Warby Parker fends off 1-800 Contacts' keyword ad case at US appeals court

Warby Parker

08/10/2024 21:58

By Blake Brittain
       Oct 8 (Reuters) - Warby Parker  WRBY.N  convinced a
federal appeals court on Tuesday to uphold a decision that its
use of a competitor's name to redirect search-engine users to
its online contact lens store did not violate U.S. trademark
law.
    The New York-based 2nd U.S. Circuit Court of Appeals said
that 1-800 Contacts  FENWYO.UL  failed to prove Warby Parker's
keyword advertising would deceive potential customers.
    Warby Parker attorney Roxanne Elings of Davis Wright
Tremaine said the company was "delighted" with the decision. An
attorney and spokespeople for 1-800 Contacts did not immediately
respond to a request for comment.
    Warby Parker, best known for its eyeglasses, began selling
contacts in 2019. 1-800 Contacts sued Warby Parker in 2021,
accusing it of unlawfully buying keyword advertising on Google
and other search engines to show Warby Parker ads when users
search for "1-800 Contacts."
    A federal judge in New York dismissed the case in 2022,
finding that the marketing was not likely to confuse potential
customers. The 2nd Circuit upheld the decision on Tuesday,
adopting the "consensus view" of other circuits that have
considered the same issue.
    "Despite 1-800’s emphasis on the allegedly nefarious nature
of Warby Parker’s keyword bidding activities, this well-known
internet marketing strategy — by itself — does not support a
claim of trademark infringement absent additional use of 1-800’s
Marks," U.S. Circuit Judge Eunice Lee wrote for a three-judge
panel. 
    The case is 1-800 Contacts Inc v. JAND Inc d/b/a Warby
Parker, 2nd U.S. Circuit Court of Appeals, No. 22-1634.
    For 1-800 Contacts: Stephen Fishbein of A&O Shearman
    For Warby Parker: Roxanne Elings of Davis Wright Tremaine 
     
    Read more:
    1-800 Contacts sues Warby Parker for trademark infringement
over keyword ads
  
    Warby Parker defeats 1-800 Contacts lawsuit over keyword ads
  

 (Reporting by Blake Brittain in Washington)