Respondents Brief — Dires, LLC, dba Personal Touch Beds and Personal Comfort Beds, et al., Petitioners v. Select Comfort Corporation, et al.

No. 21-212

In the

Supreme Court of the United States

DIRES, LLC,

SCOTT STENZEL, AND CRAIG MILLER,

Petitioners,

V.

SELECT COMFORT CORPORATION AND

SELECT COMFORT SC CORPORATION,

Respondents.

_______________________

On Petition for a Writ of Certiorari to the United

States Court of Appeals for the Eighth Circuit

_______________________

BRIEF IN OPPOSITION

_______________________

Andrew S. Hansen

Counsel of Record

Elizabeth A. Patton

FOX ROTHSCHILD LLP

Two22 Building, Suite 2000

222 South Ninth Street

Minneapolis, MN 55402

612.607.7000

ahansen@foxrothschild.com

epatton@foxrothschild.com

October 14, 2021

Counsel for Respondents

i

QUESTION PRESENTED

In 1962, Congress amended the Lanham Act

to make both pre-sale and post-sale confusion

actionable. Act of Oct. 9, 1962, Pub. L. No. 87-722, §

17, 76 Stat. 769, 773-74 (removing term “purchasers”

to expand trademark protection to pre-sale, point-ofsale, and post-sale confusion) (codified as amended

at 15 U.S.C. § 1114(1)(a)). Because of these

amendments, courts have uniformly recognized that

there can be liability for trademark infringement

when there is a likelihood of pre-sale confusion,

particularly when an advertiser employs “bait and

switch” advertising like the Petitioners do here.

The actual question presented through the

Petition is:

Whether engaging in “bait and switch”

advertising causing a likelihood of pre-sale

confusion, under the specific facts at issue in the

underlying case, can be actionable as trademark

infringement under the Lanham Act.

ii

CORPORATE DISCLOSURE STATEMENT

Pursuant to Supreme Court Rule 29.6,

Respondent Select Comfort Corporation n/k/a Sleep

Number Corporation1 discloses that it has no parent

corporation and that it is a publicly held corporation.

Public entities that own ten percent or more of Sleep

Number Corporation’s stock are BlackRock Fund

Advisors, a subsidiary of BlackRock, Inc., and The

Vanguard Group, Inc. Respondent Select Comfort SC

Corporation’s parent corporation is Sleep Number

Corporation.

Select Comfort Corporation has changed its name to Sleep

Number Corporation.

1

iii

TABLE OF CONTENTS

STATEMENT OF THE CASE ................................. 1

I. FACTUAL BACKGROUND .......................... 2

II. PROCEDURAL BACKGROUND ................. 5

III.EIGHTH CIRCUIT DECISION .................... 6

REASONS FOR DENYING THE PETITION......... 8

I. THE EIGHTH CIRCUIT’S DECISION

DOES NOT CONFLICT WITH OTHER

CIRCUITS ON AN IMPORTANT ISSUE

REQUIRING CLARIFICATION................... 8

A. No Supreme Court Clarification Is

Needed Because the Eighth Circuit

Order Is Consistent with Federal Law

and Precedent........................................... 9

B. No Supreme Court Review Is Warranted

Because There Is No Conflict Between

the Circuits ............................................. 13

C. No Compelling Reasons Exist for the

Court to Review an Order that Was

Unique to the Facts of the Case,

Including “Ample” Evidence of

Confusion. ............................................... 20

iv

II. DIRES’ POLICY-BASED ARGUMENTS

DO NOT NECESSITATE SUPREME

COURT REVIEW ........................................ 24

CONCLUSION ....................................................... 26

v

TABLE OF AUTHORITIES

Page(s)

Federal Cases

1-800 Contacts, Inc. v. Lens.com, Inc.,

722 F.3d 1229 (10th Cir. 2013)......................... 20

1-800 Contacts, Inc. v. WhenU.com, Inc.,

414 F.3d 400 (2d Cir. 2005), cert. denied,

546 U.S. 1033 (2005) ......................................... 24

Armstrong Cork Co. v. World Carpets, Inc.,

597 F.2d 496 (5th Cir. 1979)............................. 14

Ascentive, LLC v. Opinion Corp.,

842 F. Supp. 2d 450 (E.D.N.Y. 2011) ............... 21

Australian Gold, Inc v. Hatfield,

436 F.3d 1228 (10th Cir. 2006)......................... 11

Bonner v. City of Prichard,

661 F.2d 1206 (11th Cir. 1981)......................... 14

Checkpoint Systems, Inc. v. Check Point

Software Technologies, Inc.,

269 F.3d 270 (3d Cir. 2001) ........................ 10, 12

City & County of San Francisco, California

v. Sheehan,

135 S. Ct. 1765 (2015)......................................... 8

vi

Concordia Partners, LLC v. Pick,

No. 2:14-CV-009-GZS, 2015 WL 4065243

(D. Me. July 2, 2015)......................................... 13

Ducks Unlimited, Inc. v. Boondux, LLC,

No. 214CV02885SHMTMP, 2017 WL

3579215 (W.D. Tenn. Aug. 18, 2017) ............... 21

Elvis Presley Enterprises, Inc. v. Capece,

141 F.3d 188 (4th Cir. 1998)............................. 18

Ferrari S.P.A. v. Roberts,

944 F.2d 1235 (6th Cir. 1991)........................... 10

Foxworthy v. Custom Tees, Inc.,

879 F. Supp. 1200 (N.D. Ga. 1995) .................. 15

Gibson Guitar Corp. v. Paul Reed Smith

Guitars, LP,

423 F.3d 539 (6th Cir. 2005), cert.

denied, 547 U.S. 1179 (2006) ............................ 24

Groeneveld Transport Efficiency, Inc. v.

