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Tenth Circuit Declares Use of Competitor’s Mark in Google® AdWords Does Not Create Confusion

The use of a competitor’s trademark in the Google AdWords program has been the source of a number of decisions over the past two to three years. Recently the Tenth Circuit Court of Appeals addressed a district court’s decision on summary judgment that Lens.com’s (and/or its affiliates’) purchase of “1800Contacts” as a keyword trigger did not constitute trademark infringement.

1-800 Contacts had sued Lens.com for trademark infringement under the theory of initial interest confusion as well as secondary liability based upon the actions of its affiliates. The district court granted Lens.com’s motion for summary judgment and the Tenth Circuit, as to the claim of direct infringement, found that there was no question of material fact that the purchase of AdWords would create a likelihood of initial interest confusion. The Court’s decision focused on data that were generated by Google AdWords that showed at most a Google user clicked a Lens.com affiliated ad 1.5% of the time when showed an ad triggered by a search for “1800Contacts.” The Court also relied upon its conclusion that an Internet user who entered a search using a trademark as a keyword was likely to exercise some degree of care in determining whether the ad being clicked on was for 1-800 Contacts or for a competitor. No vicarious liability claims could stand as there was no evidence that the Lens.com affiliates who may have used the 1800Contacts did so on instructions from Lens.com itself. Contributory infringement, however, was possible as there was evidence that Lens.com did know of possible infringement by its affiliates and took no action.  

1-800 Contacts, Inc. v. Lens.com Inc.
U.S. Court of Appeals, Tenth Circuit
July 2013

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