My Fair Law Firm

The United States Court of Appeals for the Ninth Circuit affirmed the grant of summary judgment to the defendants in a trademark dispute involving a law firm name as a googe search engine

“What’s in a name?” WILLIAM SHAKESPEARE, ROMEO AND JULIET act 2, sc. 2, l. 46. According to Juliet Capulet, not much. Romeo Montague’s last name, though charged with meaning, does not confuse her about who he is. In this keyword advertising trademark dispute, the district court saw most consumers as discerning Juliets. Appellant, however, likens them to the larger Capulet clan, a group more prone to confusion. As explained below, we disagree and affirm the district court’s grant of summary judgment.

The facts

Appellant Lerner & Rowe, PC (“Lerner & Rowe”), and Appellee Brown, Engstrand & Shely, LLC—which does business as The Accident Law Group (“ALG”)—are both personal injury law firms based in Arizona. Founded in 2005, Lerner & Rowe is the larger of the two firms with nineteen offices throughout the state. It has three registered trademarks: on June 14, 2011, it registered the phrase “Lerner & Rowe Gives Back;” on March 3, 2015, it registered the name “Glen Lerner;” and, on May 19, 2020, it registered the name “Lerner & Rowe.” Lerner & Rowe has spent over $100 million promoting its brand and trademarks in Arizona.

Since its founding in 2015 until 2021, ALG purchased the term “Lerner & Rowe” as a Google Ads keyword, which prompted ALG’s advertisements to appear near the top of Google’s search results list whenever someone searched for “Lerner & Rowe.” This strategy, known as “conquesting,” is a common internet marketing tool by which companies promote their services to potential customers who might be searching for a competitor. In fact, Lerner & Rowe has engaged in conquesting in other contexts. Importantly, while the format and copy of ALG’s advertisements varied from search to search, they never included or referenced the term “Lerner & Rowe.”

On September 8, 2021, Lerner & Rowe filed a complaint alleging claims for (1) trademark infringement, unfair
competition, false designation of origin, and false description under the Lanham Act; (2) state trademark infringement and unfair competition; and (3) unjust enrichment. In a May 18, 2023, order, the district court granted summary judgment in favor of ALG on the trademark infringement and unjust enrichment claims but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently entered summary judgment as to all claims. Lerner & Rowe timely appealed that ruling. We have jurisdiction pursuant to 28 U.S.C. § 1291.

The mark is strong

The district court correctly found, and ALG does not dispute, that Lerner & Rowe’s mark is strong. Not only is the mark federally registered, but Lerner & Rowe has spent millions of dollars advertising it, garnering the business of over 100,000 clients. This factor weighs in favor of Lerner & Rowe.

Risk of confusion

Having determined that Lerner & Rowe’s evidence of actual confusion is de minimis, we must now decide how to weigh it. In one sense, the evidence Lerner & Rowe has presented is so slight it may as well have presented none at all. Due to the difficulties in gathering evidence of actual confusion, we have noted that “its absence [is] generally unnoteworthy.”

Consumer care

Sophisticated consumers and those shopping for highvalue products are likely to exercise a higher degree of care while shopping and are, therefore, less likely to be confused by similar marks.

,…The district court weighed this factor in favor of ALG because acquiring legal services can be expensive and important and because those accustomed to online shopping are typically savvy enough to differentiate between search engine results.

We agree that this factor weighs in ALG’s favor. Since at least 2010, we have recognized that “[c]onsumers who use the internet for shopping are generally quite sophisticated about” how the internet functions.

Labeling

The district court, after analyzing three screenshots depicting ALG’s advertisements, concluded that the advertisements would not confuse a reasonably prudent consumer searching online for personal injury legal services. We agree.

…the only feature identifying ALG as the source of the advertisement is the URL, which is in a smaller, lighter font. While these features could possibly cause confusion in isolation, our job is to analyze the advertisements within the context of the entire search results page. That page invariably contains a result for Lerner & Rowe that includes the precise search term at issue, dispelling any confusion ALG’s advertisements might cause. The parties’ presentation of de minimis evidence of actual confusion only bolsters our conclusion that it is only the “[u]nreasonable, imprudent and inexperienced webshoppers” who might find the search results pages confusing.

Conclusion

The district court was correct to conclude that this is one of the rare trademark infringement cases susceptible to summary judgment. The generally sophisticated nature of online shoppers, the evidence demonstrating that there is not an appreciable number of consumers who would find ALG’s use of the mark confusing, and the clarity of Google’s search results pages, convince us that ALG’s use of the “Lerner & Rowe” mark is not likely to cause consumer confusion. The district court’s judgment is affirmed.

DESAI, Circuit Judge, concurring:

I concur in the majority opinion in full. But I write separately to urge our court to reconsider whether keyword bidding and purchasing constitutes a “use in commerce” under the Lanham Act. Our binding precedent says it does, Network Automation, Inc. v. Advance Systems Concepts, Inc., 638 F.3d 1137, 1144–45 (9th Cir. 2011), but I am not convinced that we got it right or that our holding withstands the test of time and recent advancements in technology.

…Twenty-five years ago, we recognized that “emerging technologies require a flexible approach” in the internet context. Brookfield, 174 F.3d at 1054. But that flexible approach is limited by the plain text and purpose of the Lanham Act. At bottom, trademark law is designed to protect parties against infringing uses of their marks. Bidding on and purchasing keyword search terms may not constitute such a use. We should take the opportunity to directly address this issue en banc rather than relying on our holding in Network Automation.

(Mike Frisch)