Lubecore International, Inc.,

730 F.3d 494 (6th Cir. 2013)............................. 11

Hearts on Fire Co. v. Blue Nile, Inc.,

603 F. Supp. 2d 274 (D. Mass. 2009) ............... 14

Hogan v. Carter,

85 F.3d 1113 (4th Cir. 1996)............................. 17

vii

Hubbard Feeds, Inc. v. Animal Feed

Supplement, Inc.,

182 F.3d 598 (8th Cir. 1999)............................. 22

Insty*Bit, Inc. v. Poly-Tech Industries, Inc.,

95 F.3d 663 (8th Cir. 1996)............................... 10

Jim S. Adler, P.C. v. McNeil Consultants,

L.L.C.,

--- F. 4th ---, No. 20-10936, 2021 WL

3508713 (5th Cir. Aug. 10, 2021) ..................... 11

Kemp v. Bumble Bee Seafoods, Inc.,

398 F.3d 1049 (8th Cir. 2005)........................... 22

Kos Pharmaceuticals, Inc. v. Andrx Corp.,

369 F.3d 700 (3d Cir. 2004) .............................. 22

Lamparello v. Falwell,

420 F.3d 309 (4th Cir. 2005)................. 16, 17, 24

Malletier v. Burlington Coat Factory

Warehouse Corp.,

426 F.3d 532 (2d Cir. 2005) .............................. 11

Marathon Manufacturing Co. v. Enerlite

Products Corp.,

767 F.2d 214 (5th Cir. 1985)............................. 11

Moore v. Doe,

No. CV 20-6569-DMG (SPX), 2020 WL

6804508 (C.D. Cal. Oct. 13, 2020) .................... 21

viii

Moving & Storage, Inc. v. Panayotov,

C.A. No. 12-12262-GAO, 2014 WL

949830 (D. Mass. Mar. 12, 2014) ..................... 13

Multi Time Machine Inc. v. Amazon.com,

Inc.,

804 F.3d 930 (9th Cir. 2016), cert.

denied, 577 U.S. 1144 (2016) ............................ 24

Network Automation, Inc. v. Advanced

Systems Concepts, Inc.,

638 F.3d 1137 (9th Cir. 2011)........................... 21

Passport Health, LLC v. Avance Health

System, Inc.,

823 F. App’x 141 (4th Cir. 2020), as

amended (Aug. 17, 2020) ............................ 17, 19

Playboy Enterprises, Inc. v. Netscape

Communications Corp.,

354 F.3d 1020 (9th Cir. 2004)..................... 11, 21

Promatek Industries, Ltd. v. Equitrac Corp.,

300 F.3d 808 (7th Cir. 2002), as

amended (Oct. 18, 2002) ................................... 12

Rosetta Stone Ltd. v. Google, Inc.,

676 F.3d 144 (4th Cir. 2012)....................... 17, 18

Roto-Rooter Corp. v. O’Neal,

513 F.2d 44 (5th Cir. 1975)............................... 14

Savin Corp. v. Savin Goup,

391 F.3d 439 (2d Cir. 2004) .............................. 21

ix

Sensient Technologies Corp. v.

SensoryEffects Flavor Co.,

613 F.3d 754 (8th Cir. 2010), cert.

denied, 562 U.S. 1270 (2011) ............................ 24

Smartling, Inc. v. Skawa Innovation Ltd.,

358 F. Supp. 3d 124 (D. Mass. 2019) ............... 13

St. Charles Manufacturing Co. v. Mercer,

737 F.2d 891 (11th Cir. 1983)........................... 15

Suntree Technologies, Inc. v. Ecosense

International, Inc.,

693 F.3d 1338 (11th Cir. 2012)......................... 15

Toyota Motor Sales, U.S.A., Inc. v. Tabari,

610 F.3d 1171 (9th Cir. 2010)........................... 21

Transunion v. Ramirez,

141 S. Ct. 2190 (2021)....................................... 22

USA Nutraceuticals Group, Inc. v. BPI

Sports, LLC,

165 F. Supp. 3d 1256 (S.D. Fla. Feb. 22,

2016) .................................................................. 16

Vital Pharmaceuticals, Inc. v. American

Body Building Products, LLC,

511 F. Supp. 2d 1303 (S.D. Fla. 2007) ............. 16

World Carpets Inc. v. Dick Littrell’s New

World Carpets,

438 F.2d 482 (5th Cir. 1971)............................. 22

x

Statutes

15 U.S.C. § 1051 et seq. .......................................... 10

15 U.S.C. § 1114(1)(a) ........................................ 9, 20

Pub. L. No. 79-489, 50 Stat. 427 ............................ 10

Pub. L. No. 87-722, 76 Stat. 769 .............................. 9

Rules

Sup. Ct. R. 10 ..................................................... 8, 26

Other Authorities

4 J. Thomas McCarthy, McCarthy on

Trademarks & Unfair Competition (5th

ed. 2018) .................................................. 9, 12, 22

Michael Hannon, A Closer Look at

Unpublished Opinions in the United

States Courts of Appeals, 3 J. App. Prac.

& Process 199 (2001) ........................................ 17

Stephen G. Breyer, Reflections on the Role

of Appellate Courts: A view from the

Supreme Court¸ 8 J. App. Prac. &

Process 91 (2006) .............................................. 19

1

STATEMENT OF THE CASE

Petitioners Dires, LLC, Craig Miller, and

Scott Stenzel (collectively “Dires”) submit their

Petition for Writ of Certiorari despite the existence

of no circuit split and no compelling reason to grant

review. Specifically, Dires’ Petition ignores the

universally-held view amongst all circuits to address

the issue that pre-sale, initial interest confusion is

actionable when an advertiser employs a “bait and

switch” scheme or otherwise causes actual confusion.

Moreover, Dires’ Petition disregards the factual

context at issue in this case and does not

acknowledge the Lanham Act’s plain language that

has been in place for decades.

Similar to other factual contexts in which

multiple courts have acknowledged initial interest

confusion, Dires engages in a multi-faceted scheme

using Respondents Select Comfort Corporation and

Select Comfort SC Corporation’s (“Sleep Number”)

trademarks and goodwill to confuse customers

looking for Sleep Number into instead going to Dires’

website. Once in contact with these deceived and

confused customers, Dires fosters the confusion

and/or makes false statements to obtain sales. Dires’

scheme is successful because Sleep Number has

spent

decades

and

considerable

resources

advertising its products and the famous Sleep

Number brand.

