Trademarked Keywords: Am I Infringing or Not?
What’s the deal with buying or selling someone’s trademark as a keyword? Is it allowed? Or is it trademark infringement? There used to be a lot of debate about this issue. It’s still not entirely settled and the answer is very dependent on the facts of the case. But there is a lot more clarity than there used to be. Recent keyword cases provide a lot of guidance on the use of trademarks as keywords and when such use constitutes trademark infringement.
Using Trademarks as Keywords Is Use in Commerce
When keyword trademark infringement cases were first litigated, a common defense was that the defendant was not using the plaintiff’s trademark in commerce. This argument has been emphatically rejected.
Whether a defendant is purchasing the plaintiff’s trademark as a keyword for advertisements on third party search engines or using an automated system to generate keywords to produce listings on its own site or in its own promotional emails, using a plaintiff’s trademark as a keyword constitutes use in commerce. Lasoff v. Amazon.com Inc., 2017 U.S. Dist. LEXIS 11093, *13-16 (W.D. Wash. Jan. 26, 2017); Concordia Partners, LLC v. Pick, 2015 U.S. Dist. LEXIS 86214, *19 n.6 (D. Me. 2015); Alzheimer’s Foundation v. Alzheimer’s Disease and Related Disorders Association, Inc., 2015 U.S. Dist. LEXIS 84172, *15-16 (S.D.N.Y. 2015) (“no ‘meaningful difference’ between a search engine’s act of selling to an advertiser and the advertiser’s action in purchasing the benefit from the use of a trademark”).
OK – so now that use is settled, the next question is whether that use creates a likelihood of confusion. In other words, is it trademark infringement?
Keywords and Initial Interest Confusion
In most keyword trademark infringement cases, you will see the plaintiff arguing that the defendant’s use of the mark as a keyword has caused initial interest confusion. Initial interest confusion occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated. EarthCam, Inc. v. OxBlue Corp., 49 F. Supp. 3d 1210, 1241 (N.D. Ga. 2014). While not all Circuits have recognized the initial interest confusion doctrine, many have.
Moreover, a trademark infringement claim based on initial interest confusion can be brought under the Lanham Act if a defendant purchases a plaintiff’s trademark as a keyword to divert users to the defendant’s website. Id.; Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1154 (9th Cir. 2011); 1-800-Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1247 (10th Cir. 2013).
But some courts—like the Second Circuit—require a showing of intentional deception for initial interest confusion in the keyword context:
because consumers who are diverted on the Internet can more readily get back on track if the notice a discrepancy, the initial interest doctrine generally requires ‘a showing of intentional deception.’”
Alzheimer’s, 2015 U.S. Dist. LEXIS 84172, *15-16 (S.D.N.Y. 2015) (citing Savin Corp. v. Savin Grp., 391 F.3d 439, 457 (2d Cir. 2004)).
Keywords and Likelihood of Initial Interest Confusion
Trademark infringement based on keyword ads is an area of trademark law that is still evolving. In fact, one court has recently called it “under construction.” Concordia, 2015 U.S. Dist. LEXIS 86214, at *22.
The New Labeling, Appearance, and Context Factor
The assessment of whether a defendant’s use of a plaintiff’s trademark as a keyword creates a likelihood of confusion is a little bit different. Some courts have even termed the new test “likelihood of initial interest confusion.” EarthCam, 49 F. Supp. 3d at 1210.
This version of the likelihood of confusion test used in keyword trademark infringement cases revolves around four factors: (1) strength of the mark, (2) evidence of actual confusion, (3) the type and degree of care likely to be exercised by the purchaser, and (4) the labeling and appearance of the advertisements and the surrounding context of the screen displaying the results page. Id.; Network Automation, 638 F.3d at 1154.
And in case you don’t recognize that last factor from the old-school likelihood of confusion test, that’s because it’s a brand-spanking new factor rolled out for just these keyword infringement special occasions. And according to both the Ninth Circuit and the Tenth Circuit, the last factor—the labeling and appearance of the advertisements and the surrounding context of the screen displaying the results page—is the most important factor in determining whether a likelihood of confusion exists in keyword infringement cases. Id.; see also Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d 930, 936 (9th Cir. 2015) (factor outside the eight-factor Sleekcraft factor is “particularly important”).
Drilling Down on the Labeling, Appearance, and Context Factor
In Hearts on Fire, the District of Massachusetts appears to have elaborated on how to evaluate the context and content appearing on screen:
[T]he likelihood of confusion will ultimately turn on what the consumer saw on the screen and reasonably believed, given the context. This content and context includes: (1) the overall mechanics of web-browsing and internet navigation, in which a consumer can easily reverse course; (2) the mechanics of the specific consumer search at issue; (3) the content of the search results webpage that was displayed, including the content of the sponsored link itself; (4) downstream content on the Defendant’s linked website likely to compound any confusion; (5) the web-savvy and sophistication of the Plaintiff’s potential customers; (6) the specific context of a consumer who has deliberately searched for trademarked [goods] only to find a sponsored link to a [goods] retailer; and, in light of the foregoing factors, (7) the duration of any resulting confusion.
