Court Dumps Crappy Trademark & Keyword Ad Case–ONEPul v. BagSpot

September 25, 2016 · by Eric Goldman · in Marketing, Search Engines, Trademark

It’s a highlight of my day to read an opinion that starts out: the litigants “are competitors in the dog waste disposal industry.” Blogging can be a crappy gig, but someone’s gotta do it.

The litigants have competing offerings that allow users to grab a dog-poop-pickup bag with a single pull. The plaintiff claims trademarks in the terms “ONEPUL” and “SINGLEPUL.” The defendant uses the “BagSpot®” mark and often refers to its bags as “one-pull” or “one pull.” It appears the defendant didn’t use the exact terms ONEPUL or SINGLEPUL or the unhyphenated words “onepull” or “singlepull.” The defendant also ran competitive keyword ads based on the plaintiff’s Zerowaste mark.

The court dumps the case for lack of likelihood of confusion. The defendant’s marketing featured its house mark BagSpot extensively, which helps inform consumers that they aren’t dealing with the plaintiff. The court says “ONEPUL” and “one-pull” are semantically quite different, and many other competitors use the “one pull”/”one-pull” terms descriptively because they are common ways to describe the product feature (the court never mentions descriptive fair use because it says ONEPUL is suggestive). The court also cites the defendant’s competitive intent, saying even if the defendant sought to compete with the plaintiff, that doesn’t show it duped consumers.

Similarly, keyword advertising:

may be strong evidence of a desire to compete with plaintiff in the marketplace. But it is no evidence of unfair competition or intent to infringe. Plaintiff has offered no evidence that defendant has done anything more than advertise its own products to potential consumers who are shopping for dog waste disposal bags online.

In a footnote, the court rejects any initial interest confusion claim:

Even if that type of infringement claim were cognizable in this circuit, it would not aid plaintiff here. A claim of initial interest confusion requires sufficient evidence to survive summary judgment, like any other infringement claim. Plaintiff has introduced no evidence from which a reasonable jury could determine “confusion” caused by defendant’s specific use of “one pull” (as opposed to its entry into the market and its legitimate business practices) likely “create[d] an initial customer interest” in defendant’s dog waste disposal bags.

With that, the court tosses this litigation into the summary judgment trash can.

Case citation: ZW USA, Inc. v. PWD Systems, LLC, 2016 WL 5236934 (E.D. Mo. Sept. 22, 2016)

Blog Posts on Competitive Keyword Advertising

* AdWords Buys Using Geographic Terms Support Personal Jurisdiction–Rilley v. MoneyMutual

* FTC Sues 1-800 Contacts For Restricting Competitive Keyword Advertising

* Competitive Keyword Advertising Lawsuit Will Go To A Jury–Edible Arrangements v. Provide Commerce

* Texas Ethics Opinion Approves Competitive Keyword Ads By Lawyers

* Court Beats Down Another Competitive Keyword Advertising Lawsuit–Beast Sports v. BPI

* Another Murky Opinion on Lawyers Buying Keyword Ads on Other Lawyers’ Names–In re Naert

* Keyword Ad Lawsuit Isn’t Covered By California’s Anti-SLAPP Law

* Confusion From Competitive Keyword Advertising? Fuhgeddaboudit

* Competitive Keyword Advertising Permitted As Nominative Use–ElitePay Global v. CardPaymentOptions