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Using Competitor’s Trademark for Google AdWords


By
Smith & Hopen PA

The U.S. 10th Circuit Court of Appeals found no trademark infringement when LENS.com used the 1800CONTACTS trademark in their Google AdWords. Three key points of determination:

  1. Low Click Rate: Over 8 months, use of the 1800CONTACTS keyword produced 1,626 impressions (showing on the search result screen). However, these were only clicked 25 times in that 8 month period (1.5%).
  2. Only a Moderately Strong Mark: Although 1800CONTACTS is an incontestable federal registration it includes the generic term “contacts” in the composite and the ubiquitous integer “800” associated with toll-free telephone numbers.
  3. Differences in two Marks: At least to claims of direct infringement, the resultant paid advertisements stemming from the 1800CONTACTS search displayed the LENS.com brand which is substantially different from 1800CONTACTS.

The ultimate question in these cases is whether a likelihood of confusion exists. The Court noted the distinction between the appearance of sponsored advertising (shaded background) and “organic results” (white background) and presume consumers understand the distinction in results.

11-4114.pdf_p_L.pdf (94.08 kb)






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