A recent federal court decision from Connecticut has laid down some potentially new rules when it comes to trademarks and internet marketing. The lawsuit pits two competing companies and a dispute as to whether marketing practices of one company were meant to illegally steal away potential customers of the other.
The products being sold are fruit. Plaintiff Edible Arrangements, LLC, is a seller of artfully designed fresh fruits that are sculpted in the shapes of flowers and arranged to resemble floral arrangements. Defendant Provide Commerce, Inc., is a direct competitor which sells a variety of products including flowers, chocolates, fresh fruit, gift baskets and personalized gifts under brands such as “ProFlowers” and “Shari’s Berries” which offers a variety of items through its online store.
Judge Vanessa L. Bryant’s decision on defendant’s motion for summary judgement covered trademark infringement in the world of internet keyword advertising. She denied Provide’s request for partial summary judgment against trademark owner Edible Arrangements, which sued it for trademark infringement.
Online advertising is increasingly important to many companies’ marketing strategies. One way to be more successful and have ads appear before as many people as possible is to successfully bid or pay fees to search engines so advertisements appear when consumers search on particular keywords. Edible Arrangements claimed Provide infringed its trademark by paying for search terms that resemble their trademark, even though they do not describe any of Provide’s products. Provide included in its ads terms very similar to Edible Arrangements’ terms including “Edible Fruit Arrangements.”
Judge Bryant found Edible Arrangements’ trademark infringement case should proceed to trial. She looked at whether Provide’s keyword search purchases could create a likelihood of confusion, which is a key factor in trademark infringement cases. Provide argued that bidding on the phrase “edible arrangements” for search engine ads didn’t create a likelihood of confusion because it’s a common practice to purchase search engine keyword phrases similar to your competitors’ products.
The judge found that the issue wasn’t just bidding for keywords. She decided the important issue was that in addition to the use of keywords similar to or the same as plaintiff’s products the individual using the search term would be sent to an ad for Provide which looked very similar to those of the plaintiff which could create a likelihood of confusion.
The “real world” often outpaces the development of laws, especially when it comes to technology issues. In this case it’s the use of keyword based internet searches and related advertising, things that didn’t exist until relatively recently. If your business is involved in online marketing aided by keyword advertising on search engines you need to be aware of legal limitations in this Brave New World of marketing and advertising. Internet keyword search advertising linked to advertisements that can be seen as confusingly similar to a competitor’s distinctive mark could result in a lawsuit.
The judge’s order is a preliminary one and only time will tell if the case settles or is decided by a jury and if so what their decision will be. But this is an issue you should be mindful of when putting together your internet marketing and advertising plans.
If you own a trademark and believe another party is infringing on your rights, or you have been accused of trademark infringement, contact our office so we can discuss the situation, applicable laws and the best ways to protect your legal interests and rights.