1-800-Contacts has added another suit to its list of attempts to protect its trademarked name when competitors use the terms as part of their search advertising. According to the suit, Lensworld bid on the term “1-800-contacts” as part of its search marketing campaign. 1-800-Contacts claims it violates their trademark.
While there is not a clear answer to this issue, there is more litigation on this topic. Google has successfully fended off lawsuits from Geico and American Blinds. However, a Dallas, Texas federal judge has allowed American Airlines’ suit to proceed past the pleading stage.
1-800-Contacts has aggressively pursued this litigation and reached several settlements. Rather than fighting Google and other search engine behemoths, 1-800-Contacts is after the actual competitors. To succeed, 1-800-Contacts is going to have to show bidding on its trademarked name is a “use” in commerce of the trademarked name and that when a search query triggers competitor’s sites, it causes consumer confusion. According to Media Post’s Online Daily, 1-800-Contacts has brought several other similar cases to guard against confusion. “The worry that they have is that these advertising methods will make consumers think there’s an affiliation between these other companies and our client,” said 1-800-Contacts’ lawyer, Bryan G. Pratt according to Media Post.
A more detailed analysis of the issue can be found in the permanent article on important internet legal issues on the left side of this site.