White-on-White Trademark Usage Might Constitute Initial Interest Confusion–Agdia v. Xia
Are we really litigating trademark references in white-on-white text in 2017??? Yes, we are, and yes, the whole case is a throwback to the mid-2000s (e.g., the 2008 Venture Tape case)–with effects that would be comical if they weren’t so sad.
The litigants compete in the “plant diagnostics” business. Agdia’s tagline: “Keeping your crops happy…it’s our passion.” Agdia claims the defendant, in 2007, put the Agdia trademark in white-on-white text on over 200 pages. This is an archaic practice; Matt Cutts disparaged it at least as early as 2005. Google has long configured its algorithms to ignore white-on-white text, making the practice ineffectual as well as risky to search engine indexing. Agdia claims the defendant’s website was still showing up for its branded organic searches as late as 2015, which the court implicitly attributes to the white-on-white text though the court doesn’t really seem to know why…or care. The defendant adopted the business name ACD and a domain name acdiainc.com, and did some comparative advertising against an Agdia product brand name, and Agdia doesn’t like these practices either.
Despite the allegation that white-on-white text was implemented in 2007, the court doesn’t discuss any statute of limitations. That’s because the Lanham Act doesn’t have a statute of limitations, though sometimes a statute of limitations is imported from analogous legal doctrines; and courts often use laches instead. The upshot is that, yes, in 2017 we are litigating over an archaic practice that started in 2007. Sigh.
The court denies the defendant’s motion for summary judgment. A few “high”lights from the court’s multi-factor likelihood of consumer confusion analysis:
* in considering the manner of concurrent uses, the court says “Because users can easily navigate through websites, as opposed to physical store locations, it is “more likely” that consumers will “be confused as to the ownership of a web site than traditional patrons of a brick-and-mortar store would be of a store’s ownership.”” Citing a case from 2001, naturally.
* regarding consumer sophistication, the litigants compete in a B2B industry with highly specialized customers. Still, the court says “while accomplished in the area of agricultural science, that does not automatically make these customers website coding experts nor instill in them the ability to identify whether their internet searches are yielding manipulated results.” I guess if you haven’t coded your own perl script, you’re a clueless web browser.
* the plaintiff doesn’t have any evidence of actual confusion, so it relied on the initial interest confusion doctrine. Blech. The court starts off on the right foot:
Asserting initial interest confusion does not alter the likelihood of confusion analysis. More specifically, to create an issue of fact here as to whether there was any actual confusion, the record must contain evidence that initial interest confusion actually occurred – not merely theories that would create a risk of initial interest confusion
Right, except plaintiffs never can provide credible evidence of initial interest confusion; and the uncited Lens.com case from the 10th Circuit set an evidentiary bar so high that no plaintiff can ever meet it. So this factor should swing decidedly in the defendant’s favor. Yet this court continued:
Plaintiff has presented evidence of a search engine user being diverted to ACD’s website upon running a Google search for an Agdia product in January 2015. ACD’s website showed up on the second page of a search yielding over 1,000 results. Thus, a reasonable factfinder could determine that initial interest confusion actually occurred related to the Agdia mark.
FFS. Really? The court says that a competitive website appearing in the organic search results, without any evidence that any potential customer actually clicked on the link, constitutes credible evidence of “diversion”? As I explained in this expert report, and as the Lens.com case expressly held, an organic search result cannot constitute “diversion,” period. There’s also the awkwardness of counting a Google search from over 2.5 years ago as credible evidence, the irrelevance of results that appear only on the second page of SERPs, and the fact that the entire initial interest confusion doctrine is a POS.
In a footnote, the court further discusses the white-on-white text issue:
Defendants repeatedly argue against the application of this Circuit’s seven-factor likelihood of confusion test because customers never “saw” the white-on-white text with their naked eyes. This argument fails. First, to say that the white-on-white text was totally invisible to customers is somewhat inaccurate. Plaintiff notes that, when pages containing this text are printed on paper, or even when a computer user performs a “Control + F” find function on the webpage, the white-on-white text indeed reveals itself. Second, the white-on-white text, a type of metatag, need not be visible to the naked eye in order to have its intended effect; clearly it is visible to the public via search engine technology that directs potential customers to various websites. Defendants offer no substantive authority to support their invisibility theory, and the few cases they do cite miss the mark.
Both parties’ experts agreed that white-on-white text was ineffectual, so this passage reminds me of a venerable online trademark koan: if a trademark tree falls in a forest and no one is around to hear it, does it constitute trademark infringement?
This is the second time in a week that I’m blogging on rulings that repeatedly cited the antiquated and still pernicious Seventh Circuit ruling in Promatek v. Equitrac (the other is the Harley Davidson v. SunFrog case). The Seventh Circuit has issued other–and better–initial interest confusion rulings, so the jurisprudential shadow being cast by Promatek continues to muck up Seventh Circuit trademark law. I hope one day the Seventh Circuit cleans out that mess, just like how the Ninth Circuit substantially cleaned up its junky online trademark law in its 2011 Network Automation ruling.
Meanwhile, if you/your clients’ websites still include competitors’ trademarks in white-on-white text, (a) you probably should upgrade your website to the 2010s, and (b) clean it out. White-on-white text is nothing but liability bait.