On summary judgment, the district court

improperly held that pre-sale confusion could not

exist as a matter of law, disregarding the 1962

2

amendments to the Lanham Act, relevant case law,

and overwhelming evidence of pre-sale confusion

hurting consumers and Sleep Number. This decision

was at odds with other courts and had potentially

far-reaching, negative implications for consumers

and trademark owners. By rejecting pre-sale

confusion and holding only point-of-sale confusion

actionable, the court improperly approved Dires’

tactics of deceiving consumers prior to their ultimate

purchase.

On appeal, the Eighth Circuit reversed the

district court and concluded, in part, that the district

court erred by finding pre-sale, initial interest

confusion could not apply, particularly in light of the

ample evidence of actual customer confusion in the

record. Ultimately, the Eighth Circuit vacated the

district court’s summary judgment ruling and jury

verdict and remanded the matter to the United

States District Court for the District of Minnesota

for additional factual findings relating to Sleep

Number’s trademark-infringement claim.

I.

FACTUAL BACKGROUND.

Respondent Sleep Number is a leading

manufacturer of adjustable air beds and the owner of

the heavily advertised Sleep Number brand of

adjustable air mattresses. (Petitioners’ Appendix

(“Pet. App.”) at A-4 (“Eighth Circuit Order”).) Sleep

Number sells its products nationwide in Sleep

Number

branded

retail

stores,

online

at

sleepnumber.com, and over the phone. (Id.) As

confirmed by the jury in the underlying action, the

3

Sleep Number brand has become a well-known,

famous brand. (See id. at A-11 n.1.) Sleep Number

owns trademark registrations for Sleep Number®,

Select Comfort®, Comfortaire®, and What’s Your

Sleep Number?® (among others not at issue here).

(Id. at A-37.)

Petitioner Dires, LLC is an online retailer,

and the individual Petitioners Craig Miller and Scott

Stenzel—along with John Baxter, another individual

defendant in the underlying action—are executives

or owners of Dires or related companies. (Id. at A-4.)

Dires markets and sells adjustable air beds to

consumers under the brand name “Personal

Comfort.” (Id. at A-1.) Dires’ products are sold online

at personalcomfortbed.com and over the phone. Id.

at A-4.)

In selling its products, Dires employs multiple

advertising tactics that involve Sleep Number’s

trademarks. For example, Dires purchases Sleep

Number’s trademarks as keywords on search

engines such as Google and structures its

advertisements that appear in response to consumer

searches in bolded and grammatically nonsensical

fashions to give the misleading impression that

Dires sells Sleep Number beds. (Id. at A-5.)

Exemplar advertisements include “Sleep 55% Off

Number Beds”; “Number Bed Sleep Sale 60% Closeout Sale”; “50% Off Sleep Number Beds”; and

“Comfort Air Beds on Sale.” (Id. at A-46 (emphasis

in original).) The advertisements additionally

include website links reproducing Sleep Number’s

trademarks

verbatim.

(e.g.

4

personalcomfortbed.com/vSleepNumber

or

personalcomfortbed.com/cComfortaire). (Id. at A-7.)

Dires also utilizes Sleep Number’s trademarks as

identical phrases, or employs confusingly similar

words or phrases, in its own web-based advertising,

in text and graphic advertisements, and as

embedded links on third-party websites. (Id.)

In the underlying action, Sleep Number

alleged that Dires used these means to divert

customers to its own website and telephone lines

where Dires would foster and promote the confusion

and add false claims about the parties’ products to

convince consumers to buy Dires’ products instead of

Sleep Number’s. (Id. at A-7–A-8.) On summary

judgment and again at trial, Sleep Number

presented evidence (too extensive to cite here) that

Dires’ advertisements cause confusion, both in the

form of survey evidence and, in a rarity for

infringement cases, voluminous examples of actual

confusion from telephone call transcripts and

messages between customers and Dires’ employees.

(Id. at A-7–A-8, A-98.) Customers not only saw the

confusing advertisements and acted upon them, but

contacted Dires after viewing and clicking on the

confusing advertisement, going to Dires’ website,

and obtaining Dires’ phone number, all while still

confused (and sometimes even purchasing products

from Defendants while still confused). (See id. at A49.) This is precisely what Dires intended to occur,

as it specifically designed its advertising to sow

confusion (id. at A-65), and acknowledged that such

5

confusion showed the

intended (id. at A-8).

II.

advertising

worked

as

PROCEDURAL BACKGROUND.

Sleep Number commenced this action

asserting claims of, among other things, trademark

infringement,

trademark

dilution,

unfair

competition, and false advertising. (Id. at A-4.) In

short, Sleep Number sought to end Dires’ advertising

tactics that cause consumer confusion and drive

those consumers to Dires’ website instead of a

website that sells Sleep Number products. See

generally id.

Both parties filed cross-motions for summary

judgment relevant to the issue of pre-sale or initial

interest confusion. (Id. at A-34–A-79.) As the Eighth

Circuit has explained, Sleep Number “expressly

disavowed any theory of trademark infringement

that relied exclusively on [Dires’] use of [Sleep

Number’s] trademarks as paid search terms with

search engine providers such as Google. Rather,

[Sleep Number] alleged infringement based on that

use coupled with [Dires] several and varied other

uses of similar and identical trademarks in multiple

forms of online advertising.” (Id. at A-6 (emphasis

added).) Ultimately, the district court rejected Sleep

Number’s claim of trademark infringement based on

pre-sale, initial interest confusion and held that

Sleep Number was required to “establish a likelihood

of actual confusion at the time of purchase” (thus

granting summary judgment to the defendants on

Sleep Number’s pre-sale infringement claim). (Id. at

6

A-62.) The district court therefore required Sleep

Number to prove not only that consumers were

confused by Dires’ advertisements, but also that

consumers went through the entire sales process

before purchasing Dires’ product while still confused.

This ruling shielded “bait and switch” advertising

causing actual confusion from the Lanham Act.

Given its ruling on summary judgment, the

district court instructed the jury at trial that Sleep

Number was required to prove a likelihood of

confusion at the time of purchase to prevail on its

trademark infringement claim. (Id. at A-92–A-94.)

As a result, the jury returned a verdict finding,

among other things, that Dires did not infringe Sleep

Number’s trademarks. (Id. at A-8.) Sleep Number

appealed the district court’s summary judgment

order to the United States Court of Appeals for the

Eighth Circuit.

