Negative Keywords Help Defeat Preliminary Injunction–DealDash v. ContextLogic

August 14, 2018 · by Eric Goldman · in Marketing, Search Engines, Trademark

DealDash and Wish are e-commerce vendors. For a while, Wish offered a service called “Deal Dash” for time-limited bargains. Immediately after DealDash sued, Wish renamed its service “Bargain Blitz” and pulled the “DealDash” term from all advertising. DealDash still pressed for a preliminary injunction that restricted, among other things, using “DealDash” as keyword ad triggers in search engines and app stores.

Wish submitted an affidavit that it had blocked “DealDash” or “Deal Dash” as negative keywords in AdWords. The court responds:

defendant has offered unchallenged evidence showing not only that it has included “Deal Dash” and “DealDash” as “negative keywords,” but that its past use of the “Deal Dash” term “would have occurred only if Google’s own algorithm had included [it]…or if Google had suggested” the term to defendant; the term “was not sought out” by defendant. In light of the above, even assuming defendant’s past use amounted to infringement, defendant has clearly shown it cannot “reasonably be expected” to use “Deal Dash” or “DealDash” as Internet search keywords in the future

With respect to the app store, the court says that the defendant can’t control organic search results:

Kathiresan, in his declaration, avers defendant “does not use the term ‘DealDash’ or ‘Deal Dash’ as a search advertising keyword,” and, as defendant points out, the results for defendant’s apps, as shown in plaintiffs’ exhibits, do not include an “Ad” icon, which is displayed when a result is generated by way of the app’s “own search advertising.” The inclusion of defendant’s apps in the search results, Kathiresan avers, is due to “Apple’s or Google’s proprietary algorithm,” which determines “what apps appear in the app store search results and how they are ranked among the search results.” Given such unchallenged evidence, plaintiffs have failed to show defendant is currently, or will in the future, use “DealDash,” or any confusingly similar variation thereon, as a search keyword in the app stores.

I’d like to know more about why Wish adopted DealDash in the first instance (did they do an imperfect trademark search? Did they hope the plaintiff wouldn’t notice or care?). However, in light of the defendant’s instant crumple in response to the lawsuit, the case avoids the bigger issue of whether use of DealDash as a keyword ad trigger constituted trademark infringement. Instead, the defendant’s move to negative keywords seemed well-designed to assuage the judge’s concern and (ideally) put this incident behind everyone. If you’re a defendant who’s going to fold in the face of a trademark owner threat, negative keywords seems like a way to defang the plaintiff.

Case citation: DealDash OYJ v. ContextLogic, Inc., 2018 WL 3820654 (N.D. Cal. Aug. 10, 2018)

Other blog posts discussing negative keywords:

* Interesting Tidbits From FTC’s Antitrust Win Against 1-800 Contacts’ Keyword Ad Restrictions
* FTC Explains Why It Thinks 1-800 Contacts’ Keyword Ad Settlements Were Anti-Competitive–FTC v. 1-800 Contacts
* FTC Sues 1-800 Contacts For Restricting Competitive Keyword Advertising
* Court Orders Uber To Control Its Google Search Results
* What Are Trademark Defendants’ Obligations to Clean Up the Internet After a Trademark Injunction?
* Injunction Requires Negative Keywords in Future Adwords Campaigns
* Broad Matching Doesn’t Violate Injunction–Rhino Sports v. Sport Court

Bonus: I also note Safeway Transit LLC v. Discount Party Bus, Inc., 2018 WL 3831345 (D. Minn. Aug. 13, 2018). The court:

PERMANENTLY ENJOINED [the defendants] from using or contributing to the use of the “Rent My Party Bus” and “952 Limo Bus” trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services.

This ruling was scrambled by the fact that the defendants actually used the trademarks before the plaintiffs did, but the court said the defendants didn’t achieve secondary meaning and then abandoned their use when the plaintiffs started using the terms. So the court said that it didn’t harm the defendants to enjoin them given their abandonment (further complicated by the fact that the parties had tangled in court previously). Also, the court’s discussion only addressed the defendants’ display of the trademarks on its website, not the AdWords usage, so the injunction’s extension to keywords wasn’t explained. Finally, the court didn’t award any damages or attorneys’ fees, so I wonder if this was an good economic outcome for the plaintiffs. Still, it’s never good when a court weaponizes such highly descriptive terms like “Rent My Party Bus” and “952 Limo Bus.”

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Negative Keywords Help Defeat Preliminary Injunction–DealDash v. ContextLogic

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