## Facts

- Beacon Mutual, created by Rhode Island in 1990 as the workers’ compensation insurer of last resort, began selling workers’ compensation insurance in 1992 under “Beacon” marks and a lighthouse logo.
- In June 2001, a national commercial insurer rebranded as “OneBeacon” and adopted a lighthouse logo; it competed with Beacon Mutual in Rhode Island’s workers’ compensation market.
- Beacon Mutual sued under Lanham Act § 43(a) and state trademark law, alleging the “OneBeacon” name and lighthouse imagery created a likelihood of confusion.
- Beacon Mutual produced evidence of 249 confusion incidents over about sixteen months, largely involving misdirected premium checks, claim materials, medical records, and legal correspondence.
- OneBeacon argued the incidents were legally insignificant because they mostly involved non-purchasing personnel and did not show lost customers or diverted sales.

## Issues

1. Whether summary judgment was proper where Beacon Mutual offered evidence from which a factfinder could infer a likelihood of confusion under Lanham Act § 43(a).
2. Whether confusion and misdirection involving non-purchasers (e.g., clerical staff, providers, attorneys) is legally relevant to likelihood of confusion, even without proof of lost sales.

## Decision

- The First Circuit vacated the grant of summary judgment for OneBeacon and remanded.
- The court held that the district court applied an unduly narrow view of “relevant” confusion by discounting confusion among non-purchasers.
- The court held that the 249 incidents of actual confusion were probative of likelihood of confusion and could support a jury finding for Beacon Mutual.
- The court rejected any requirement that Beacon Mutual show actual diversion of business or quantifiable lost sales to establish actionable likelihood of confusion.

## Legal Principles

- Likelihood of confusion under Lanham Act § 43(a) is not limited to confusion at the point of purchase or to confusion only among ultimate purchasing decisionmakers.
- Confusion experienced by non-purchasing participants in commercial interactions can be legally relevant because it may harm goodwill and disrupt business relationships.
- Evidence of actual confusion is highly probative of likelihood of confusion and generally should not be discounted on summary judgment when it supports competing inferences.
- Proof of actual lost sales is not required to establish liability for likelihood of confusion; such proof bears more directly on damages than on whether confusion is actionable.

## Conclusion

The First Circuit held that extensive evidence of real-world misdirection and confusion—though often involving non-purchasers and not tied to specific lost sales—can be legally relevant and sufficient to defeat summary judgment on Lanham Act and related trademark claims, requiring further proceedings under the correct likelihood-of-confusion standard.


Beacon Mut. Ins. Co. v. OneBeacon Ins. Grp., 376 F.3d 8 (1st Cir. 2004)