• by Wendy Davis  @wendyndavis, November 9, 2022

Contact lens retailer 1-800 Contacts on Wednesday urged a federal appellate court to reinstate a lawsuit accusing eyewear company Warby Parker of wrongly using the term “1-800 Contacts” to trigger search ads.

“In the simplest terms, Warby devised and implemented an intentional scheme to use 1-800’s Marks to confuse consumers looking for 1-800’s website into clicking on ads that did not clearly identify Warby as a source unaffiliated with 1-800,” the company writes in papers filed Wednesday with the 2nd Circuit Court of Appeals.

The company is asking the 2nd Circuit to reverse a ruling issued by U.S. District Court Judge Kevin Castel in New York, who threw out 1-800 Contact's lawsuit earlier this year on the grounds that Warby Parker's ads were not likely to confuse consumers.

The battle between the companies dates to last August, when 1-800 Contacts alleged in a trademark infringement lawsuit that 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 and dismissed the matter before trial, writing that today's online consumers “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 is now arguing that Castel's decision should be reversed for several reasons, including that he should have allowed a jury to decide whether the ads were confusing.

“Courts have consistently recognized that disputes over consumer sophistication are quintessential factual issues properly left to a jury,” 1-800 Contacts writes.

The company added that Castel “impermissibly engaged in its own factfinding and ultimately rejected 1-800’s plausible allegations.”

1-800 Contacts has a long history of suing competitors over their search ads. Between 2004 and 2013, the company sued or threatened to sue at least 14 other eyewear and contact lens companies that allegedly used 1-800 Contacts' trademarks to trigger paid search ads.

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.

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

The 2nd Circuit Court of Appeals later reversed the FTC's finding, writing that courts should defer to settlement agreements.