IP Law Daily, TRADEMARK—W.D. Wis.: Keyword ad suit between personal injury law firms moves forward, (May 15, 2023)

By Ursula Furi-Perry, J.D., MBA

Nicolet Law Offices plausibly alleged that a competing firm violated the Lanham Act by purchasing search engine keywords and displaying NICOLET LAW in the resulting advertisements.

In a controversy involving two law firms that both provide personal injury law services to clients in Wisconsin and Minnesota, a Wisconsin federal court has determined that the plaintiff, Nicolet Law Offices S.C., plausibly alleged that the competing firm and its advertising agency violated the Lanham Act by purchasing the plaintiff’s firm name as a search engine advertising keyword in an effort to divert traffic to its own website. The plaintiff sufficiently alleged that the defendants’ search engine advertisements displaying the plaintiff’s name in the headlines were likely to cause consumer confusion. The court, however, dismissed the plaintiff’s claim for deceptive advertising under Wisconsin law (Nicolet Law Office S.C. v. Bye, Goff & Rohde, Ltd., May 10, 2023, Crocker, S.).

Background.

Nicolet Law Offices (Nicolet) and Bye, Goff & Rohde (BGR) both provide personal injury law services to clients in Wisconsin and Minnesota. Nicolet owns a Wisconsin trademark for NICOLET LAW, which it uses to market its legal services extensively, and applied for registration with the USPTO in March 2022. Sometime before that, BGR retained a Minnesota advertising agency to create a Google Ads campaign for marketing its legal services. As part of that campaign, BGR and its ad agency purchased keywords, including the term NICOLET LAW, which would result in BGR ending up at the top of certain search results, in an effort to divert traffic to BGR’s website. An unsuspecting potential client, thus, could end up on BGR’s website after looking up Nicolet Law, or mistakenly believe that there was some association between the two law firms.

Nicolet demanded that BGR immediately amend its ads to remove any reference to Nicolet Law; in August 2022, however, Nicolet discovered that BGR’s ads were again referring to Nicolet in the headlines. Nicolet filed suit for violation of the Lanham Act and Wisconsin law in the U.S. District Court for the Western District of Wisconsin. BGR filed a motion to dismiss, along with a motion to transfer the case to a federal court in Minnesota.

The district court addressed the motion to dismiss under Rule 12(b)(6) of the Federal Rules of Civil Procedure, reviewing whether the plaintiff stated a prima facie claim upon which relief could be granted.

Unfair competition under the Lanham Act. To succeed on this claim, Nicolet must prove that its mark is protectable and that BGR’s use of the mark is likely to cause confusion among customers. The parties agreed that the NICOLET LAW mark is at best a descriptive law, and it was established that Nicolet did not own a registration with the USPTO; therefore, Nicolet needed to show that the mark had acquired secondary meaning. The court held that Nicolet met that burden: it had used the mark for more than 15 years and used it extensively in its marketing; it had common law rights in the mark; and it spent substantial time and expense to promote the mark in connection with marketing and advertising its legal services.

Moreover, the court held that Nicolet’s allegations in its complaint were sufficient to show a likelihood of confusion for purposes of a motion to dismiss. The parties serve clients with similar legal services in the same area, and “potential consumers of legal services using Google to search for law firms generally do not exercise a high degree of care when scrutinizing their search results, making it easy for consumers to be duped into clicking on a headline with the phrase ‘Nicolet law’ believing the targeted website is actually affiliated with Nicolet,” the court stated. Nicolet plausibly alleged a claim under the Lanham Act to meet the low threshold of a motion to dismiss.

Deceptive advertising under Wisconsin state law. Regarding this claim, the court agreed with BGR that Wisconsin federal courts have ruled that Wisconsin state law did not allow Nicolet to state a claim against a competitor for misrepresentations to a third party. The court rejected Nicolet’s claims for exceptions under recent case precedent, dismissing the state law claims in its complaint.

Motion to transfer the case to Minnesota federal court. BGR argued that the case should be transferred for convenience to the federal court in Minnesota. The court first reviewed each party’s access to and distance from each forum, holding that both parties had connections to both the Wisconsin and Minnesota forums, as they represent clients in both states. The location of the material events was not a significant factor, the court held, given that the bulk of the documentary evidence in the case was likely to exist in digital form. While the factor regarding the convenience of the witnesses weighed slightly in favor of the transfer, neither the convenience of the parties and witnesses nor the location of the relevant events weighed strongly in one direction or the other. “But the remaining factor, the interests of justice, favors keeping the case in this court,” the federal district judge noted, particularly as the Wisconsin court would be slightly more familiar with Wisconsin state law. The court denied the motion to transfer.

Conclusion. The district court granted the motion to dismiss in part and denied it in part, also denying to motion to transfer the case.

The Case is No. 3:22-cv-00654-slc.

Attorneys: Adam R. Roznowski (Gass Turek LLC) for Nicolet Law Office S.C. Russell Morgan Spence, Jr. (Spence Law Firm) for Bye, Goff & Rohde, Ltd. and Saint Paul Agency, LLC.

Companies: Nicolet Law Office S.C.; Bye, Goff & Rohde, Ltd.; Saint Paul Agency, LLC

Cases: Trademark TechnologyInternet WisconsinNews