In the recent case of Bart et al v Slocumb (2-21-cv-01771, Eastern District Louisiana, 26 May 2022), a plaintiff survived a defendant’s motion to dismiss where the plaintiff alleged that the defendant had purchased advertisement space from a search engine under trademarked keywords to advertise goods that did not contain any of the plaintiff’s marks. The court found that the plaintiff had sufficiently alleged trademark infringement by illustrating initial interest confusion, even though the resulting advertisement was not infringing.
The court opined that the infringement was not the mere purchase of the keywords, but the advertising that resulted from the use of the marks. It stated that this behavior was “purposely and intentionally deceptive and misleading,” because a consumer using the plaintiff’s word mark to search for their goods will receive results that display the goods of the defendant. In other words, it is the initial confusion that results from a consumer’s search for marks that are intended to specifically identify the plaintiff in commerce that constitutes infringement. The court cited the Fifth Circuit’s decision in Adler: whether the advertisement incorporating a mark that is visible to the consumer is a relevant but not dispositive factor in determining a likelihood of confusion in search engine advertising cases (Adler v McNeil Consultants LLC, 10 F4th 422, 430, 5th Circuit 2021).
The law in this area is not settled. The Ninth Circuit notes that the use of a search engine keyword that triggers the display of a competitor’s advertisement is “use in commerce” and determines infringement through an evaluation of the Sleekcraft factors (Network Automation Inc v Advanced System Concepts Inc, 638 F3d 1137, 1148, 9th Circuit 2011). It is within this framework that a defendant can typically use such factors to show that there is no confusion, particularly because the default degree of consumer care has heightened as the Internet becomes less novel and online commerce becomes commonplace. The Second, Third, Fifth, Sixth, Seventh, Ninth, Tenth, and Federal Circuits recognize infringement based on initial interest confusion, while the First, Fourth, and Eleventh Circuits do not. Additionally, most courts have held that search engine companies are not liable for trademark infringement, even when knowingly selling registered trademarks as keywords to competitors.
Keywords and search engine optimization are generally used to enhance brand visibility by allowing businesses to establish a presence in a relevant term’s search results page. Based on this court’s ruling and inconsistencies across jurisdictions, there is at least some authority that purchasing keywords can constitute trademark infringement, depending on the circumstances. Marketing teams and legal professionals for larger brands should keep this in mind when devising strategies to increase brand recognition, and when monitoring third-party use for enforcement. Relatedly, marketing teams and legal professionals for more risk-averse brands should continue to buy and use relevant keywords in search engine optimization to the extent that it increases web traffic, but make an effort to keep the keywords generic where possible.
This article originally appeared in World Trademark Review Weekly on June 16, 2022 and is reprinted with permission.