search results labeled as results aren't confusing

Carter v. Oath Holdings, Inc., No. 17-cv-07086-BLF (N.D. Cal. Jun. 21, 2018)

Carter allegedly owns a trademark registration for “The House of Figurine Sculptures.com.” Defendant is Yahoo!, which runs a search engine.  The complaint alleged that Yahoo! uses “two active counterfeit marks identical to Plaintiff[’s] genuine mark” titled “The House of Figurine Sculptures - Image Result” and “More The House of Figurine Sculptures Images”:

Carter alleged that he has no connection to “those goods and services sold” and that Yahoo!’s “counterfeit marks misrepresent [the] designation of origin” of the goods and services. The court dismissed the trademark infringement, false designation of origin, and counterfeiting claims. First, the complaint failed to sufficiently plead “use” of the mark. “Courts have held that an online provider does not ‘use’ a mark under the meaning of the Lanham Act when its search engine returns a search result based on an input of a consumer. As such, merely returning search results to purportedly display a trademark does not show that Defendant is liable under the Lanham Act.”

Second, the complaint failed to sufficiently allege a likelihood of confusion. Mere allegations that Yahoo!’s “counterfeit marks misrepresent [the] designation of origin” and that their “counterfeit marks [are] deceptive, confusing, and is likely to cause mistake on the part of [the] consuming public” were conclusory and insufficient. [Note that if more plausible facts were alleged leading up to this (e.g., that defendant was selling identical goods/services in direct competition with plaintiff, using the same mark), the very same allegations would not be treated as conclusory but as plausible inferences from the other alleged facts.]