119 F.4th 711
9th Cir.2024Background
- Lerner & Rowe PC (L&R) and Accident Law Group (ALG) are competing Arizona personal injury law firms; L&R holds federally registered trademarks for its name and related marks.
- ALG used the term "Lerner & Rowe" as a Google Ads keyword from 2015-2021, so its ads would appear when users searched for L&R, but ALG’s ads never displayed or referenced L&R’s mark.
- L&R sued ALG for federal and state trademark infringement, unfair competition, false designation, and unjust enrichment under the Lanham Act and state law.
- The district court granted ALG summary judgment on trademark infringement and unjust enrichment, finding no likelihood of confusion; summary judgment as to all claims was later entered against L&R.
- On appeal, the Ninth Circuit affirmed summary judgment for ALG, finding no genuine issue of material fact on likelihood of confusion, primarily due to sophisticated consumers and the labeling/context of the advertisements.
Issues
| Issue | Lerner & Rowe’s Argument | ALG’s Argument | Held |
|---|---|---|---|
| Is there a likelihood of consumer confusion? | ALG’s use of "Lerner & Rowe" keyword confuses consumers searching for L&R. | Ads are clearly labeled, do not use L&R’s mark, and sophisticated consumers understand Google ads. | No likelihood of confusion; labeling, context, and sophistication of consumers control. |
| Is evidence of actual confusion sufficient? | Even a small number of documented confused callers supports jury trial. | 236 confused calls out of 109,322 exposures is de minimis and insufficient to show confusion. | Actual confusion evidence was de minimis and does not support L&R’s case. |
| Does keyword bidding trigger "use in commerce" under Lanham Act? | Keyword bidding constitutes actionable trademark use under prevailing Ninth Circuit precedent. | Bidding does not display competitor’s mark; only Google displays the term, not the advertiser. | Bound by precedent (Network Automation), keyword bidding is "use in commerce"; but reiterated skepticism in concurrence. |
| Are other likelihood of confusion factors relevant? | Proximity/similarity of goods/services, intent, and marketing channels increase risk. | Similar services irrelevant since ads are clear; no intent to deceive; online marketing common to all. | Other factors do not alter the analysis; main factors overwhelmingly favor ALG. |
Key Cases Cited
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011) (establishes keyword advertising is "use in commerce" and key likelihood-of-confusion factors in internet context)
- Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036 (9th Cir. 1999) (seminal case on trademark use in metatags and consumer confusion)
- Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015) (clear labeling in internet search results avoids consumer confusion)
- Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020 (9th Cir. 2004) (actual confusion must be appreciable to support infringement)