## Facts

- Hearts on Fire Company, LLC sold diamonds and jewelry through authorized retailers and used the “Hearts on Fire” mark since at least 1996.
- Blue Nile, Inc. operated an online jewelry and diamond retail business and was not an authorized Hearts on Fire retailer.
- Hearts on Fire alleged Blue Nile bought “Hearts on Fire” (or close variants) as search-engine keywords so that users searching the phrase would see sponsored links to Blue Nile.
- Hearts on Fire alleged some sponsored-link ads displayed “hearts on fire” in the ad text alongside Blue Nile’s URL.
- Hearts on Fire alleged Blue Nile’s internal site search returned Blue Nile products when users searched “hearts on fire,” despite Blue Nile not selling Hearts on Fire products.
- Hearts on Fire claimed this conduct was likely to confuse or divert consumers seeking Hearts on Fire products.
- Blue Nile moved to dismiss under Rule 12(b)(6) theories based on keyword-triggering and internal site-search use (not the theory that ad text displayed the mark).

## Issues

1. Whether purchasing a competitor’s trademark as a search-engine keyword to trigger sponsored links is a “use in commerce” under the Lanham Act.
2. Whether using a trademark within a retailer’s internal website search function to return competing products can constitute actionable “use” under the Lanham Act.
3. Whether the pleaded facts plausibly alleged likelihood of confusion, including initial interest confusion, sufficient to survive a motion to dismiss.

## Decision

- The court denied Blue Nile’s Rule 12(b)(6) motion.
- The court held that purchasing a trademarked keyword to trigger sponsored links constitutes “use in commerce” for Lanham Act purposes.
- The court held the internal site-search allegations also plausibly alleged actionable “use” attributable to Blue Nile.
- The court found the complaint plausibly alleged likelihood of confusion, including initial interest confusion, based on the alleged course of conduct.

## Legal Principles

- “Use in commerce” under the Lanham Act may include employing a trademark as part of a commercial advertising program, even where the mark functions as a trigger for ad placement.
- The “use” inquiry is distinct from the likelihood-of-confusion inquiry; satisfying “use” does not resolve whether infringement occurred.
- Initial interest confusion can support a trademark claim where a defendant’s conduct plausibly diverts consumers by trading on the plaintiff’s goodwill, even if consumers later recognize the true source.
- At the pleading stage, a court may evaluate alleged online advertising and internal site-search practices together as a single course of conduct bearing on likely confusion.

## Conclusion

The court allowed the Lanham Act claims to proceed, ruling that trademark keyword purchases and internal website-search practices can constitute actionable “use in commerce” and that alleged diversion through initial interest confusion was plausibly pleaded.


Hearts on Fire Co. v. Blue Nile, Inc., 603 F. Supp. 2d 274 (D. Mass. 2009)