Court Denies Injunction in Competitive Keyword Ad Lawsuit–Nursing CE Central v. Colibri

This is a competitive keyword advertising lawsuit. The plaintiff has a trademark registration for the “Nursing CE Central” mark for providing continuing education for nurses. [Note: if it’s not obvious, “CE” is an abbreviation for “continuing education.” Just like we use the term “CLE” or “MCLE” in legal circles.] A rival, Colibri, displayed in the trademark in its Google keyword ads, but it claims it has stopped doing so after the lawsuit was filed. The court denies a preliminary injunction.

Though the court says it’s a close question, the court says that the plaintiff does not have a likelihood of success on the merits. To analyze this, the court applies the standard likelihood of consumer confusion factors. This is fine, but it deviates from courts’ efforts over the years to come up with multi-factor variations specific to keyword advertising. For example, 9th Circuit courts used the “Internet trinity” factors in the 2000s, and then switched in 2011 to a unique four-factor test from the Network Automation. Here, the court instead uses the decades-old standard test for consumer confusion, though with a finger on the scale for certain factors:

  • Mark strength. “Nursing CE Central” is a descriptive mark with “a weak secondary meaning….the plaintiff makes no meaningful showing that the public, or even those in the market in which it competes, readily recognizes its name.”
  • Relatedness of goods. The litigants directly compete.
  • Mark similarity. “any use of “Nursing Ce Central” creates at least some likelihood of confusion. Nurses who have used the plaintiff’s program in the past or who heard of it through word of mouth, for example, may search the trademarked name on Google and find the defendant’s website instead of the plaintiff’s website. Consumers could reasonably believe that the Colibri’s website was that of CE Central’s or that the two were affiliated based on use of the same name in the online ad.”
  • Actual confused. “Undetermined.”
  • Marketing channel. “both the plaintiff and the defendant rely on the internet as a sales tool.”
  • Purchaser care. “The services offered by both parties in this case seem to target licensed and practicing nurses searching for a way to fulfill continuing education requirements, meaning that a higher standard likely applies based on their level of consumer sophistication…to the more careful customer, Colibri’s use of CE Central’s name in its ads, which also contained reference to its own marks for which it has requested trademarks, likely does not trick the customer into believing its purchasing Plaintiff’s services. The consumer operating with a higher degree of purchaser care would likely understand that clicking on the Colibri’s ad would bring them to Colibri’s website, which contains no reference to the Plaintiff or its services.”
  • Defendant intent. “CE Central makes no meaningful showing that Colibri intended to deceive customers by using its trademarked name since Colibri had delegated online advertising responsibilities to a third party.”
  • Product line expansion. Not relevant.

The court summarizes its assessment: “Although the facts present a close case in terms of net balance, multiple factors to which courts give serious weight––the strength of Plaintiff’s mark, likely degree of purchaser care, and defendant’s intent––result in a conclusion that the plaintiff has not demonstrated a sufficient degree of likely consumer confusion.”

I was a little concerned about the court’s public interest considerations. The court concludes: “because CE Central must rely on own name and reputation for operation in the continuing nursing education market, and because consumers depend on information not cloaked in deceit before deciding whether to purchase goods or services, the public interest prong tips in the plaintiff’s favor.” But the advertiser was engaging in comparative advertising, which I think also strongly serves the public interest. If the court really thought the advertiser was presenting ads “cloaked in deceit,” it should have weighed the consumer confusion factors more in favor of the trademark owner. Otherwise, if the advertiser’s ads weren’t “cloaked in deceit,” the court should have greater prioritized the consumer benefits of competitors’ advertising to increase consumer choice.

It would be accurate to classify this ruling as another trademark owner loss in a competitive keyword advertising case, despite the fact that the trademark appears in the ad copy. That is the most common outcome. At the same time, the trademark owner got its desired result because the advertiser removed the trademark from its ad copy, so the trademark owner could claim this lawsuit as a net win. What I don’t understand is why the trademark owner had to go to court at all to achieve that result–couldn’t it have used Google’s trademark policy to prevent its trademark from appear in the ad copy? And even if not, the trademark owner’s push for a preliminary injunction, after the advertiser dropped the trademark from the ad copy, probably wasn’t a high ROI decision.

Case Citation: Nursing CE Central, LLC v. Colibri Healthcare, LLC, 2023 WL 5493530 (E.D. Ky. Aug. 24, 2023)

UPDATE: 2024 WL 329523 (Jan. 29, 2024). Colibri claimed that Nursing CE’s takedown notices to Google constituted tortious interference. The court disagrees.

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