• by Wendy Davis  @wendyndavis, October 22, 2024

The Accident Law Group, an Arizona law firm, did not infringe trademark by using the name of another firm, Lerner & Rowe, to trigger search ads on Google, a federal appeals panel unanimously said Tuesday.

The ruling, issued by a three-judge panel of the 9th Circuit Court of Appeals, upheld U.S. District Court Judge David Campbell's July 2023 decision in favor of the Accident Law Group.

The appellate judges said the Accident Law Group's use of Lerner & Rowe to trigger ads wasn't likely to confuse consumers due to the “generally sophisticated nature of online shoppers,” the “clarity of Google's search results pages,” and evidence showing that very few consumers were actually confused by the ads.

“Sophisticated consumers and those shopping for high-value products are likely to exercise a higher degree of care while shopping and are, therefore, less likely to be confused by similar marks,” Circuit Judge Roopali Desai wrote in an opinion joined by Circuit Judge Ana de Alba and District Court Judge Edward Chen.

The ruling stemmed from a complaint brought in September 2021 by Lerner & Rowe, which alleged that the Accident Law Group's use of the phrase “Lerner & Rowe” to trigger search ads was likely to confuse consumers.

Lerner & Rowe argued in court that the evidence showed some search users were actually confused by the ads, citing evidence showing that between 2018 and 2021, the Accident Law Group received 236 phone calls from people who mentioned Lerner & Rowe.

But the 9th Circuit said 236 instances of confusion was minimal, considering how many ads appeared between 2017 and 2021.

The judges noted that evidence from Google showed that searches for the phrase “Lerner & Rowe” returned results featuring an ad from the Accident Law Group around 109,000 times between 2017 and 2021, and 102,000 times between 2018 and 2021.

“Evidence of 236 instances of actual confusion, therefore, constitutes only 0.216% of the total number of users exposed to the challenged advertisements,” Desai wrote, adding in a footnote that the figure would drop to 0.213% if based solely on ads appearing between 2018 and 2021.

“No reasonable jury would conclude that this percentage is anything but de minimis and fails to support a finding of likelihood of confusion,” he added.

The ruling comes several weeks after a different federal appeals court -- the 2nd Circuit Court of Appeals -- upheld a decision dismissing 1-800 Contacts' trademark infringement lawsuit against Warby Parker. In that matter, 1-800 Contacts alleged that Warby Parker wrongly used the brand name 1-800 Contacts to trigger Google search ads.

The 2nd Circuit judges said in that case that using a competitor's trademark to trigger a search ad “is a permissible and standard industry practice.”