Warby Parker defeats 1-800 Contacts lawsuit over keyword ads

2 minute read

The company logo for eyeglass retailer Warby Parker at the New York Stock Exchange (NYSE) in New York City, U.S., September 29, 2021. REUTERS/Brendan McDermid

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  • 1-800 Contacts said search results, similar website will cause confusion
  • Judge says customers unlikely to think they're buying from 1-800 Contacts

(Reuters) - Warby Parker has escaped a trademark lawsuit brought by 1-800 Contacts in Manhattan federal court over its use of "1-800 Contacts" search-engine keywords to redirect searchers to its online contact-lens store.

Warby Parker's ads are unlikely to confuse potential customers, U.S. District Judge Kevin Castel said in a ruling Tuesday.

A 1-800 Contacts spokesperson said in a Wednesday email that the decision was "inconsistent with several well-established legal principles," and that the company is "evaluating appropriate next steps, including whether to appeal."

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Warby Parker and its attorneys did not immediately respond to a request for comment.

Warby Parker, best known for its eyeglasses, began selling contacts in 2019. 1-800 Contacts sued Warby Parker last year, alleging it bought keyword ads on Google and other search engines for "1-800 Contacts" that cause searchers to see Warby Parker ads at the top of the results.

The lawsuit also said the ads link to a site that mimics 1-800 Contacts' website, unlike the normal Warby Parker site that appears in searches for "Warby Parker contacts."

The court said Tuesday that Warby Parker did not infringe 1-800 Contacts' trademarks because it was not likely to cause consumer confusion.

Castel said the companies' trademarks were too dissimilar to confuse contact-lens buyers, who are likely to pay close attention to what they are purchasing, and noted that Warby Parker's name is clearly displayed in the search results and on its website.

The judge said prospective customers will take the time to figure out that the search results link to Warby Parker's website, and discern that they are buying contacts from Warby Parker after reaching the site.

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

For 1-800 Contacts: Stephen Fishbein and Todd Stenerson of Shearman & Sterling, Steven Joffee and Thomas Agnello of Michael Best & Friedrich

For Warby Parker: Danielle Toaltoan of Davis Wright Tremaine

(NOTE: This story has been updated with comment from 1-800 Contacts.)

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1-800 Contacts sues Warby Parker for trademark infringement over keyword ads

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Blake Brittain reports on intellectual property law, including patents, trademarks, copyrights and trade secrets. Reach him at blake.brittain@thomsonreuters.com