• by Wendy Davis  @wendyndavis, December 6, 2021

Eyewear company Warby Parker is urging a federal judge to throw out a lawsuit by 1-800 Contacts, which claims its trademark was infringed when its name was used by Warby Parker as a keyword to trigger search ads.

In papers filed Friday with U.S. District Court Judge Kevin Castel in New York, Warby Parker argues that 1-800 Contacts' allegations, even if true, wouldn't prove that Warby Parker's search ads were likely to confuse consumers.

“This court should reject plaintiff’s complaint for failure to plausibly allege likelihood of confusion,” Warby Parker writes.

“Courts that have analyzed whether a party’s use of a competitor’s mark in keyword advertising results in likelihood of confusion almost always find no likelihood of confusion if all that defendant has done is use another’s mark as a keyword to trigger an ad for defendant in which the other’s trademark does not appear,” Warby Parker argues.

“While 1-800 Contacts resents that Warby Parker is competing with it online through the purchase of the 1800 CONTACTS Marks for keyword advertising, this alone is not reason to haul Warby Parker into court,” the company adds.

Warby Parker's argument comes in response to a lawsuit brought by 1-800 Contacts in August, when it sued Warby Parker over its use of the brandname 1-800 Contacts to trigger paid-search ads.

1-800 Contacts alleged that Warby Parker “devised a plan to confuse and mislead consumers who seek to go to 1-800 Contacts’ online store,” and that Warby Parker aimed to “trade off 1-800 Contacts’ brand name and reputation through unauthorized bidding on 1-800 Contacts’ trademarks.”

The complaint also claimed that search engine users who click on Warby Parker's ads are taken to a page that has similar elements to the 1-800 Contacts' website, including a light blue background and a discount offer.

1-800 Contacts has a long history of suing rivals over their search advertising campaigns. Between 2004 and 2013, the company sued or threatened to sue at least 14 competitors for alleged trademark infringement, arguing that its trademark was violated when rivals used the phrase “1-800 Contacts” to trigger a search ad.

Thirteen of the competitors settled with 1-800 Contacts by agreeing to restrict the use of its trademark in search advertising.

Lens.com, the only company to fight the lawsuit, largely prevailed.

Those prior lawsuits were at the center of an antitrust action by the Federal Trade Commission, which ruled 4-1 that 1-800 Contacts acted anticompetitively by forging deals with rivals that limited their ability to advertise.

1-800 Contacts then appealed to the 2nd Circuit Court of Appeals, which reversed the FTC's ruling. The appellate judges wrote that even though trademark agreements can limit competition, courts should defer to settlement agreements.

1-800 Contacts sued Warby Parker soon after that decision was issued.

Warby Parker is calling Castel's attention to that history, writing that the lawsuit against it marks “a continuation of 1-800 Contacts’ concerted legal campaign to dissuade its competitors from engaging in competitive 'keyword' advertising.”

Warby Parker also urges Castel to discount 1-800 Contacts' argument that Warby Parker's landing page has a similar blue background and discount offer as the 1-800 Contacts' website; those allegations aren't enough to show that the search ads created a likelihood of confusion, Warby Parker argues.

“Plaintiff should either properly allege that it has protectable trade dress in its website or this court should dismiss any allegation that purports to show likelihood of confusion based on Warby Parker’s alleged imitation of the 1-800 Contacts’ website,” Warby Parker writes.

1-800 Contacts is expected to respond by early next year.