Competitve Keyword Purchase Doesn’t Contribute to Actual Dilution–Nautilus v. Icon

By Eric Goldman

Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 2006 WL 3761367 (W.D. Wa. Dec. 21, 2006)

In a long-running dispute, BowFlex sued competitor CrossBow for trademark dilution. CrossBow moved for summary judgment, claiming (among other things) that it did not “actually dilute” BowFlex’s trademark. (This standard has reverted back to the pre-Moseley standard based on the TDRA–see Rebecca’s puzzlement about the use of pre-TDRA law here). In agreeing with CrossBow’s argument, the court notes that CrossBow’s purchase of search keywords containing BowFlex does not cause actual dilution:

Second, plaintiff has failed to evidence that defendant actually used the Bowflex trademark. Plaintiff points to the fact that defendant used the Bowflex mark to advertise its CrossBow products both through the purchase of internet keywords and by telling its customers that it was BowFlex. The Court rejects both of these arguments. It is clear from defendant’s evidence that it purchased the keyword Bowflex only in the context of comparative advertising. Defendant’s witness Amy Guymon, the person in charge of purchasing keywords, identified the single term in which it used the word Bowflex–“Bowflex information”–and testified that the term was purchased so that defendant could appear as a “sponsored link” on the search results page of a search engine. The title of that sponsor link was “Compare CrossBow to Bowflex.” The description that followed the title asked users to compare the two machines, and summarized what the CrossBow machine had to offer. The URL was listed as www.crossbow.com. It is well-settled in the Ninth Circuit that such use of a trademark is excepted from the reach of the statute. Playboy Enters., 279 F.3d at 806 (explaining that such uses do not create an improper association between a mark and a new product, but merely identify the trademark holder’s products).

We haven’t seen too many dilution challenges against purchasing keywords. This case might suggest that such dilution claims not be favorably received. Then again, given that this case applied pre-TDRA law, a post-TDRA court could be more receptive. As usual, though, the exact words in the ad copy appear to make a difference.

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