Aggressive key phrase promoting remains to be not trademark infringement until … –Adler v Reyes & Adler v McNeil
Competitive keyword advertising lawsuits are still stupid and usually doomed to failure in court. This is especially true of keyword advertising disputes between competing lawyers, which I spoke out against in 2016. Nonetheless, one of these two incidental cases survived a motion for dismissal that could easily encourage plaintiffs. Note that it took a combination of very specific facts and a personable judge who relied on a very old law to overcome a request for dismissal. YMMV.
Eagle v. Reyes
(Note: Angel and I have worked together before and co-authored this article.)
Jim Adler and Angel Reyes are rival personal injury attorneys in the greater Dallas area. "The defendant buys the Adler trademarks as keyword advertisements through the Google search engine on mobile devices and uses them in conjunction with similar ads that include the plaintiffs' trademarks in the text of the defendant's ad. As a result, Google searches for" Jim Adler " . " The Texas Hammer and El Martillo Tejano lead to search pages displaying the defendant's advertisements, often just below one or more of the Adler's trademarks – and in front of the plaintiffs 'own advertisements – while the plaintiffs' brands are often in the text of the Defendants will be included ad. "For example:
Reyes also did mobile advertising with click-to-call:
"The defendant's staff are instructed to answer the calls with a general greeting such as," Did you have an accident? "Or to answer" Tell me about your accident "instead of identifying the defendant."
The court is legally taking competitive keyword ad purchases off the table. "Purchasing a competitor's trademark as a keyword for search engine advertising without further information is not sufficient for a claim for trademark infringement." However, the plaintiff claimed more than just the keyword ad purchases, including:
This Defendant: (1) used confused advertisements with eagle keywords and often included eagle trademarks in flashy fonts in the text of advertisements; (2) bid higher amounts to have its advertisements placed near or in front of plaintiffs' advertisements; (3) have created special Adler branded landing pages for those who clicked on the infringing advertisements; (4) used click-to-call technology in the advertisements to induce consumers searching for plaintiffs to mistakenly call the defendant before further information; and (5) have call center operators follow scripts to further confuse callers seeking plaintiffs in hopes of keeping them on the phone and ultimately convincing them to hire defendants instead of plaintiffs
Point 1 is critical, as the McNeil case (see below) shows. The McNeil case suggests that the court deny any claims to advertisements that do not contain plaintiff's trademarks in the copy of the advertisement. I also don't understand the importance of going beyond the brand owner. How exactly is a problem?
The court says the plaintiff pleaded enough to survive the motion for dismissal. The court formulates its legal standard:
The crux of the problem is whether a defendant's keyword purchases, combined with the look and placement of their ads, create a search results page that confuses or misleads a consumer searching for a brand to a competitor's website
What? No. This is a bastardized version of the initial doctrine of confusion of interests, similar to the now fully discredited decision of the Ninth Circuit Brookfield in 1999. Alternatively, this legal standard is a variant of bait-and-switch, but with only "bait" and no "switch". Worse, this summary is pointless as the court is still running a standard multi-factor test for consumer confusion with no further reference to the legal standard.
Some outstanding points in the multi-factor test:
- Regarding trademark likeness, the court accepts plaintiff's assertion that "the defendant is using terms that are similar to plaintiffs' registered trademarks and using the identical trademarks as keywords to manipulate search engine results and confuse consumers, including the use of the." Brands from Alder in the ads themselves. "
- For any of the following suggestions that may create confusion among consumers, the court refers to the dubious 2011 Binder v Disability Group case, although it is likely not considered a good right in the ninth circuit after the network automation ruling:
- "Using a competing law firm's trademarks in keyword ads when the parties are providing the same type of legal service is strong evidence of the likelihood of confusion."
- "When a competing law firm uses another's brands for keyword advertising to reach the same prospects, there is strong evidence of confusion."
- "When two competing law firms are using the Internet to market their services and relying on it to attract clients, this is an important factor in identifying the likelihood of confusion." (I believe most of the circuitry overlaps in internet marketing now because this factor is always true.)
