National Law Firm Learns That Competitors Buying Google Adwords Still Isn’t Trademark Infringement

Over a decade ago, we wrote about how the flurry of trademark lawsuits seen at that time over competitors buying up Google Adwords to get their company ads displayed when competitors are searched might finally be coming to an end. While these types of suits have certainly reduced in number based on anecdotal evidence, they have not disappeared entirely. And they make no more sense today than they did a decade ago.

Buying an Adword that would cause a prospective buyer to search for a direct competitor isn’t trademark infringement except in the rare cases where the ads are constructed such that actual substantial customer confusion occurs. Otherwise, it’s not different than ads and coupons in retail stores appearing next to a competing product. Because, you know, that’s where the potential customer is. If I go down the aisle looking for Oreos and next to them is a coupon for Chips Ahoy, that isn’t infringement. Buying Google Adwords for competitor’s search terms is no different.

You would think law firms of all groups would know this sort of thing. One national law firm, Lerner & Rowe, appears to need several court-taught lessons on the matter. They brought one of these suits against a competitor in Arizona, the Accident Law Group (ALG), lost, and then lost again on appeal recently.

The 9th U.S. Circuit Court of Appeals upheld, opens new tab a lower court’s ruling that granted a bid by the Arizona firm, the Accident Law Group, for summary judgment in the trademark infringement lawsuit brought by Lerner & Rowe over ALG’s ads that appeared on Lerner & Rowe’s Google search results. Lerner & Rowe had accused ALG of attaching ads for its firm to search terms or “keywords” associated with Lerner & Rowe and siphoning off potential clients.

The appeals court said that despite Lerner & Rowe’s “strong” trademark and its expenditure of more than $100 million on marketing in Arizona, data from Google and ALG showed that only a tiny fraction of people who called ALG about potential legal representation mentioned Lerner & Rowe and therefore may have been confused.

As the court went on to note in its analysis, that’s likely because ALG didn’t actually engage in anything deceptive beyond buying the Adwords. The ads it displayed made it plain that the ad was for ALG and not Lerner & Rowe. The two firms’ branding is otherwise not confusing. There’s just nothing here, other than the Adword buy itself.

Which is why the number of people who even cited Lerner & Rowe to ALG is so tiny.

In 2023, U.S. District Judge David Campbell granted ALG’s bid for summary judgment, in part relying on data from ALG’s intake department, which said it received a little more than 200 phone calls from people who specifically mentioned “Lerner & Rowe.” In contrast, ALG’s ads appeared on “Lerner & Rowe” searches more than 109,000 times between 2017 and 2021, Campbell said.

The appeals court on Tuesday said that the district court was correct to conclude that the case was “one of the rare trademark infringement cases susceptible to summary judgment.

While this shouldn’t be surprising any longer, it is nice to note when the courts get these sorts of trademark questions correct.