In the trademark context, “reverse confusion” is a legal theory, not a separate claim, and so it can be raised in opposition to summary judgment even though it was not separately alleged in the complaint. Plaintiff stated a viable claim for infringement of its trademarks “All-in-One” and “The Write Choice” for promotional products when BIC used a promotional products catalogue using the phrase “All-in-One” and “The Write PEN Choice for 30 years” in advertising its products. In opposing BIC’s summary judgment motion, plaintiff adequately supported its claim by presenting evidence of “reverse confusion”—that is, that consumers thought plaintiff’s products were manufactured or distributed by BIC as a result of BIC’s use of the trademarked phrases. Reverse confusion is a theory, not a separate claim and so need not be separately alleged in the complaint. Hence, the evidence had to be considered in opposition to BIC’s summary judgment motion.
Ninth Circuit Court of Appeals (Smith, M., J.); July 7, 2017; 2017 WL 2884399