H&R Block Eastern Enters. v. Intuit, Inc.,

The "confusion" element in determining infringement of a registered trademark only includes “confusion as to source, origin, sponsorship, affiliation, or endorsement of a good or service.”

Opinion (Gaitan, Jr.): H&R Block Eastern Enterprises, Inc. ("H&R Block") claimed infringement against Intuit, Inc. (Intuit) for H&R Block’s registered trademark “H&R Block.” Two commercials promoting Intuit’s ‘TurboTax’ software unfavorably compare H&R Block’s services to ‘TurboTax’, and the commercials further claim that last year ‘TurboTax’ was trusted among more American federal income tax filers than all other in-store tax preparation services combined. H&R Block asserted that the commercials infringed upon the registered trademark “H&R Block” under § 32(1)(a) of the Lanham Act. In a trademark infringement case, a plaintiff must sufficiently plead that the defendant’s use of the trademark is “likely to produce confusion in the minds of consumers about the origin of the goods or services in question” in order to survive a motion to dismiss under 12(b)(6) of the Federal Rules of Civil Procedure. The court found that H&R Block’s claim erroneously relied upon cases from outside the Eighth Circuit’s jurisdiction that put forth an overbroad interpretation of the word “confusion.” The Eighth Circuit’s rulings on infringement of a registered trademark do not expand the definition of “confusion” under 15 U.S.C. § 1114 so as to include ‘general confusion’ about the quality and nature of a registered product or service, but only includes “confusion as to source, origin, sponsorship, affiliation, or endorsement of a good or service.” The Court agreed with Intuit’s argument that H&R Block had failed to state a claim upon which relief could be granted under infringement of a registered trademark. Accordingly, the Court GRANTED the Intuit's motion to dismiss.