Hearts on Fire Co., LLC v. Blue Nile, Inc., 603 F. Supp. 2d 274, 289 (D. Mass. 2009). Although these seven factors were not set forth as sub-factors of the new factor—the labeling and appearance of the advertisements and the surrounding context of the screen displaying the results page, they could be referenced if helpful in assessing the new factor.
Use of Trademarked Keywords Is Usually Not Infringement
There is no absolute rule that the use of trademarks as keywords is or is not trademark infringement. That determination is made by applying the appropriate likelihood of confusion test (or likelihood of initial interest confusion test), including the shiny new labeling, appearance, and context factor.
But as the Central District of California noted, “[t]here is a growing consensus in the case authorities that keyword advertising does not violate the Lanham Act.” Academy of Motion Picture Arts & Sciences v. GoDaddy.com, Inc., 2015 U.S. Dist. LEXIS 120871, *150-51 (C.D. Cal. 2015) (citing numerous court decisions). Recent cases mostly conclude that using a trademarked keyword does not create a likelihood of confusion and, therefore, does not constitute trademark infringement. Overwhelmingly, these cases rely on the fact that the search results are clearly labeled, do not use the plaintiff’s trademark, and have not resulted in actual confusion.
Clear Labeling Goes a Long Way in Keyword Cases
In searching and reviewing keyword trademark infringement cases decided recently, there is a clear commonality: no infringement due to clear labeling. Multi Time Machine, 804 F.3d at 936 (“Amazon’s search results page shows that such consumer confusion is highly unlikely. None of these watches is labeled with the word “MTM”); Tartell v. South Florida Sinus and Allergy Center, Inc., 2013 U.S. Dist. LEXIS 191404, *18 (S.D. Fla. 2013) (defendant’s use of plaintiff’s name in Google Adwords not confusingly similar because plaintiff’s name did not appear in ad, ad was offset as a sponsored ads section, and the ad clearly identified defendant as the provider); Lasoff, 2017 U.S. Dist. LEXIS 11092 at *18-19 (no evidence in the record that “Defendant at any time ‘implied a false affiliation or endorsement by [Lasoff] of [Amazon]’”); USA Nutraceuticals Group, Inc. v. BPI Sports, LLC, 165 F. Supp. 3d 1256, (S.D. Fla. 2016) (“Beast’s banner advertisements are uniform, each containing … a clear identification of the advertisement’s sponsor.”).
Actual Confusion in a Keyword Case Requires a Strong Showing
In a keyword trademark infringement case, a plaintiff is not going to be able to hang its hat on the fact that a couple of people were confused or mistakenly clicked on a link. The showing will need to be more than de minimis. Multi Time Machine, Inc. v. Amazon.com, Inc., 804 F.3d at 936 (“It is possible that someone, somewhere might be confused by the search results page. But, ‘[u]nreasonable, imprudent and inexperienced web-shoppers are not relevant.’”); Tartell, 2013 U.S. Dist. LEXIS 191404, at *18 (“True, one or two people did click on the link, but that is hardly demonstrative of significant actual confusion.”); Alzheimer’s, 2015 U.S. Dist. LEXIS 84172, at *23 (“inquiries about the relationship between an owner of a mark and an alleged infringer do not amount to actual confusion.”).
An Egregious Use of a Trademark in Search Results May Be Infringement
If an advertisement in search results triggered by a trademarked keyword is confusingly similar, there can be trademark infringement. Some examples include (i) using the plaintiff’s trademark in the advertisement, (ii) not identifying defendant as the source of the advertisement, (iii) using a domain name url that is purposely similar to the plaintiff’s domain name url, and (iv) redirecting the consumer to a look-a-like website when the ad is clicked. Obviously, this is not an exhaustive list but it gives you an idea of some additional conduct that, when coupled with the purchase or sale of a trademark keyword, can lead to a finding of trademark infringement.
It Looks Like Keywords Themselves Are Not the Issue
If you read recent keyword cases, they all pretty much state that the buying or selling of a trademark as a keyword does not—in and of itself—constitute trademark infringement. This may be because “©onsumers searching … have no way of knowing which particular terms advertisers have bid on; thus, keyword bidding is often referred to as ‘non-consumer-facing.’” Edible Arrangements, LLC v. Provide Commerce, Inc., 2016 U.S. Dist. LEXIS 99291, *5 (D. Conn. 2016).
In reality, courts are looking at the advertisements or search results that are generated after the keyword search is performed. Id., at *30 (“the conduct at issue is not a defendant’s keyword bidding, considered in a vacuum, but rather the effect of the keyword bidding in conjunction with the defendant’s advertisement.”). There has to be some additional conduct creating confusion based on the resulting advertisements to trigger infringement (as discussed in the preceding section). Absent that, it appears that you are free to use someone’s trademark as a keyword.