By Patience Haggin, From The Recorder

SAN FRANCISCO — High-end watch manufacturer Multi Time Machine Inc. won a skirmish in a fight against Amazon.com Inc. and can proceed with claims that the online retailer’s search results infringe its trademark.

Ruling 2-1 that the search results may indeed confuse online shoppers, the U.S. Court of Appeals for the Ninth Circuit on Monday sent their fight back to district court. But in a cheeky dissent opening with a Saturday Night Live reference, Judge Barry Silverman called the search results “clear to anyone who can read English.”

Amazon does not carry MTM watches. When a customer types “MTM special ops” into Amazon’s search bar, the resulting search page returns a slew of luxury watches by other brands because the search algorithm, in part, shows items that customers using those terms have purchased in the past.

MTM argues the original search terms remain in three fields above the results, which may confuse a shopper into thinking he or she is looking at MTM-affiliated watches. MTM sued Amazon in 2011, accusing the retailer of trademark infringement based on initial interest confusion, which occurs when a customer begins looking a competitor’s product based on brand confusion.

U.S. District Judge Dean Pregerson of the Central District of California sided with Amazon on summary judgment in 2013.

The Ninth Circuit opinion, penned by Judge Carlos Bea, reversed and remanded the case for trial. Other online retailers are more up-front when they don’t offer the searched-for product, Bea said. Overstock.com, for example, displays “Sorry, your search: ‘MTM special ops’ returned no results” above its page of substitute offerings. Plus, evidence shows that Amazon did not take action to explain its customer behavior-based search algorithm to the public in response to the complaints.

“We think a jury could find that Amazon has created a likelihood of confusion,” Bea wrote.

Silverman disagreed, in a dissent well worth a read.

It opens with Saturday Night Live’s famous “cheezborger” sketch: John Belushi is taking orders in a diner, and Jane Curtin orders a Coke. Belushi answers, “No Coke. Pepsi.”

“Would anyone seriously contend that the diner violated Coke’s trademark by responding to the customer’s order that it doesn’t carry Coke, only Pepsi?” Silverman challenged.

The issue, Silverman wrote, isn’t whether “a dolt somewhere might be confused” but whether the search results would confuse a reasonably prudent consumer accustomed to shopping online.

Initial interest confusion is an evolving area, said Finnegan, Henderson, Farabow, Garrett & Dunner trademark partner Mark Sommers. Complaints usually arise between competitors who use similar packaging, he said, and MTM’s suit is unusual for alleging initial interest confusion against a retailer, rather than a competitor.

Amazon is represented by Marc Levy of Faegre Baker Daniels, Allan Anderson of Arent Fox and Timothy Skelton of Ropers Majeski Kohn & Bentley. Neither Amazon nor its attorneys responded to a request for comment.

MTM is represented by Jeffrey Cohen and Michael Culver of Millen, White, Zelano & Branigan; Eric Levinrad of Wolf, Rifkin, Shapiro, Schulman & Rabkin in Los Angeles; and Jennifer McGrath of Kinsella Weitzman Iser Kump & Aldisert.

Levinrad said he was “pleased” with the decision.

For more on this story go to: http://www.therecorder.com/id=1202731449879/Amazon-Loses-Appeal-Over-Search-Results#ixzz3fLpLxdTH