Online retailer Warby Parker was sued by 1-800 Contacts over it’s use of the latters branded keywords to redirect searchers to the Warby Parker online store. The case was dismissed by a Manhattan federal judge saying that Warby Parkers’ ads are unlikely to confuse potential customers.
The decision. Judge Kevin Castel argued against 1-800 Contacts saying that customers are unlikely to think that they’re buying from 1-800 Contacts when they click on a Warby Parker ad. Castel also said the companies’ trademarks were too dissimilar to confuse contact-lens buyers, who are likely to pay close attention to what they are purchasing and noted that Warby Parker’s name is clearly displayed in the search results and on its website.
Castel added that prospective customers will take the time to figure out that the search results link to Warby Parkers website, and will therefore discern that they are buying from contacts from Warby Parkers website.
1-800 Contacts response. A spokesperson for 1-800 Contacts said after the ruling that the decision by the judge was “inconsistent with several well-established legal principles,” and that the company is “evaluating appropriate next steps, including whether to appeal.”
Sounds familiar. Earlier this year we reported on an attempt by Edible Arrangements to sue Google over theft, conversion, and racketeering. Edible Arrangements lost that lawsuit, but this was not the first case courts heard over trademark and copy issues.
In my own Google search, I was unable to mimic the results that this suit was based on and didn’t find any Warby Parker ads initially. You can read the article and ruling from Reuters here.
Why we care. The dismissal of this case against Warby Parker should concern advertisers who are competing for branded keywords. If you’re facing a similar issue, you can visit the Google trademark help document, but it can be a painstakingly long, and temporary band-aid for a much bigger issue. On the contrary, if you’re using another brand’s keywords in your ad strategy, be careful, as you could see yourself in hot water.
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