TM use in ad text and on website not confusing where true source is clearly marked

Guardian Pool Fence Sys. Inc., Plaintiff, v. Sunwest
Industries, Inc., No. 16-0824, 2017 WL 2931413 (C.D. Cal. Jun. 1, 2017)
Guardian and All-Safe compete in the market for mesh pool
fences; a Guardian fence costs around $2,000, and an All-Safe fence costs
around $1,500. The parties previously litigated keyword ad buys, but dismissed
the litigation. In 2016, a potential Guardian customer reportedly said that he
had seen the Guardian name in numerous places on All-Safe’s website and asked
if the two companies were related.
As a result, Guardian found that its name appeared on
All-Safe’s website in several places. “Guardian Pool Covers,” “Guardian Pool
Safety,” “Guardian Pool Fence,” and “Guardian Pool Products” all appeared as
“Topics” listed in the right hand column of All-Safe’s website, along with many
other topics such as “Swimming Pool Safety.” 
Each topic had its own page collecting all of the posts tagged with that
specific topic.  Each post had a “by”
field, which All-Safe used to insert topic labels.  Guardian argued that this practice suggested
that Guardian had authored the posts, but the court disagreed, given that other
“by” entries included “Removable Mesh Pool Fence” and “Swimming Pool Safety.”  The Guardian-tagged posts didn’t discuss Guardian,
but were generally about pool safety, and they didn’t offer products for
sale.  All-Safe said that it didn’t
authorize the Guardian tags, but that its third party vendor created them
without specific authorization, and they were removed shortly after this
litigation began.  The Guardian topic
pages were viewed 17 times total by 5 unique users, presumably some of them
Guardian’s counsel; 17 views was less than .01% of all All-Safe website
Here’s what the topic list looked like:
Here are some tagged posts: 

As for the keyword aspects of the case, from January 2008
until February 2011, All-Safe used “guardian pool fence” as a search term
targeted at Spain, Portugal, Puerto Rico, and Costa Rica, resulting in four
clicks.  These campaigns ended in
February 2011.   From January 2008 to May 2016, All-Safe’s AdWords
campaigns together generated well over 800,000 clicks.  Also, for a few months in 2016, Guardian
included “all safe pools” in its Google AdWords, along with eighteen other
search terms, several of which included the term “all safe” or “all-safe,” though
Guardian argued that this was inadvertent and in contravention of its standard
practice. In May 2016, a search for “all-safe” returned an ad for Guardian with
the headline “all safe pools –” “All safe pools”
generated six clicks on Guardian ads.
Guardian didn’t challenge All-Safe’s AdWords search program,
only the Guardian Topics on All-Safe’s website. The court found confusion
unlikely.  Along with the usual
multifactor test, internet search-related cases also require considering “an
additional factor of particular importance”: “the labeling and appearance of
the advertisements and the surrounding context on the screen displaying the results
page.” Though Guardian wasn’t making a search-related claim, but rather challenging
a webpage layout and tags in a topics section, this factor was still applicable
“because the full context of the webpage is important to assessing how a
consumer would understand the Guardian Topics.” In cases challenging online
activity, the Ninth Circuit has sometimes skipped the Sleekcraft test “in favor
of a more streamlined inquiry: ‘(1) Who is the relevant reasonable consumer?;
and (2) What would he reasonably believe based on what he saw on the screen?’” This
was the appropriate analysis here, “because it is a website rather than a
product that bears the mark.”
The consumers here would be careful and accustomed to
shopping online, given the cost of the pool nets.  What would such customers understand? 
The fact that the Guardian Topics
are listed as topics suggests that somewhere on All-Safe’s website there is
discussion of the various Guardian Topics. A company discussing a competitor on
its own website does not alone amount to trademark infringement or generate
confusion. A reasonably prudent consumer would draw very little from the fact
Guardian appeared as a topic on the All-Safe website. At worst, a reasonable
consumer might click on a topic “uncertain as to what they will find.”
A consumer who did click would find blog posts about pool
safety, not about Guardian.  “The use of
the term Guardian in the topic names is confusing, but it is confusing in that
it makes little sense given the ultimate content of the posts tagged with the
topic. It does almost nothing to suggest that Guardian is in any way the source
of the pool nets for sale through All-Safe, and pool nets are not directly
offered for sale anywhere in blog posts.” 
Thus, the uses wouldn’t create confusion as to the origin of All-Safe’s
goods or services.  Moreover, the Ninth
Circuit has cautioned that reasonable consumers “expect to find some sites that
aren’t what they imagine based on a glance at the domain name or search engine summary.”
Similarly, the court here considered reasonable consumers “capable of
dismissing dead-end topics labels as oddities, indicative of almost nothing.”
The fact that a single consumer might potentially have been
confused—the one who talked to Guardian’s VP—was insufficient to show likely
confusion, especially given the hundreds of thousands of views of All-Safe’s
website. All-Safe’s website prominently displayed its logo, and only its logo,
on every page. “This ‘broader context’ of the topics pages mitigates against
any possible confusion as to a connection with Guardian.” Summary judgment for All-Safe.

All-Safe counterclaimed based on Guardian’s use of “all
safe” or “all-safe” in Google AdWords. However, as All-Safe itself said, “there
is growing consensus in the case authorities that purchasing trademarked
keywords for the purpose of competitive keyword advertising does not violate
the Lanham Act.” Guardian didn’t use the All-Safe mark on its website or the
phrase “all safe” in its domain name. Plus, clear labeling of a search result
as an ad “can help eliminate any possibility of confusion.”  Interestingly, the court applied this
principle to an ad whose text arguably used both All-Safe’s mark and Guardian’s
mark, which not all courts would—the court thought that clear marking as an ad
was enough of a signal that consumers might get competing information.  Even though All-Safe’s trademark appeared in
the ad, it “also clearly incorporated Guardian’s non-infringing domain name,”
and thus Guardian’s ad wasn’t likely to confuse.

from Blogger

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