• by Wendy Davis  @wendyndavis, July 27, 2022

Contact lens retailer 1-800 Contacts has formally appealed a federal judge's ruling that dismissed trademark infringement claims against Warby Parker over its search ads.

The move comes one month after U.S. District Court Judge Kevin Castel in New York threw out claims that Warby Parker infringed trademark by using the term “1-800 Contacts” to trigger search ads. 1-800 Contacts initiated the appeal Wednesday, by filing a "notice of appeal" with the 2nd Circuit Court of Appeals, but hasn't yet made substantive arguments to that court.

The battle between the companies dates to last August, when 1-800 Contacts alleged the Warby Parker sought to dupe people who searched for 1-800 Contacts by “misdirecting” them to Warby Parker's own site. 1-800 Contacts also alleged that Warby Parker's landing page has a similar design to 1-800 Contacts' website -- including a light blue background and discount offer.

Warby Parker countered that the allegations, even if true, wouldn't prove that the search ads were likely to confuse consumers.

Castel sided with Warby Parker, writing that online consumers today “would likely be familiar with both the concept of paid search results and the significance of website address links,” and are “sophisticated enough” to review search results and website content before making online purchases.

1-800 Contacts has a long record of suing other contact lens and eyewear companies over their search ads. Between 2004 and 2013, the company sued or threatened to sue at least 14 competitors for alleged trademark infringement, based on allegations that the rivals used the term “1-800 Contacts” to trigger ads on search engines.

Thirteen of those companies 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.