Monday, October 16, 2017

TM use in ad text and on website not confusing where true source is clearly marked

Guardian Pool Fence Sys. Inc., Plaintiff, v. Sunwest Industries, Inc., No. 16-0824, 2017 WL 2931413 (C.D. Cal. Jun. 1, 2017)

Guardian and All-Safe compete in the market for mesh pool fences; a Guardian fence costs around $2,000, and an All-Safe fence costs around $1,500. The parties previously litigated keyword ad buys, but dismissed the litigation. In 2016, a potential Guardian customer reportedly said that he had seen the Guardian name in numerous places on All-Safe’s website and asked if the two companies were related.

As a result, Guardian found that its name appeared on All-Safe’s website in several places. “Guardian Pool Covers,” “Guardian Pool Safety,” “Guardian Pool Fence,” and “Guardian Pool Products” all appeared as “Topics” listed in the right hand column of All-Safe’s website, along with many other topics such as “Swimming Pool Safety.”  Each topic had its own page collecting all of the posts tagged with that specific topic.  Each post had a “by” field, which All-Safe used to insert topic labels.  Guardian argued that this practice suggested that Guardian had authored the posts, but the court disagreed, given that other “by” entries included “Removable Mesh Pool Fence” and “Swimming Pool Safety.”  The Guardian-tagged posts didn’t discuss Guardian, but were generally about pool safety, and they didn’t offer products for sale.  All-Safe said that it didn’t authorize the Guardian tags, but that its third party vendor created them without specific authorization, and they were removed shortly after this litigation began.  The Guardian topic pages were viewed 17 times total by 5 unique users, presumably some of them Guardian’s counsel; 17 views was less than .01% of all All-Safe website traffic. 

Here's what the topic list looked like:
Here are some tagged posts: 

As for the keyword aspects of the case, from January 2008 until February 2011, All-Safe used “guardian pool fence” as a search term targeted at Spain, Portugal, Puerto Rico, and Costa Rica, resulting in four clicks.  These campaigns ended in February 2011.   From January 2008 to May 2016, All-Safe’s AdWords campaigns together generated well over 800,000 clicks.  Also, for a few months in 2016, Guardian included “all safe pools” in its Google AdWords, along with eighteen other search terms, several of which included the term “all safe” or “all-safe,” though Guardian argued that this was inadvertent and in contravention of its standard practice. In May 2016, a search for “all-safe” returned an ad for Guardian with the headline “all safe pools –” “All safe pools” generated six clicks on Guardian ads.

Guardian didn’t challenge All-Safe’s AdWords search program, only the Guardian Topics on All-Safe’s website. The court found confusion unlikely.  Along with the usual multifactor test, internet search-related cases also require considering “an additional factor of particular importance”: “the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.” Though Guardian wasn’t making a search-related claim, but rather challenging a webpage layout and tags in a topics section, this factor was still applicable “because the full context of the webpage is important to assessing how a consumer would understand the Guardian Topics.” In cases challenging online activity, the Ninth Circuit has sometimes skipped the Sleekcraft test “in favor of a more streamlined inquiry: ‘(1) Who is the relevant reasonable consumer?; and (2) What would he reasonably believe based on what he saw on the screen?’” This was the appropriate analysis here, “because it is a website rather than a product that bears the mark.”

The consumers here would be careful and accustomed to shopping online, given the cost of the pool nets.  What would such customers understand? 

The fact that the Guardian Topics are listed as topics suggests that somewhere on All-Safe’s website there is discussion of the various Guardian Topics. A company discussing a competitor on its own website does not alone amount to trademark infringement or generate confusion. A reasonably prudent consumer would draw very little from the fact Guardian appeared as a topic on the All-Safe website. At worst, a reasonable consumer might click on a topic “uncertain as to what they will find.”

A consumer who did click would find blog posts about pool safety, not about Guardian.  “The use of the term Guardian in the topic names is confusing, but it is confusing in that it makes little sense given the ultimate content of the posts tagged with the topic. It does almost nothing to suggest that Guardian is in any way the source of the pool nets for sale through All-Safe, and pool nets are not directly offered for sale anywhere in blog posts.”  Thus, the uses wouldn’t create confusion as to the origin of All-Safe’s goods or services.  Moreover, the Ninth Circuit has cautioned that reasonable consumers “expect to find some sites that aren’t what they imagine based on a glance at the domain name or search engine summary.” Similarly, the court here considered reasonable consumers “capable of dismissing dead-end topics labels as oddities, indicative of almost nothing.”

The fact that a single consumer might potentially have been confused—the one who talked to Guardian’s VP—was insufficient to show likely confusion, especially given the hundreds of thousands of views of All-Safe’s website. All-Safe’s website prominently displayed its logo, and only its logo, on every page. “This ‘broader context’ of the topics pages mitigates against any possible confusion as to a connection with Guardian.” Summary judgment for All-Safe.

All-Safe counterclaimed based on Guardian’s use of “all safe” or “all-safe” in Google AdWords. However, as All-Safe itself said, “there is growing consensus in the case authorities that purchasing trademarked keywords for the purpose of competitive keyword advertising does not violate the Lanham Act.” Guardian didn’t use the All-Safe mark on its website or the phrase “all safe” in its domain name. Plus, clear labeling of a search result as an ad “can help eliminate any possibility of confusion.”  Interestingly, the court applied this principle to an ad whose text arguably used both All-Safe’s mark and Guardian’s mark, which not all courts would—the court thought that clear marking as an ad was enough of a signal that consumers might get competing information.  Even though All-Safe’s trademark appeared in the ad, it “also clearly incorporated Guardian’s non-infringing domain name,” and thus Guardian’s ad wasn’t likely to confuse.

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