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Can I purchase my competitor's trademark as a keyword on Google?
Posted on Mar. 25, 2016

Courts have usually held that purchasing a competitor’s trademark as a keyword on Google does not constitute trademark infringement or unfair competition. There is, however, no general rule. Every case has its own unique set of facts, and a court will carefully examine the relevant facts to determine whether your conduct creates a likelihood of confusion with your competitor’s trademark.

The leading case in Utah is 1-800 Contacts, Inc. v. Lens.com, Inc., 755 F. Supp.2d 1151 (D. Utah 2010) (affirmed by the Tenth Circuit in 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013)). In that case, Lens.com and its affiliates purchased the keyword “1 800 contact lenses” and other similar variations in Google’s AdWords program. As a result, when a person looking to purchase contact lenses online entered “1 800 contact lenses” or a similar variation into the Google search box, an advertisement (sponsored link) for Lens.com appeared at the top of the results page, above the search results. 1-800 Contacts was understandably concerned that this practice would divert potential 1-800 Contacts customers to Lens.com. 1-800 Contacts accordingly sued Lens.com, and asked the court to order Lens.com to stop purchasing keywords incorporating the 1-800 Contacts trademark.

The court denied 1-800 Contacts’ request for an injunction, finding that consumers were not likely to be confused by the display of an ad for Lens.com on a search results page for 1-800 Contacts. The court compared it to a situation in which a consumer asks a pharmacist for Advil, and the pharmacist directs the consumer to an aisle where the consumer is presented with a wide variety of pain relief choices on the shelves surrounding Advil. In this analogy, the Google search results page is the “pharmacist”, 1-800 Contacts is “Advil”, and Lens.com is one of the other pain relief products on the shelves. In the court’s view, a Google search results page displaying ads and search results for multiple different contact lens suppliers is no different than a drugstore aisle with multiple different pain relief products on the shelves. Lens.com did nothing wrong by displaying its product on the same Google search results page as 1-800 Contacts.

Three important points in the court’s analysis should be noted: (1) the Lens.com ads that appeared on the 1-800 Contacts search results page did not contain any reference to 1-800 Contacts; (2) Google’s records showed that only a very small number of users (less than 2%) clicked on the Lens.com ads; and (3) the keywords purchased by Lens.com included the generic word “contacts”. Had those facts been different, the court’s holding might have been different. You should consult with an attorney before purchasing a competitor’s keywords on Google (or Amazon or other online venue) to make sure that the facts of your particular case are likely to support a judicial outcome in your favor if your competitor sues you for trademark infringement based on your keywords purchasing program. 

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Attorney Brett D. Ekins

Brett D. Ekins is an experienced and accomplished trademark and intellectual property lawyer. He represents clients in intellectual property matters and commercial litigation throughout Utah, Nevada and California in state and federal courts, including high-stakes litigation involving trademarks, patents, copyrights and trade secrets. Brett also has extensive experience registering trademarks with the United States Patent and Trademark Office, including proceedings before the Trademark Trial and Appeal Board.