All of these key points contradict the court's earlier statement that “buying a competitor's mark as a keyword for search engine advertising is not enough for a right to trademark infringement”. All of these points apply to any competitive keyword advertising case and ensure that they always weigh against the defense. None of these are based on the inclusion of Plaintiff's trademark in the copy of the advertisement. As with the pre-network automation case law, this court appears to misapplicate the standard probability of the consumer confusion test without realizing how poorly this test fits into competitive keyword advertising. To solve this problem, the Network Automation Court has also determined the relevance of marking the advertisements as advertisements that this court does not address.
Adler calls itself TEXAS HAMMER and rejected the use of the term "hammer" by the defendant in the defendant's ad copies such as "we hammer insurance companies". The defendant unsuccessfully argued that the "hammer" references qualified as descriptive fair use:
Plaintiffs allege that the defendant used the word "hammer" to mislead Internet consumers looking for the Adler brands on cell phones. In the context of mobile advertising, where advertisements take up minimal screen space and require little screen space, it is argued that the defendant's multiple use of the term "hammer" in a single advertisement will put consumers on the eagles -Search trademarks, misleading from the plaintiffs distracts to the accused
Also, for the fair use defense, it was irrelevant that the Texas State Bar gave the green light to competitive keyword ads.
I'm not sure how faithful the court's decision is to KP Permanent Makeup's decision that descriptive fair use can apply even if consumers are confused. Furthermore, the accompanying McNeil case states that the "Lanham Act contains safeguards to prevent commercial monopoly of language" and I wonder if the court's rejection of the descriptive fair use defense tends to use the term " Hammer "monopolize.
The state dilution claim survived because Adler claimed enough state fame. The right to unauthorized interference also remained, partly as a derivation from other claims. The claim to advertising rights did not survive the application for rejection, however, as the allegations were trademarked rather than publicly known.
This is an old school opinion; the kind we saw before the fall of network automation and seldom see now. Things like the court's standard of what confusion matters (initial confusion of interests in all but name) and the frequent citations about Binder are outdated approaches. Since Network Automation, cases of trademark infringement via keyword ads have largely failed, even with requests for rejection. We'll have to see if the plaintiff can succeed as the legal tests tighten.
Case citation: Jim S. Adler PC v Angel L. Reyes & Associates PC, 2020 WL 5099596 (N.D. Tex. Aug. 7, 2020). The District Court judge approved the judge's report without comment No. 3: 19-cv-2027-K-BN (N.D. Tex. August 29, 2020).
Eagle v. McNeil
This is a companion case to the Reyes case, except that the defendant is a lawyer rather than a lawyer rather than a competing law firm. Otherwise, this case has the same plaintiff and judge as the Reyes case.
The judge formulates the constitution a little differently than in the Reyes case and says: "Buying a competitor's trademark as a keyword for search engine advertising without more is not enough for a right to trademark infringement" (quote College Network v Moore). "If an advertisement does not contain the plaintiff's trademark, there is no likelihood of confusion for legal reasons" (cited 1-800 Contacts v. Lens.com, Infogroup v. Database, USA Nutraceuticals v. BPI, Tartell v. South Florida Sinus & Allergy, JG Wentworth v Settlement Group).
This legal standard makes this a simple case:
Because defendants are not using any part of plaintiffs' trademarks in their advertisements and plaintiffs are basing their infringement suit on the use of generic terms, it is not necessary to consider “digits of confusion” to determine that plaintiffs are alleging no confusion and out of legal law Make no claim for violation of the Lanham Act for any reason.
In approving the judge's opinion, the district court judge laconically says, "Plaintiffs' claim is based solely on purchasing plaintiffs' brands as search keywords, and defendants do not include plaintiffs' brands in their advertisements."
Case citation: Jim S. Adler PC v McNeil Consulting, LLC, 2020 WL 5134774 (N.D. Tex. August 10, 2020). This is the judge's report. The judge of the district court approved the judge's report unchanged in 2020 WL 5106849 (N.D. Tex. August 29, 2020).
More articles on keyword advertising
* Three keyword advertising decisions in a week and brand owners lost them all
* Competitor receives Pyrrhic victory in wrong advertising costume via search ads – Harbor Breeze versus Newport Fishing
* IP / internet / antitrust professor Amicus Brief in 1-800 contacts against FTC
* New Jersey Attorney Ethics Opinion Blesses Competitive Keyword Advertising (… or does it?)