III.

EIGHTH CIRCUIT DECISION.

On May 11, 2021, the Eighth Circuit vacated

the district court’s summary judgment ruling and

jury verdict as to Sleep Number’s claim of trademark

infringement and remanded for further proceedings.

(Id. at A-30.) Specifically, the Court reversed the

district court’s refusal to allow Sleep Number to

pursue a pre-sale, initial interest confusion claim,

concluding based upon the specific facts at hand that

“the district court erred by finding as a matter of law

that the relevant consumers were sophisticated and

that a theory of initial-interest confusion could not

apply.” (Id. at A-3–A-4.) Notably, the Eighth Circuit

7

relied on the case “enjoy[ing] a full record including

highly detailed descriptions of Plaintiffs’ and

Defendants’ customers’ experience and ample

evidence of (1) actual confusion including transcripts

of potential customers who called Defendants’ call

centers and believed they were calling Plaintiffs, and

(2) statements by Defendants’ principals describing

the actual confusion as evidence that their own

advertising was working.” (Id. at A-21 (emphasis in

original).)

In reaching its decision, the court noted that,

“although not addressing initial-interest confusion

specifically,” the Eighth Circuit had already “clearly

established that claims of infringement are not

limited solely to a likelihood of confusion at the time

of purchase.” (Id. at A-14.) Thus, applying Eighth

Circuit precedent, the court determined that, under

certain circumstances and in the circumstance at

hand, initial interest confusion is actionable in the

Eighth Circuit. (Id. at A-16.) In particular, and as

relevant here, the Eighth Circuit held that “when a

jury question exists as to the issue of consumer

sophistication, a plaintiff should not be barred from

proving presale, initial-interest confusion.” (Id.)

The Eighth Circuit therefore determined that

the district court’s rulings on the claim of pre-sale,

initial interest confusion were in error, and held that

“given the strength of [Sleep Number’s] evidence on

the issue of confusion, we cannot conclude that the

summary judgment and instructional errors were

harmless.” (Id. at A-21.) The Eighth Circuit thus

remanded for additional factual findings on

8

trademark infringement and other issues. (Id. at A30.)

On May 24, 2021, Dires filed a Petition for

Rehearing En Banc (“En Banc Petition”). On June

16, 2021, the Eighth Circuit denied Dires’ En Banc

Petition. (Id. at A-81.) Dires filed its Petition for

Writ of Certiorari to this Court (“Petition”), which

was docketed on August 13, 2021.

REASONS FOR DENYING THE PETITION

Here, neither of the circumstances under

Supreme Court Rule 10 applies and no other

compelling reasons to grant certiorari exist. Dires’

Petition overlooks the plain language of the Lanham

Act that has been in place since 1962; ignores the

prevailing view amongst all courts that pre-sale,

initial interest confusion is actionable when an

advertiser employs a “bait and switch” scheme or

causes actual confusion; and disregards the factual

context at issue in the underlying case. The Court

therefore should deny Dires’ Petition.

I.

THE EIGHTH CIRCUIT’S DECISION

DOES NOT CONFLICT WITH OTHER

CIRCUITS ON AN IMPORTANT ISSUE

REQUIRING CLARIFICATION.

Dires’ portrayal of the Eighth Circuit Order as

conflicting with holdings from other federal circuit

courts of appeal on the same important issue is

incorrect. Under Supreme Court Rule 10, “certiorari

jurisdiction exists to clarify the law.” City & Cty. of

9

S.F. v. Sheehan, 135 S. Ct. 1765, 1774 (2015). Here,

no such clarification is necessary, as the Eighth

Circuit’s ruling followed the plain language of the

Lanham

Act

and

is

aligned

with

the

acknowledgement across courts that have addressed

the issue that initial interest confusion is actionable

when “bait and switch” tactics or actual confusion

are shown. Further, the ruling is limited to its facts,

which does not present compelling reasons for

Supreme Court review.

A.

No Supreme Court Clarification Is

Needed Because the Eighth Circuit

Order Is Consistent with Federal

Law and Precedent.

The Eighth Circuit reached a proper decision

that does not need Supreme Court clarification

because it (1) followed the plain language of the

Lanham Act, and (2) issued a decision aligned with

circuit courts across the country.

First, the Eighth Circuit issued its decision in

accordance with general trademark principles that

have been in place since the 1962 amendments to

the Lanham Act. Act of Oct. 9, 1962, Pub. L. No. 87722, § 17, 76 Stat. 769, 773–74 (codified as amended

at 15 U.S.C. § 1114(1)(a)). As the Eighth Circuit

noted in its ruling, “several courts have interpreted

[the 1962 Lanham Act] amendment as expanding

trademark protection beyond point-of-sale confusion

to reach presale confusion (including initial-interest

confusion) and post-sale confusion.” (Pet. App. at A16–A-17 (citing 4 J. Thomas McCarthy, McCarthy on

10

Trademarks & Unfair Competition (“McCarthy”), §

23:7 (5th ed. 2018) (collecting cases on the issue)).)

Indeed, both the Eighth Circuit and its sister circuits

have acknowledged that the removal of the word

“purchasers” from the statute expanded the

protection to customer confusion at all stages of the

sales process.2 See, e.g., Insty*Bit, Inc. v. Poly-Tech

Indus., Inc., 95 F.3d 663, 672 (8th Cir. 1996) (“The

1962

amendment

included

confusion

of

nonpurchasers as well as direct purchasers . . .

Thus, an action for trademark infringement may be

based on confusion of consumers other than direct

purchasers, including observers of an allegedly

infringing product in use by a direct purchaser.”)

(emphasis added); see also Checkpoint Sys., Inc. v.

Check Point Software Techs., Inc., 269 F.3d 270, 295

(3d Cir. 2001) (noting that, prior to the 1962

amendment, “the Lanham Act only applied where

the use of similar marks was ‘likely to cause

confusion or mistake or to deceive purchasers as to

the source of origin of such goods or services’” (citing

Lanham Trade-mark Act of 1946, Pub. L. No. 79489, 50 Stat. 427, codified as amended at 15 U.S.C. §

1051 et seq.) (emphasis added)); Ferrari S.P.A. v.

