1-800 Contacts, Inc. v. JAND, Inc., DBA Warby Parker
119 F.4th 234
2d Cir.2024Background
- 1-800 Contacts is an online retailer of contact lenses, with trademarks including "1800 Contacts" and related variations.
- Warby Parker, originally an eyeglasses retailer, entered the online contact lens market and purchased 1-800 Contacts' trademarks as keywords for online ad campaigns.
- 1-800 sued Warby Parker, alleging trademark infringement and unfair competition under the Lanham Act and New York state law, claiming Warby Parker's ads misled consumers searching for 1-800 Contacts, diverting them to Warby Parker.
- 1-800's claims centered on Warby Parker buying 1-800's trademarks as keywords (but not displaying those marks in its ads or webpages), and designing allegedly misleading ads and landing pages.
- The district court granted Warby Parker judgment on the pleadings, holding no plausible likelihood of consumer confusion because Warby Parker did not use 1-800's marks in its ads or landing pages.
- 1-800 appealed; the Second Circuit reviewed the case de novo and affirmed the district court's dismissal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is mere purchase of competitor's trademarks as search keywords a Lanham Act violation? | Buying 1-800's marks as keywords misleads and confuses consumers, violating the Lanham Act. | Keyword bidding is standard; no infringement absent use in ads. | Purchasing competitor's marks as keywords alone is not infringement. |
| Does use of "ambiguous" ads and similar landing pages create a likelihood of confusion? | Warby Parker's ads and webpages are designed to mimic 1-800, creating confusion/affiliation. | Ads and pages clearly display "Warby Parker," not 1-800's marks. | No plausible likelihood of confusion; marks and branding are dissimilar. |
| Relevance of actual consumer confusion evidence | Website and ads cause actual and initial-interest confusion. | No evidence or surveys show actual consumer confusion. | No plausible allegations or evidence of actual consumer confusion. |
| Applicability of the Polaroid likelihood of confusion factors | Some factors (strength, bad faith, layout) favor 1-800. | Dissimilar marks and clear branding preclude confusion. | Dissimilarity of marks dispositive; other factors do not outweigh it. |
Key Cases Cited
- Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961) (establishes eight-factor test for assessing likelihood of consumer confusion)
- Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009) (purchase of keyword is a "use in commerce" but not alone infringement)
- Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) (standard for sponsorship confusion)
- Savin Corp. v. Savin Grp., 391 F.3d 439 (2d Cir. 2004) (initial-interest confusion in internet context)
- Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, 696 F.3d 206 (2d Cir. 2012) (distinctiveness required for trade dress protection)