Warby Parker escapes 1-800 Contacts’ trademark lawsuit

Update:

• Warby Parker beat a lawsuit alleging it infringed on trademarks of 1-800 Contacts. 
• A federal judge in New York cleared the eyewear provider of claims its alleged use of targeted search engine advertising was trademark infringement. 
• The judge ruled a reasonable consumer would be able to tell the difference between the two companies’ marks and ruled Warby Parker was therefore not misleading consumers or confusing the market. 
• 1-800-Contacts filed a complaint in August 2021 alleging Warby Parker had infringed on several of its trademarks, including “1800Contacts.” 
• In June 2021, a 2nd Circuit panel ruled 1-800-Contacts could continue to file trademark lawsuits against competitors over the use of certain search engine keywords. 

Warby Parker lawsuit overview:

• Who: Warby Parker is calling on a New York federal judge to toss a lawsuit alleging trademark infringement.
• What: 1-800 Contacts says that the eyewear giant’s keyword advertising infringements on its trademark and that Warby Parker is confusing consumers into buying its products rather than 1-800 Contacts.
• Where: The case is pending in New York district court.

(Dec. 14, 2021)

Warby Parker is urging a New York federal judge to toss out a lawsuit filed by 1-800 Contacts that alleges trademark infringement, saying the contacts company has undertaken a campaign to dissuade competitors from legal advertising and has failed to make any claims in its lawsuit against the eyewear manufacturer.

“The present lawsuit is a continuation of 1-800 Contacts’ concerted legal campaign to dissuade its competitors from engaging in competitive ‘keyword’ advertising,” Warby Parker writes in a motion filed in New York federal court. 

Keyword advertising, it explains, is a type of advertising developed by Google and other search engines that allows advertisers to bid to place advertisements on the search engine results page.

The practice, the eyewear company says, is not illegal and therefore isn’t trademark infringement and cannot violate unfair competition laws.

1-800 Contacts filed the lawsuit this year claiming Warby Parker bought “1-800 Contacts” as a keyword from search engines so its ads would pop up when a user searched the term, and also that Warby Parker diverted users searching for 1-800 Contacts to its website which copied “key elements” of 1-800 Contacts’ site without saying it was a competitor.

The lawsuit was filed two months after a federal appeals court ruled that 1-800 Contacts could keep bringing trademark cases against competitors, after it was sued by the Federal Trade Commission (FTC) for allegedly violating antitrust law, Law360 reports. The FTC argued the cases being brought by 1-800 Contacts and the settlements that stemmed from them restricted competition and limited options for consumers. However, its argument was rejected by the 2nd Circuit.

In its motion to dismiss the website, Warby Parker argues that 1-800 Contacts must plead facts beyond “just allegations” proving that Warby Parker’s keyword advertising could result in consumers’ confusion.

“Plaintiff has failed to do so,” the company says.

“Of the thin additional facts that Plaintiff proffers as evidence of likelihood of confusion, perhaps its most substantial allegation is that Warby Parker’s advertisement for its sales of contact lenses mimics the ‘recognizable and distinctive look and feel’ of 1-800 Contacts’ website,” the motion reads.

However, Warby Parker says, “tellingly” 1-800 Contacts has refused to amend its complaint to actually allege its website possesses any trade dress rights.

“Plaintiff’s refusal amounts to a tacit acknowledgement that it cannot meet the stringent standards for pleading trade dress rights for its website.”

1-800 Contacts argues in the lawsuit that Warby Parker’s use of the color blue and also a large rectangular box on its site amount to trade dress infringement, to which the eyewear giant says trade dress must be more than just “generic” or “functional” and 1-800 Contacts “cannot plausibly and in good faith” claim those elements to be trade dress.

Do you think it’s fair for companies to be able to buy other companies’ names as search terms? Let us know your thoughts in the comments section!

1-800 Contacts is represented by Stephen Robert Fishbein of Shearman & Sterling LLP and Steven Joffee, Jeffrey Brown, Stephen Horace and Thomas Agnello of Michael Best & Friedrich LLP.

Warby Parker is represented by L. Danielle Toaltoan of Davis Wright Tremaine LLP.

The Warby Parker trademark infringement lawsuit is 1-800 Contacts Inc. v. JAND Inc., d/b/a Warby Parker, Case No. 1:21-cv-06966, in the U.S. District Court for the Southern District of New York.

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