Roberts, 944 F.2d 1235, 1245 (6th Cir. 1991) (“Since

Congress intended to protect the reputation of the

manufacturer as well as to protect purchasers, the

In doing so, the Eighth Circuit correctly concluded that

“adoption of the [initial interest] theory is consistent with the

overall practice of recognizing the varied nature of commercial

interactions and the importance of not cabining the jury’s

analysis of the likelihood of confusion factors.” (Pet. App. at A17.)

2

11

Act’s protection is not limited to confusion at the

point of sale.”); Marathon Mfg. Co. v. Enerlite Prods.

Corp., 767 F.2d 214, 221 (5th Cir. 1985) (noting that

Lanham Act was amended in 1962 “specifically to

allow any kind of confusion in support of a

trademark infringement action”).

Second, circuit courts that have addressed the

initial

interest

confusion

doctrine

under

circumstances similar to here have explicitly adopted

it. See Jim S. Adler, P.C. v. McNeil Consultants,

L.L.C., --- F. 4th ---, No. 20-10936, 2021 WL 3508713,

at *427 (5th Cir. Aug. 10, 2021) (noting that the

circuit has “held that initial interest confusion is

actionable

under

the

Lanham

Act”

and

acknowledging the possibility of initial interest

confusion in the context of search-engine

advertising); Groeneveld Transp. Efficiency, Inc. v.

Lubecore Int’l, Inc., 730 F.3d 494, 518 (6th Cir. 2013)

(“One does not have to be an economist to see that

such a deceitful creation of an initial interest is

harmful to consumer interests, brand-development

incentives, and efficient allocation of capital, even if

the confusion is ultimately dissipated by the time of

purchase.”); Australian Gold, Inc v. Hatfield, 436

F.3d 1228, 1238 (10th Cir. 2006) (“In this case, we

recognize another variant of potential confusion:

‘initial interest confusion.’”); Malletier v. Burlington

Coat Factory Warehouse Corp., 426 F.3d 532, 537 n.2

(2d Cir. 2005) (“The Lanham Act protects against

several types of consumer confusion, including . . .

initial interest confusion.”); Playboy Enters., Inc. v.

Netscape Commc’ns Corp., 354 F.3d 1020, 1025 (9th

12

Cir. 2004) (“Although dispelled before an actual sale

occurs, initial interest confusion impermissibly

capitalizes on the goodwill associated with a mark

and

is

therefore

actionable

trademark

infringement.”); Promatek Indus., Ltd. v. Equitrac

Corp., 300 F.3d 808, 812 (7th Cir. 2002), as amended

(Oct. 18, 2002) (holding trademark infringement

actionable “when a customer is lured to a product by

the similarity of the mark, even if the customer

realizes the true source of the goods before the sale

is consummated”); Checkpoint Sys., 269 F.3d at 295

(“We agree with the view that Congress’s

amendment of the Lanham Act in 1962 expanded

trademark protection to include instances in which a

mark creates initial interest confusion.”).3

Accordingly, certiorari is not necessary

because the Eighth Circuit Order falls well within

the parameters of the Lanham Act and aligns with

other court decisions. Simply put, the Court need

not adopt or reject pre-sale, initial interest

confusion; Congress has already written that basis

for liability into the Lanham Act.

The preeminent treatise on trademark law, McCarthy on

Trademarks & Unfair Competition, confirms the adoption of

initial interest confusion throughout the country. See McCarthy

§ 23:6 (“Most courts now recognize the initial interest confusion

theory as a form of likelihood of confusion which can trigger a

finding of infringement.”).

3

13

B.

No Supreme Court Review Is

Warranted Because There Is No

Conflict Between the Circuits.

Dires fails to demonstrate a conflict among

the circuits warranting this Court’s review. Dires’

Petition erroneously asserts that the initial interest

doctrine “has been rejected by the First, Fourth, and

Eleventh Circuits.” (Petition at i; see also id. at 3, 6.)

In reality, these circuits have either: (1) not

explicitly addressed initial interest confusion; or (2)

issued their decisions under the similar principle

that likelihood of confusion can occur at any time

during a transaction.

As to the First Circuit, Dires wrongly asserts

that the circuit has rejected the initial interest

doctrine. In fact, no First Circuit decision has

expressly addressed initial interest confusion;

rather, only district courts in that jurisdiction have

done so. Those courts have gone no further than

acknowledging the lack of initial interest authority

within the circuit or noting that, even if recognized,

the doctrine would be inapplicable to the particular

facts of the case. See, e.g., Smartling, Inc. v. Skawa

Innovation Ltd., 358 F. Supp. 3d 124, 141 n.9 (D.

Mass. 2019) (noting that the “First Circuit has yet to

adopt” the initial interest concept); Concordia

Partners, LLC v. Pick, No. 2:14-CV-009-GZS, 2015

WL 4065243, at *9 n.7 (D. Me. July 2, 2015) (same);

Moving & Storage, Inc. v. Panayotov, C.A. No. 1212262-GAO, 2014 WL 949830, at *4 (D. Mass. Mar.

12, 2014) (noting that “even if” the initial interest

doctrine was recognized, it was inapplicable because

14

“diversion, without any hint of confusion, is not

enough” (quoting Hearts on Fire Co. v. Blue Nile,

Inc., 603 F. Supp. 2d 274, 286 (D. Mass. 2009))).

Notably, one of the only district courts within the

First Circuit to address the initial interest doctrine,

in Hearts on Fire Co. v. Blue Nile, Inc., which Dires

cites, held that “initial interest confusion can

support a claim under the Lanham Act” and allowed

the plaintiff’s claim to move forward under an initial

interest theory. 603 F. Supp. 2d 274 at 287.

As to the Eleventh Circuit, Dires mistakenly

claims the jurisdiction has not adopted the initial

interest doctrine. In fact, decisions in the Fifth

Circuit prior to October 1981, which are precedential

in the Eleventh Circuit,4 applied the doctrine to

reach findings of liability. In Armstrong Cork Co. v.