* Another Competitive Keyword Advertising Lawsuit Fails – Dr. Greenberg v. Perfect body image
* Florida Bar regulates, but does not prohibit, competitive keyword ads
* Summary of three current keyword advertising cases – Comphy v. Amazon & More
* Are adjacent organic search results a trademark infringement? Of course not … but … – America CAN! v. CDF
* The ongoing saga of the Florida Bar's Fear of Competitive Keyword Advertising
* Your regular reminder that keyword ad lawsuits are stupid – Passport Health v. Avance
* Restricting competitive keyword ads is anti-competitive – FTC v. 1-800 contacts
* Another failed trademark lawsuit for competitive keyword advertising – JIVE v Wine Racks America
* Exclusive keywords help in overcoming the preliminary injunction – DealDash v. ContextLogic
* The Florida Bar and Competitive Keyword Advertising: A Tragic Comedy (in 3 parts)
* Another court says competitive keyword advertising does not cause confusion
* Competitive keyword advertising shows no bad intent – ONEpul v. BagSpot
* A quick recap of the three developments in keyword advertising litigation
* Interesting tidbits from FTC's antitrust win against keyword ad restrictions of 1-800 contacts
* 1-800 contacts charge higher prices than their online competitors, but they are okay with this – FTC v. 1-800 contacts
* FTC explains why 1-800 contacts' keyword ad billing was anti-competitive – FTC v. 1-800 contacts
* Amazon Defeats Keyword Ad Buying Lawsuit – Lasoff Vs Amazon
* More evidence of why keyword advertising litigation is subsiding
* Court Dumps Crappy Trademark & Keyword Ad Case – ONEPul v BagSpot
* AdWords purchases using geographic terms support personal responsibility – Rilley v. MoneyMutual
* FTC is suing 1-800 contacts for restricting competitive keyword advertising
* The competitive keyword advertising lawsuit goes to a jury – edible agreements v. Provision of trade
* Texas Ethics Opinion approves competitive keyword ads from attorneys
* Court knocks out another competitive keyword advertising process – Beast Sports v BPI
* Another dire opinion about lawyers who buy keyword ads on other lawyers' names – In re Naert
* The Keyword Ads lawsuit is not covered by California's anti-SLAPP law
* Confusion from competitive keyword advertising? Fuhgeddaboudit
* Competitive keyword advertising allowed as nominative use – ElitePay Global v. CardPaymentOptions
* Google and Yahoo defeat the last remaining competitive keyword advertising lawsuit
* Mixed decision in competitive keyword advertising – Goldline v. shelf
* Another competitive keyword advertising lawsuit fails – Infogroup v. DatabaseLLC
* The damage caused by competitive keyword advertising is “negligible”.
* More defendants win keyword advertising claims
* Another keyword promotion process fails
* Duplicitous Competitive Keyword Advertising lawsuits – Fareportal against LBF (& vice versa)
* Brand Owners Just Can't Win Keyword Commercials – EarthCam v. OxBlue
* Would you like to learn about Amazon's confidential settlement terms for a keyword advertising lawsuit? Merry Christmas!
* Florida enables competitive keyword advertising by lawyers
* Another Keyword Advertising Lawsuit rejected out of hand – Infostream v. Avid
* Another keyword advertising process fails – Allied Interstate v Kimmel & Silverman
* More evidence that competitive keyword advertising benefits brand owners
* Keyword advertising lawsuit is a bad business decision for brand owners
* Florida suggests banning competitive keyword advertising by lawyers
* Further confirmation that Google has won the AdWords brand battles worldwide
* Google's search suggestions do not violate the Wisconsin Publicity Rights Law
* Amazon's merchandising of search results does not violate trademark law
* Buying keyword ads for people's names does not violate their advertising rights
* With its victory in the Australian court, Google is getting closer to legitimizing keyword advertising worldwide
* One more decision that competitive keyword ad lawsuits are stupid – Louisiana Pacific vs. James Hardie
* Another Google AdWords advertiser beats trademark infringement lawsuit
* With Rosetta Stone Settlement, Google is getting closer to legitimizing billions of AdWords revenue
* Google beats the brand challenge for its AdWords service
* Newly released consumer survey shows that legal concerns about competitive keyword advertising are exaggerated