Tag: keyword advertising

Distr. Court of Arizona 8 maggio 2023, Case 2:21-cv-01540-DG, Lerner & Rowe PC,
v. Brown Engstrand & Shely LLC, et al.:

<<The three relevant screenshots produced by Plaintiff show clear labeling of Defendants’ entry, using Defendants’ name and prominently labelled as an “Ad,” and with no use of Plaintiff’s trademark or confusingly similar language or content.

Reasonably savvy Internet users with a strong incentive to select the right lawyer would not be confused by these clearly labeled ads into believing that Defendants were Plaintiff.

Plaintiff produces no survey evidence showing a likelihood of confusion, and its evidence that, at most, 0.215% of all consumers exposed to Defendants’ ads were in fact confused by them is simply not enough to show a likelihood. Two-tenths of one percent is not an appreciable or significant portion of consumers exposed to Defendants’ keyword-generated ads. Plaintiff does have a strong mark, but no reasonable jury viewing Plaintiff’s thin evidence could find that potential clients viewing Defendants’ clearly labeled ads are likely to be confused into thinking Defendants were in fact Plaintiff.
The 25 irrelevant screenshots produced by Plaintiff – screenshots taken during a time when Defendants’ were not buying Plaintiff’s name as a keyword – reinforce the Court’s conclusion. Each of the irrelevant screenshots was produced by searching for “lerner & rowe,” “lerner rowe,” or a variation of these words. Doc. 68-3.

And even though Defendants had not purchased Plaintiff’s name as a keyword, Defendants’ ads appeared in the search results along with ads for other personal injury law firms.

Google’s algorithm apparently called up similar law firms when a specific law firm was searched for. See, e.g., Doc. 57-6 at 15 (including an ad for azinjuredworker.com), 17 (getlawyersnow.com and palumbowolfe.com), 18 (arjashahlaw.com), 20 (getlawyersnow.com), 22 (hutzler law.com), 28 (larryhparkerphoenix.com). These screenshots show what Internet users find when searching on Google for Lerner & Rowe – ads for a variety of law firms.

As with all searches on Google, the consumer then must scroll through the returns to decide which entries are worth clicking on.

Because Defendants’ entries use their name and are clearly labeled “Ad,” the consumers would know they are seeing an ad for another law firm, as would be true with the other firms seen in the screenshots. The Internet user would then, as the Ninth Circuit has recognized, “skip from site to site, ready to hit the back button whenever they’re not satisfied with a site’s contents.” Toyota Motor Sales, 610 F.3d at 1179. This is not confusion; this is typical Internet searching. And because “the owner of the mark must demonstrate likely confusion, not mere diversion,” Plaintiff has presented insufficient evidence to survive summary judgment. Network Automation, 638 F.3d at 1149>>, P. 19-20.

(notizia e link alla sentenza dal blog del prof. Eric Goldman)

Nellla sempre attuale fattispecie di keyword advertising (k.a.) , su cui c’è ampia giurisprudenza anche nazionale, interviene il Trib. del distretto sud di New York, 27 giugno 2022, Case 1:21-cv-06966-PKC , 1-800 Contacts inc. c. JAND, INC. d/b/a WARBY PARKER.

Il secondo usa nel k.a. il nome “1800 contacts” (sono aziende nel setore delle lenti a contatto) e il primo tenta di censurarlo, anche perchè la landing page del’inserzionista sarebbe confusoria.

La corte rigetta con decisione interessante,  data la buona analisi dei fattori da considerare per emettere il giudizio di confondibilità per il diritto usa.

Le parti non contestano che l’uso nel k.a. costituisca “uso” secondo il Lanham Act, p. 7.

Qui iunteressa il punto logicamente seguente, quello della confondiblità. Infatti è forse non scontato quanto afferma la corte e cioè che  il paragone tra marchi va fatto col marchio reale dell’inserzionista, non con quello del competitor (attore in causa) che egli usa nel keyword advertising: per cui i marchi sono confondibilissimi, essendo sostanzialmente uguali. <<Second, as to the similarity of the marks, the Court concludes that the marks at issue are substantially different. Although 1-800 Contacts submits that “the marks used by the parties are identical” because Warby Parker and 1-800 Contacts are both using the 1-800 Contacts Marks, this is not the relevant analysis for determining the likelihood of consumer confusion in the context of search term advertising. While Warby Parker “uses” the 1-800 Contacts Marks by bidding on search results for the marks, the crux of 1-800 Contacts’s claims here is that after the search results for the 1-800 Contacts Marks are displayed to the consumer, there is an appreciable number of consumers who cannot discern, either before or after clicking Case 1:21-cv-06966-PKC Document 40 Filed 06/27/22 Page 10 of 18 on the paid links to Warby Parker’s website, that the contacts being sold by Warby Parker on their website are actually unrelated to 1-800 Contacts or the 1800contacts.com website.
In this context, the marks to be compared are the 1-800 Contacts Marks and the “Warby Parker” mark. In so comparing, the Court notes that the 1-800 Contacts Marks at issue are all variants of “1-800 Contacts,” presented in the format of a toll-free number emphasizing one specific product: contact lenses. In contrast, “Warby Parker” lacks any references to a phone number (or numbers generally) or a specific product. Finally, as the parties themselves note, 1-800 Contacts is strongly associated with only contact lenses, while Warby Parker is strongly associated with eyewear, such as eyeglasses and sunglasses. The “History” page of the Warby Parker website, cited in the Complaint also emphasizes Warby Parker’s sale of eyewear. (Compl. ¶ 49.) >>

La corte nega poi la confondibilità nella landing page del convenuto, ove il suo marchio sarebbe apposto in modo sufficientemente visibile.