World Carpets, Inc., the Fifth Circuit cited the

Lanham Act’s 1962 amendment to hold that “[a]ny

kind of confusion will now support an action for

trademark infringement.” 597 F.2d 496, 501 n.5 (5th

Cir. 1979). Likewise, in Roto-Rooter Corp. v. O’Neal,

the Fifth Circuit found confusion likely as a matter

Following the creation of the Eleventh Circuit in 1981 and

redistricting of a portion of the Fifth Circuit into the Eleventh

Circuit, the Eleventh Circuit adopted all Fifth Circuit cases

issued prior to October 1981 as precedential in the Eleventh

Circuit. Bonner v. City of Prichard, 661 F.2d 1206, 1207 (11th

Cir. 1981) (en banc) (“We hold that the decisions of the United

States Court of Appeals for the Fifth Circuit (the “former Fifth”

or the “old Fifth”), as that court existed on September 30, 1981,

handed down by that court prior to the close of business on that

date, shall be binding as precedent in the Eleventh Circuit, for

this court, the district courts, and the bankruptcy courts in the

circuit.”).

4

15

of law, despite undisputed testimony that customers

knew the defendant’s identity by the time they made

their purchases. 513 F.2d 44, 46 (5th Cir. 1975); see

also St. Charles Mfg. Co. v. Mercer, 737 F.2d 891,

892 (11th Cir. 1983) (liability for sales of third-party

goods after defendant initially had attracted consumers using advertisements referring to plaintiff’s

goods).

The initial interest doctrine therefore has

strong roots in the Eleventh Circuit. See, e.g.,

Foxworthy v. Custom Tees, Inc., 879 F. Supp. 1200,

1215–16 (N.D. Ga. 1995) (“This ‘getting-the-foot-inthe-door’ aspect is significant to the likelihood of

confusion analysis because the relevant concern is

not confusion through a side-by-side comparison, but

whether confusion is likely when only one product,

such as the one with the foot in the door, is the only

product on the shelf.”). Dires’ argument that the

Eleventh Circuit itself has affirmatively rejected

initial interest confusion rests on a single opinion

from that court, which, rather than rejecting the

doctrine, serves only as an example of the court

declining to address the doctrine under the

particular factual circumstances before it. See

Suntree Techs., Inc. v. Ecosense Int’l, Inc., 693 F.3d

1338, 1347 (11th Cir. 2012) (“Because Suntree failed

to present evidence of an intent to mislead or

confuse, or of actual confusion, we need not reach the

question whether initial interest confusion is

actionable in the Eleventh Circuit.”). Dires’ proffered

examples of Eleventh Circuit case law otherwise

consist of two district court opinions that are not

16

germane to a circuit split and, in any case, do not

affirmatively reject initial interest confusion as a

basis for liability. See USA Nutraceuticals Grp., Inc.

v. BPI Sports, LLC, 165 F. Supp. 3d 1256, 1268 (S.D.

Fla. Feb. 22, 2016) (noting that while the initial

interest has not been recognized, uncertainty aside,

the conduct at issue did “not create a likelihood of

confusion”); Vital Pharm., Inc. v. Am. Body Bldg.

Prods., LLC, 511 F. Supp. 2d 1303, 1318 (S.D. Fla.

2007) (noting only that the Eleventh Circuit “has not

embraced” the initial interest doctrine).

Finally, as to the Fourth Circuit, each decision

cited by Dires to have affirmatively addressed, and

declined to explicitly adopt, the initial interest

doctrine is inapplicable here and does not reveal a

circuit split. Dires’ Petition first cites to Lamparello

v. Falwell, 420 F.3d 309, 316 (4th Cir. 2005) as

purportedly rejecting the initial interest doctrine.

The Lamparello decision, however, is limited to the

unique facts of that matter—facts not present in this

case. Notably, Lamparello addressed confusion in

the use of infringing domain names only. Id. at 311–

12. It did not address search engine advertising, let

alone the type of intentionally misleading

advertising at issue here. Even so, the Fourth

Circuit made clear in Lamparello that initial interest

confusion could not apply because the claims did not

involve advertising between competitors, the parties

did not deal in similar goods or services, and neither

the plaintiff nor defendant was a commercial party.

Id. at 315. Here, the infringing advertising at issue

takes place between two commercial entities who

17

compete against one another and who deal in similar

goods and services. Lamparello is different on its

facts and does not create a circuit split.

Dires also cites to Passport Health, LLC v.

Avance Health Sys., Inc., 823 F. App’x 141, 150 (4th

Cir. 2020), as amended, (Aug. 17, 2020), in support of

its argument, and incorrectly claims the case is

“strikingly similar to this one.” (Petition at 7.) As an

initial matter, Passport Health is unpublished, not

precedential, and, therefore, does not create a circuit

split. See Hogan v. Carter, 85 F.3d 1113, 1118 (4th

Cir. 1996); see also Michael Hannon, A Closer Look

at Unpublished Opinions in the United States Courts

of Appeals, 3 J. App. Prac. & Process 199, 231 (2001)

(“In the case of a circuit split, there should be

published opinions from circuits on both sides of the

split.”). Further, as with Lamparello, Passport

Health is distinguishable and inapplicable to the

facts at issue here. Passport Health addressed the

potential for initial interest confusion only as it

relates to the similarity of the marks, without

considering the context of the mark’s use, and

without addressing any other factors. See Passport

Health, 823 F. App’x at 149–51. That is not the

situation in this case. Here, the confusion and

deception persisted beyond a search results page,

and there is ample evidence of actual confusion both

before and after consumers reached Dires’ website.

In fact, contrary to Dires’ argument, the

Fourth Circuit has not restricted likelihood-ofconfusion determinations to the point of sale, which

is the issue in this case. Indeed, in Rosetta Stone

18

Ltd. v. Google, Inc., that court reversed summary

judgment on a trademark infringement claim

against the plaintiff. 676 F.3d 144, 163, 165 (4th Cir.

2012). The court relied upon actual confusion

evidence involving online advertising without

restricting a finding of likelihood of confusion to any

particular time. Id. at 156–59. Here, as in Rosetta

Stone, there is significant evidence that consumers

were not only confused when viewing the online

advertisements, but remained confused after viewing

Dires’ website. See id. at 156–57. Indeed, this case

has significantly more evidence of actual confusion—

existing all of the way through the sales process—

than in Rosetta Stone, as well as evidence of an

intent to deceive, which was lacking in Rosetta

Stone. Compare id. at 156 with Pet. App. at A-21.

