A lawsuit filed by 1-800 Contacts against online retailer Warby Parker has been dismissed by a federal judge.
At issue was Warby Parker’s use of 1-800 Contacts’ branded keywords to redirect searchers to the Warby Parker online store, thereby “confusing” potential customers.
The decision. Kevin Castel, senior judge of the U.S. District Court for the Southern District of New York, ruled against 1-800 Contacts, saying that customers are unlikely to think that they’re buying from 1-800 Contacts when they click on a Warby Parker ad.
Castel also said the companies’ trademarks were too dissimilar to confuse contact-lens buyers, who are likely to pay close attention to what they are purchasing and noted that Warby Parker’s name is clearly displayed in the search results and on its website.
Castel added that prospective customers will take the time to figure out that the search results link to Warby Parker’s website, and will therefore discern that they are buying from contacts from Warby Parker’s website.
In my own Google search, I was unable to mimic the results that this suit was based on and didn’t find any Warby Parker ads initially.
1-800 Contacts response. A spokesperson for 1-800 Contacts said after the ruling that the decision by the judge was “inconsistent with several well-established legal principles,” and that the company is “evaluating appropriate next steps, including whether to appeal.”
You can read more about the ruling from Reuters here.
Sounds familiar. Competitive keyword advertising lawsuits rarely turn out well for the trademark owners in court. Earlier this year we reported on an attempt by Edible Arrangements to sue Google over theft, conversion and racketeering. Edible Arrangements lost.
Why we care. This is the latest reminder that, in general, using a competitor’s trademarks in PPC ads is not trademark infringement from a legal standpoint. You can visit the Google trademark help document if you find yourself facing a similar issue. Still, tread carefully if you use another brand’s keywords in your ad strategy if you want to steer clear of fighting lawsuits.
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