case can be resolved simply by an evaluation of the webpage at issue and the relevant consumer,” that is “(1) who is the relevant reasonable consumer?; and (2) what would he reasonably believe based on what he saw on the screen?”

First, the Ninth Circuit found that the goods in this case are expensive and that the relevant consumer is a reasonably prudent consumer accustomed to shopping online. In turning to the second question, the panel focused on labeling, stating that “clear labeling can eliminate the likelihood of initial interest confusion in cases involving Internet search terms,” however, instead of focusing on labeling that Amazon did not sell Multi-Time products in the prior appeal, the panel focused on the products themselves and whether they were clearly labeled.

Here, the panel stated, “the products at issue are clearly labeled by Amazon to avoid any likelihood of initial interest confusion by a reasonably prudent consumer accustomed to online shopping.” The Court further stated that products are labeled in bright, bold letters and includes a photograph of the item. Multi-Time argued that the use of “MTM special ops” three times within the page (produced as a result of the customer’s search term) could confuse customers, but the panel found that it would be unlikely, stating, “none of the watches produced are labeled with “MTM” or the phrase, “Special Ops.” Thus, the Court reasoned, the undisputed facts show that it is highly unlikely that a reasonably prudent consumer accustomed to shopping online would be confused as to the source of the goods offered for sale on Amazon’s web page.