• by Wendy Davis  @wendyndavis, February 8, 2023

Eyewear company Warby Parker is urging a federal appellate court to reject 1-800 Contacts' request to revive a lawsuit claiming that Warby Parker wrongly used the term “1-800 Contacts” to trigger search ads.

U.S. District Court Judge Kevin Castel in New York threw out 1-800 Contacts' lawsuit last year, ruling that Warby Parker's search ads were not likely to confuse consumers.

That ruling is “consistent with the body of law holding that use of keyword advertising similar to Warby Parker’s use is lawful,” the company argues in papers filed Tuesday with the 2nd Circuit Court of Appeals.

Castel “drew the reasonable and well-supported conclusion that the ordinary prudent consumer would likely not be confused by Warby Parker’s paid advertisement,” Warby Parker says.

The papers come in a battle dating to August of 2021, when 1-800 Contacts alleged its trademark was violated by Warby Parker. Specifically, 1-800 Contacts argued 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 urged Castel to dismiss the matter, arguing that the allegations, even if proven true, wouldn't show that the search ads were likely to confuse consumers.

Castel sided with Warby Parker and threw out the lawsuit before trial. He said in a written decision 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 recently asked the 3rd Circuit to reverse Castel's ruling and reinstate the claims. Among other arguments, the company says Castel should have allowed a jury to decide whether the ads were confusing.

Warby Parker disputes that argument, writing that judges in other cases have “routinely considered the sophistication of online consumers” in trademark disputes.

Warby Parker also notes that 1-800 Contacts has a long history of suing competitors over their search ads.

1-800 Contacts “has been engaged in a multi-year campaign to litigate against competitors that bid on its trademarks for the purposes of advertising through Google AdWords and other keyword advertising programs,” Warby Parker writes. “This case is 1-800 Contacts’ latest attack.”

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.