Competitive Keyword Advertising Doesn’t Show Bad Intent–ONEpul v. BagSpot

This case involves dispensers of plastic bags for picking up dogshit. The plaintiff has a registered trademark in the brand “ONEpul.” The defendant describes its bags as “one-pull” (and yet, the term “descriptive fair use” doesn’t appear in the opinion once…). It also buys Adwords on another trademark of the plaintiff, “zerowaste,” but the appellate court doesn’t discuss a trademark infringement claim over the zerowaste mark. My prior blog post on the district court ruling.

The court analyzes the ONEpul trademark claim:

• Placing the phrase “one-pull” “prominently on the webpage describing the products in question [where] Customers can order the bags from the same webpage” constitutes a defendant’s use in commerce.
• “ONEpul” is a “conceptually weak” mark because it’s just a misspelling of the phrase “one pull.”
• The similarity of the phrase “one pull” is overridden by the defendant’s prominent use of its “BagSpot” mark
• “ZW cites PWD’s purchase of the Google Adword “zerowaste” as evidence that PWD had bad intent. That might be relevant if we were analyzing a “zerowaste” trademark, but the issue in this case is the likelihood of confusion between ZW’s ONEPUL mark and PWD’s product description. Accordingly, ZW has introduced only minimal evidence that PWD intended to do anything but fairly compete with ZW in the dog-waste disposal industry.”

The court concludes: “Taken as a whole, the evidence that ZW submitted at summary judgment showed only that ZW and PWD were in competition with one another.” Summary judgment affirmed.

Though the keyword ads weren’t directly relevant, the court’s treatment of the competitive keyword ads reinforces that they are part of ordinary and fair competition between two rivals, not evidence of bad intent or unfair marketplace behavior.

Case citation: ZW USA, Inc. v. PWD Systems, LLC, 2018 WL 1956417 (8th Cir. April 26, 2018)