Thus, the holding in Rosetta Stone reaffirms that

there is no circuit split arising from Fourth Circuit

case law that the Court needs to address.

Lastly, even the Fourth Circuit has recognized

that a “bait and switch” scheme such as this one is

indeed actionable trademark infringement. See Elvis

Presley Enters., Inc. v. Capece, 141 F.3d 188, 204

(4th Cir. 1998) (finding trademark infringement

based upon defendant suggesting its bar was

associated with Elvis Presley, which “brings patrons

in the door” who “may stay, despite realizing that

the bar has no relationship with [Elvis]”). Thus, the

Fourth Circuit does not limit potential infringement

to any particular time, but instead assesses the

19

totality of the circumstances and the potential harm

when determining if confusion is likely.5

Clearly the First, Fourth, and Eleventh

Circuits have not “rejected” or “outright declined to

adopt” the initial interest doctrine or rejected presale confusion as being actionable, as Dires asserts.

(Petition at i, 3.) At most, the Fourth Circuit has

articulated a slightly different formulation of the

same legal rule, but that does not constitute a circuit

split on the same important question of federal law

worthy of Supreme Court review. As Justice Breyer

states, the Court is not interested in “cases that

involve not actual divides among the lower courts,

but merely different verbal formulations of the same

underlying legal rule.” Stephen G. Breyer,

Reflections on the Role of Appellate Courts: A View

from the Supreme Court¸ 8 J. App. Prac. & Process

91, 96 (2006).

Here,

the

standard

for

trademark

infringement is uniform in all circuits—whether the

use of a mark is “likely to cause confusion, or to

5 This “totality of circumstances” approach set forth in Passport

Health is aligned with the Eighth Circuit Order. Specifically,

the Eighth Circuit acknowledged that confusion is not required

at any particular point in time, and that the factfinder must

consider all circumstances surrounding a potential transaction

to determine whether confusion is indeed likely. (See Pet. App.

at A-17 (“If we do not generally impose strict constraints on the

jury’s nuanced assessment of how or whether the consuming

public might be confused, it would be odd to presume that all

commercial interactions are alike or that, in all settings,

trademarks are worthy of protection only in the few moments

before the consummation of a transaction.”).)

20

cause mistake, or to deceive.” 25 U.S.C. § 1114(1)(a).

Although different circuits may articulate different

factors in determining trademark infringement, the

standard always remains the same: whether certain

behavior is likely to cause confusion. The Court

simply need not settle the issue of the initial interest

doctrine when the standard for trademark

infringement is uniform and there is no actual

circuit split on the issue.

C.

No Compelling Reasons Exist for

the Court to Review an Order that

Was Unique to the Facts of the

Case, Including “Ample” Evidence

of Confusion.

Supreme Court Rule 10 makes clear that the

Court will only grant a petition for certiorari for

“compelling reasons.” But no such reasons exist

when, as here, the decision the Petition seeks to

have reviewed rests on the particular facts of the

case at hand and is being remanded for additional

factual findings.6

Many of the cases Dires cites reflect the exact

same concept—holdings limited to their facts. More

specifically, the cases that purportedly “narrowed”

the initial interest doctrine only did so because no

actual confusion was shown. See 1-800 Contacts, Inc.

v. Lens.com, Inc., 722 F.3d 1229, 1246–47 (10th Cir.

Dires acknowledges this, stating that the Eighth Circuit

found that “initial interest confusion could apply in this

Internet marketing case.” (Petition at 5 (emphasis added).)

6

21

2013) (finding that small percentage of actual initial

confusion did not support likelihood of confusion);

Network Automation, Inc. v. Advanced Sys. Concepts,

Inc., 638 F.3d 1137, 1149 (9th Cir. 2011) (“[B]ecause

the sine qua non of trademark infringement is

consumer confusion, when we examine initial

interest confusion, the owner of the mark must

demonstrate likely confusion.”); Toyota Motor Sales,

U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1175–83 (9th

Cir. 2010) (issuing decision on nominative fair use

without addressing actual confusion, since plaintiff

presented no evidence of actual confusion); Savin

Corp. v. Savin Grp., 391 F.3d 439, 459 (2d Cir. 2004)

(finding insufficient evidence of actual confusion);

Playboy Enters., Inc. v. Netscape Commc'ns Corp.,

354 F.3d 1020, 1027 (9th Cir. 2004) (finding that a

“high likelihood of initial interest confusion . . .

among consumers . . . generates a genuine issue of

material fact on the actual confusion issue”); Moore

v. Doe, No. CV 20-6569-DMG (SPX), 2020 WL

6804508, at *3 (C.D. Cal. Oct. 13, 2020) (noting only

a narrowing when confusion is not present); Ducks

Unlimited,

Inc.

v.

Boondux,

LLC,

No.

214CV02885SHMTMP, 2017 WL 3579215, at *28

(W.D. Tenn. Aug. 18, 2017) (finding initial interest

was not actionable because plaintiff did not

demonstrate confusion or intent); Ascentive, LLC v.

Opinion Corp., 842 F. Supp. 2d 450, 465 (E.D.N.Y.

2011) (finding initial interest confusion unlikely due

to lack of likely confusion or competition). (See

Petition at 9–15.)

22

Unlike in Dires’ cited cases, here “ample”

evidence of confusion supported the Eighth Circuit’s

ruling.7

(See Pet. App. at A-21.) In such

circumstances, when there is evidence of actual

confusion, there is strong proof of a likelihood of

confusion. See McCarthy § 23:13 (“Any evidence of

actual confusion is strong proof of the fact of a

likelihood of confusion.”); see also Kemp v. Bumble

Bee Seafoods, Inc., 398 F.3d 1049, 1058 (8th Cir.

