• by Wendy Davis  @wendyndavis, March 1, 2023

Contact lens company 1-800 Contacts is pressing a federal appellate court to revive claims that rival Warby Parker wrongly used the name “1-800 Contacts” in search ads.

“In its attempt to free-ride on 1-800’s valuable goodwill and to garner unearned consumer consideration, Warby intentionally, and with intent to deceive, copied elements of 1-800’s website and then directed consumers who specifically searched for the 1-800 marks to its copycat webpage while it sent consumers who searched for other contact-lens-related terms to a very different site,” 1-800 Contacts argues in papers filed Tuesday with the 2nd Circuit Court of Appeals.

The company's argument comes in a dispute dating to August of 2021, when 1-800 Contacts alleged its trademark was violated when its brandname was used to trigger search ads for Warby Parker.

1-800 Contacts alleged 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.

U.S. District Court Judge Kevin Castel in New York threw out 1-800 Contacts' lawsuit at an early stage, ruling that Warby Parker's search ads weren't likely to confuse consumers. He wrote that consumers today are “sophisticated enough” to review search results and websites before making purchases.

1-800 Contacts recently appealed that ruling to the 2nd Circuit, arguing that Castel should have allowed a jury to decide whether the ads were confusing.

Warby Parker countered to the 2nd Circuit that judges in other trademark disputes “routinely considered” consumers' sophistication.

1-800 Contacts on Tuesday pressed its argument that the dispute should have been decided by a jury.

“It is well established that ... consumer sophistication is a quintessential question of fact to be resolved by the jury,” 1-800 Contacts wrote.

1-800 Contacts has a history dating 19 years 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.

1-800 Contacts' prior settlements 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 ruling, writing that courts should defer to settlement agreements in trademark cases, even if the deals limited competition.