Warby Parker successfully convinced a federal appeals court on Tuesday to uphold a decision affirming that its use of a competitor’s name to redirect search-engine users to its online contact lens store did not violate U.S. trademark law.
The 2nd U.S. Circuit Court of Appeals in New York ruled that 1-800 Contacts failed to demonstrate that Warby Parker’s keyword advertising would mislead potential customers.
Roxanne Elings, an attorney for Warby Parker from Davis Wright Tremaine, expressed the company’s delight with the ruling. Representatives from 1-800 Contacts did not respond immediately to requests for comment.
Warby Parker, primarily known for its eyeglasses, began selling contact lenses in 2019. In 2021, 1-800 Contacts sued Warby Parker, alleging that the company unlawfully purchased keyword advertising on Google and other search engines, triggering Warby Parker ads when users searched for “1-800 Contacts.”
A federal judge in New York dismissed the case in 2022, determining that the marketing strategy was unlikely to confuse customers. The 2nd Circuit upheld this decision, aligning with the “consensus view” of other circuits that have addressed similar issues.
U.S. Circuit Judge Eunice Lee noted, “Despite 1-800’s emphasis on the allegedly nefarious nature of Warby Parker’s keyword bidding activities, this well-known internet marketing strategy — by itself — does not support a claim of trademark infringement absent additional use of 1-800’s Marks.”
The case is officially titled 1-800 Contacts Inc v. JAND Inc d/b/a Warby Parker, 2nd U.S. Circuit Court of Appeals, No. 22-1634.