2005) (“When, as here, it is shown by an alleged

infringer’s own salesman that even sophisticated

professional buyers experienced actual confusion,

such evidence supports a finding that confusion is

likely.”); Kos Pharm., Inc. v. Andrx Corp., 369 F.3d

700, 720 (3d Cir. 2004) (“The rarity of [actual

confusion evidence] makes even a few incidents

highly probative of the likelihood of confusion.”);

Hubbard Feeds, Inc. v. Animal Feed Supplement,

Inc., 182 F.3d 598, 602 (8th Cir. 1999) (“Although

evidence of actual confusion is not necessary for a

finding that a likelihood of confusion exists, it is

perhaps the most effective way to prove a likelihood

of confusion.”); World Carpets Inc. v. Dick Littrell’s

New World Carpets, 438 F.2d 482, 489 (5th Cir.

1971) (“There can be no more positive or substantial

proof of the likelihood of confusion than proof of

actual confusion.”).

Attempting to side-step this evidence of

confusion, Dires purposefully conflates the concept of

In light of such evidence, Dires’ reliance on this Court’s

Transunion v. Ramirez case is misplaced. 141 S. Ct. 2190

(2021). (See Petition at 14.)

7

23

trademark infringement based exclusively on a

party’s purchase of trademarks as keywords for

advertising (which is not at issue here), with Dires’

undertaking of a multi-faceted “bait and switch”

advertising scheme. (See Petition at 15–17.) Sleep

Number has never argued, nor did the Eighth

Circuit hold, that purchasing trademarks for

keywords, in and of itself, constitutes trademark

infringement. Indeed, the Eighth Circuit expressly

acknowledged that it was not deciding whether the

purchase of keywords was in and of itself actionable.

(See Pet. App. at A-5.) Dires’ attempts now to

confuse the issues and argue initial interest

confusion harms a party’s ability to advertise using

keywords is simply a red herring, as Dires’ actions

went well beyond the simple use of keywords. (See

id. at A-21 (emphasizing Dires’ intent in using its

advertising in a misleading way and the resulting

confusion).)

Dires’ cases and arguments do not change the

simple fact that the Eighth Circuit’s ruling was

limited to the facts at issue, including the actual

evidence of confusion and Dires’ “bait and switch”

tactics. Because cases decided on different facts do

not provide contrary results for the Court to review,

there are no compelling reasons for the Court to

grant certiorari.

24

II.

DIRES’ POLICY-BASED ARGUMENTS

DO NOT NECESSITATE SUPREME

COURT REVIEW

In a last-ditch effort to obtain this Court’s

review, Dires makes purported “policy” arguments

for review. These arguments ignore the context of

the Eighth Circuit Order and do not compel the

Court’s individualized review of this case.8

First, a repetitive theme in Dires’ Petition is

an argument that the Eighth Circuit Order has

broad effects and could result in expanded liability

for internet marketing conduct. (See Petition at 1, 6,

9–14.) As detailed above, however, this argument is

misguided; the Eighth Circuit’s decision aligns with

both long-standing federal trademark law, as well as

the current state of the law across the country.

(Supra, Reasons for Denying the Petition § I.A.) In

other words, the Lanham Act already provides for

the liability Dires argues against. Further, the

This Court has consistently denied petitions for writs of

certiorari regarding the initial interest doctrine, suggesting it

has repeatedly determined that no policy considerations have

warranted consideration of the doctrine before, and the Petition

fails to demonstrate that any exist now. See, e.g., Multi Time

Mach. Inc. v. Amazon.com, Inc., 804 F.3d 930, 937 (9th Cir.

2016), cert. denied, 577 U.S. 1144 (2016); Sensient Techs. Corp.

v. SensoryEffects Flavor Co., 613 F.3d 754, 766 (8th Cir. 2010),

cert. denied, 562 U.S. 1270 (2011); Lamparello v. Falwell, 420

F.3d 309, 316 (4th Cir. 2005), cert. denied, 547 U.S. 1069

(2006); 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400,

409 (2d Cir. 2005), cert. denied, 546 U.S. 1033 (2005); Gibson

Guitar Corp. v. Paul Reed Smith Guitars, LP, 423 F.3d 539,

553 (6th Cir. 2005), cert. denied, 547 U.S. 1179 (2006).

8

25

Eighth Circuit’s ruling arises from and turns on the

unique facts of this case—involving “ample” evidence

of confusion. (Supra, Reasons for Denying the

Petition § I.C.) As such, the Eighth Circuit Order

does not establish an overly-broad formulation of the

initial interest doctrine, in the internet context or

otherwise, and there is no compelling reason for the

Court to step in.

Second, Dires argues that “consumers’

interest” in “useful” online advertising requires the

Supreme Court to “reconsider” or “revisit” the initial

interest doctrine. (Petition at 14, 17.) Online

advertising schemes like Dires’ that result in “ample

evidence of actual confusion” are simply not “useful”

to the consumers or serve their “interest” in any

way. To the contrary, Dires’ conduct undermines the

consumer as the significant confusion evidence in

this case makes clear. Moreover, Dires’ purported

policy argument ignores the plain language of the

Lanham Act, which protects against customer

confusion at all stages of the sales process, and

disregards the actual confusion present in this case,

which is contrary to any consumer’s interest. Dires’

argument also hinges on two questions of fact unique

to the Eighth Circuit’s ruling—(1) whether

consumers were confused by Dires’ advertising at

the point of click, and (2) whether consumers may be

confused when shopping for expensive mattresses

online. (See Petition at 14–17.) Such fact-based

arguments, contingent on a district court’s review of

the particular facts of a case, are inappropriate for

Supreme Court review and do not warrant review

26

here. See Sup. Ct. R. 10 (“A petition for a writ of

certiorari is rarely granted when the asserted error

consists of erroneous factual findings . . . .”).

Accordingly, the Court should reject Dires’

policy-based arguments that it is necessary to review

or reconsider this issue of federal law, which the

Eighth Circuit correctly applied to the unique facts

at issue.

CONCLUSION

Based on the foregoing, Sleep Number

respectfully requests the Court deny Dires’ Petition

for Writ of Certiorari.

Respectfully submitted this 14th day of

October, 2021.

/s/ Andrew S. Hansen

Andrew S. Hansen

Counsel of Record

Elizabeth A. Patton

FOX ROTHSCHILD LLP

Two22 Building, Suite 2000

222 South Ninth Street

Minneapolis, MN 55402-3338

612.607.7000

ahansen@foxrothschild.com

epatton@foxrothschild.com

Attorneys for Respondents