## Facts

- 1-800 Contacts, Inc. sold contact lenses and owned the federally registered service mark 1800CONTACTS.
- Lens.com, Inc. competed in online contact lens sales.
- Lens.com used Google AdWords to have its ads displayed when users searched for selected keywords, including terms resembling 1-800’s mark.
- Many Lens.com ads triggered by these keywords did not display “1800CONTACTS” in the ad text and identified Lens.com as the advertiser.
- Lens.com also used marketing affiliates who purchased keywords and placed ads; some affiliate ads included 1-800’s mark in visible ad text.
- 1-800 sued under the Lanham Act, alleging trademark/service-mark infringement and related theories, relying in part on an initial-interest confusion theory based on diversion from keyword-triggered ads.
- The district court granted summary judgment largely for Lens.com on 1-800’s principal infringement theory and limited Lens.com’s responsibility for affiliate advertising.
- 1-800 appealed adverse summary judgment rulings; Lens.com cross-appealed on issues where it did not fully prevail.

## Issues

1. Whether purchasing AdWords keywords resembling a competitor’s service mark can constitute actionable “use in commerce” under the Lanham Act.
2. Whether Lens.com’s keyword advertising created a likelihood of confusion, including initial-interest confusion, regarding source, affiliation, or sponsorship.
3. Whether Lens.com could be held vicariously or contributorily liable for affiliates’ ads that used 1-800’s mark.
4. Whether 1-800 produced sufficient evidence to support related Lanham Act claims such as false advertising.

## Decision

- The Tenth Circuit largely affirmed summary judgment for Lens.com.
- The court held 1-800 failed to show a likelihood of confusion from Lens.com’s own purchase of keywords resembling 1800CONTACTS where the resulting ads generally did not use the mark in ad text and identified Lens.com.
- The court accepted that initial-interest confusion may be actionable but found the record lacked evidence of likely confusion or improper diversion attributable to Lens.com’s conduct.
- The court rejected broad affiliate-based liability because 1-800 did not establish the elements of vicarious liability or contributory infringement for most affiliate ads, given limited control and insufficient proof of inducement or continued support of known infringement.
- The court found 1-800’s evidence (including survey and anecdotal proof) insufficient to create a triable issue on likely confusion or related Lanham Act theories.

## Legal Principles

- Trademark infringement based on online keyword advertising turns on likelihood of confusion assessed in context; purchasing a rival’s mark (or close variant) as a keyword is not automatically unlawful.
- Initial-interest confusion is a cognizable theory, but it still requires probative evidence that consumers are likely to be misled or diverted by confusion.
- In evaluating confusion from search advertising, courts consider how ads appear to consumers, including whether the ad clearly identifies the advertiser and whether search results distinguish sponsored links.
- An advertiser is not automatically liable for affiliates’ infringing ads; vicarious liability requires sufficient control over the infringing conduct, and contributory infringement requires intentional inducement or continued supply of services to a known infringer.

## Conclusion

The Tenth Circuit held that Lens.com’s keyword purchases resembling 1-800’s mark did not violate the Lanham Act absent evidence of likely confusion, and that Lens.com generally was not responsible for affiliates’ misuse of the mark without proof meeting vicarious or contributory infringement standards.


1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013)