IP Law Daily, TRADEMARK—D. Ariz.: Sophisticated internet users searching for lawyer unlikely to be confused by ad, (May 19, 2023)

By Patricia K. Ruiz, J.D.

The defendant presented evidence that only three percent of consumers were confused by the search engine-generated ad.

In a rare case where summary judgment is warranted on the issue of likelihood of confusion, the U.S. District Court for the District of Arizona granted summary judgment in favor of a law firm accused of trademark infringement for purchasing as a Google advertising keyword the registered trademark of a competing firm. The court found that consumers were likely relatively sophisticated internet users with an interest in finding a good personal injury law firm and that evidence of actual confusion was relatively insignificant (Lerner & Rowe PC v. Brown Engstrand & Shely LLC, May 18, 2023, Campbell, D.).

Alleged infringement. Lerner & Rowe PC, an Arizona-based law firm specializing in personal injury litigation, operates Lerner & Rowe Law Group, another law firm specializing in other areas of law, and Lerner & Rowe Gives Back Foundation, a nonprofit organization dedicated to community outreach (Lerner, collectively). Lerner owns three federally registered trademarks: “Lerner & Rowe,” “Glen Lerner,” and “Lerner & Rowe Gives Back LR.” Lerner advertises by Internet, radio, television, and print media throughout Arizona and the United States, spending more than $1 million per month. The Accident Law Group (ALG) is a personal injury law firm that operates primarily in the Phoenix area. The founder of the firm manages the firm and directs its advertising activity. ALG competes with Lerner and employers a similar advertising strategy.

From December 2015 to May 2021, ALG purchased specific keywords from Google as part of their marketing strategy. When an Internet user entered search terms that includes the purchased keywords, Google would return normal search results but would also include ALG’s advertisements in the results. One of the keywords ALG purchased was “Lerner & Rowe,” and, as a result, consumers searching for “Lerner & Rowe” on Google would receive returns that included ALG’s advertisement. Lerner filed suit claiming trademark infringement, unfair competition, false designation of origin, false description, and unjust enrichment, claiming this advertising tactic infringed its trademark.

Trademark infringement claim. To prevail on a trademark infringement claim, a plaintiff must prove: (1) that it has a protectible ownership interest in the mark; and (2) that the defendant’s use of the mark is likely to cause consumer confusion, thereby infringing the plaintiff’s rights to the mark. The parties agree that “Lerner & Rowe” is a valid, protectible trademark that belongs to Lerner. They also agree that ALG purchased “Lerner & Rowe” as a keyword from Google for several years. Each side moved for summary judgment on the second element of Lerner’s trademark claim—whether ALG’s actions caused a likelihood of confusion.

Likelihood of confusion. Courts have generally not adopted the view that the purchase of another firm’s trademark as a Google keyword would constitute infringement, almost always finding no likelihood of confusion in such situations. The Ninth Circuit identified eight factors for assessing likelihood of confusion: (1) strength of the mark; (2) relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) types of goods or services and degree of care exercised by consumers; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines. These factors are pliant, with the relative importance of each individual factor being case-specific, especially in cases of Internet advertising. In this case, the court determined the four most important factors are the strength of the mark, evidence of actual confusion, the type of goods and degree of care likely to be exercised by the purchaser, and the labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.

Relevant factors. As to the first factor, the parties do not dispute Lerner’s trademark is strong, and the court noted that consumers searching for “Lerner & Rowe” are presumably looking for specific services, not a category of services. Consumers, therefore, could have been more susceptible to confusion when sponsored links appear advertising ALG’s similar personal injury litigation services. As to evidence of actual confusion, Lerner points to ALG call logs for the four years in question, during which callers to ALG’s phone number mentioned Lerner & Rowe 236 times. While the call logs are certainly relevant evidence, the court said, on the question of consumer confusion, they are not definitive. More information is needed to determine which if any of the callers were in fact confused by ALG’s use of the keywords and Internet ads. ALG presented a consumer survey showing a net confusion rate of three percent, and Lerner did not present a competing consumer survey. If believed by a jury, the court said, the survey would further support ALG’s contention that any confusion in this case is minimal.

Confusion is less likely where buyers exercise care and precision in their purchases, such as when they are shopping for expensive or sophisticated items. Selecting a lawyer is likely quite important to persons seeking to recover damages for personal injuries, even if they are not normally sophisticated consumers of legal services. Additionally, the high cost of legal services makes it likely that consumers are likely to exercise more care in choosing a lawyer. The court found consumers searching on Google for “Lerner & Rowe” are likely to exercise significant care, reducing the chances of confusion. Finally, considering evidence that ALG’s advertisements on the Google search results pages in question are labeled with the word “Ad” in boldface type at the top left corner of the search results entry, found that a consumer looking at the screenshots provided would see ALG’s entry with their name and trademark, clearly labeled “Ad,” and would see Lerner’s competing entry with their name and trademark. The consumers would see nothing in ALG’s ad to suggest ALG is Lerner & Rowe. Given the likelihood that the consumers conducting these searches were relatively sophisticated Internet users with a strong incentive to choose a good law firm to vindicate their personal injury rights, the court found the likelihood of confusion is very low.

The court found that Lerner presented insufficient evidence to survive summary judgment, noting that this is one of the rare cases where summary judgment is warranted on the issue of likelihood of confusion. The court further found that the less relevant factors do not alter its confusion.

The Case is No. 2:21-cv-01540-DGC.

Attorneys: Andrew Michael Gaggin (Lerner and Rowe Law Group) for Lerner & Rowe, PC. Aaron K. Haar (Jaburg & Wilk PC) for Brown Engstrand & Shelly LLC.

Companies: Lerner & Rowe, PC; Brown Engstrand & Shelly LLC

MainStory: TopStory Trademark TechnologyInternet ArizonaNews GCNNews