search results labeled as results aren’t confusing

Carter v. Oath Holdings, Inc., No. 17-cv-07086-BLF (N.D.
Cal. Jun. 21, 2018)
Carter allegedly owns a trademark registration for “The
House of Figurine Sculptures.com.” Defendant is Yahoo!, which runs a search
engine.  The complaint alleged that
Yahoo! uses “two active counterfeit marks identical to Plaintiff[’s] genuine
mark” titled “The House of Figurine Sculptures – Image Result” and “More The
House of Figurine Sculptures Images”:
Carter alleged that he has no connection to “those goods and
services sold” and that Yahoo!’s “counterfeit marks misrepresent [the]
designation of origin” of the goods and services. The court dismissed the
trademark infringement, false designation of origin, and counterfeiting claims.
First, the complaint failed to sufficiently plead “use” of the mark. “Courts
have held that an online provider does not ‘use’ a mark under the meaning of
the Lanham Act when its search engine returns a search result based on an input
of a consumer. As such, merely returning search results to purportedly display
a trademark does not show that Defendant is liable under the Lanham Act.”
Second, the complaint failed to sufficiently allege a
likelihood of confusion. Mere allegations that Yahoo!’s “counterfeit marks
misrepresent [the] designation of origin” and that their “counterfeit marks
[are] deceptive, confusing, and is likely to cause mistake on the part of [the]
consuming public” were conclusory and insufficient. [Note that if more plausible
facts were alleged leading up to this (e.g., that defendant was selling
identical goods/services in direct competition with plaintiff, using the same
mark), the very same allegations would not be treated as conclusory but as
plausible inferences from the other alleged facts.]

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