A recent U.S. Court of Appeals for the Tenth Circuit ruling could impact future trademark lawsuits filed in Colorado. The trademark infringement lawsuit was filed by the company 1-800 Contacts Inc. against Lens.com Inc. for allegedly using the company’s service mark in their online advertisements.
The lawsuit claimed that Lens.com used similar phrases of their service mark, “1800 CONTACTS,” to help their Google search engine results. 1-800 claims that when they searched the phrase, a paid advertisement for Lens.com appeared on the page despite having their service mark registered as a federal trademark.
1-800 claims that Lens.com violated the Lanham Act, which prohibits trademark infringement. They say that even though Lens.com did not using the exact same service mark, they purchased several similar keyword terms to help their ads show up on Google when consumers are actually searching for 1-800 Contacts.
In cases like this one, the plaintiff must prove that the company has a protected service mark that the defendant used the same or similar service mark and the similarities will confuse consumers. The court ruled that while 1-800 Contacts proved that they had a registered service mark and that Lens.com was using similar marks in their advertising, the plaintiff failed to prove that it would confuse consumers.
The court affirmed a lower court’s ruling that Lens.com did not demonstrate trademark infringement because the actual consumer confusion rate was not very high. The court suggested that if the confusion rate was above 10 percent, the ruling may have been different. However, since 1-800 Contacts could not prove that consumers would be confused by their similar keywords, Lens.com did not infringe upon their trademark rights.
This court ruling could have an impact on future trademark infringement cases involving online ads in the future. However, each case is different and the court takes several different factors into consideration so it is best to discuss any potential legal issues or lawsuits with a business law attorney.
Source: Northern Colorado Business Report, “Case sets rules on online ad trademark disputes,” Dan Jones, Oct. 4, 2013