NEW YORK—A judge in U.S. District Court in Manhattan last week ruled in favor of Warby Parker in a trademark lawsuit brought by 1-800 Contacts. The judge dismissed 1-800 Contacts’ trademark claims against Warby Parker in a matter that involved search advertising. At issue in the case is the method of internet advertising called “search advertising,” which involves advertisers’ bidding on keywords that generate paid search results in auctions hosted by the search engines, according to the court’s decision.

The decision by the U.S. District Court in the Southern District of New York can be read here (PACER access may be required). 

Representatives of 1-800 Contacts could not be reach at VMAIL’s deadline to comment on whether the company is planning to appeal the decision.

Judge P. Kevin Castel wrote in his opinion, “The Court concludes that 1-800 Contacts has failed to plausibly plead a claim for relief as to its federal trademark infringement and unfair competition claims. … To prevail on a trademark infringement and unfair competition claim … the plaintiff must (1) demonstrate that its mark is protected, and (2) that the defendant’s use of the allegedly infringing mark would likely cause confusion as to the origin or sponsorship of the defendant’s goods with plaintiff’s goods. … 1-800 Contacts has failed to plausibly plead a claim for relief as to its claims for trademark infringement and unfair competition under both federal and New York common law.”

The decision stemmed from a lawsuit filed in August 2021 by 1-800 Contacts against Warby Parker, when 1-800 Contacts claimed its trademark was infringed by Warby Parker's alleged use of the term “1-800 Contacts” to trigger paid-search ads.





“The parties did not dispute that the 1-800 Contacts marks were protected, nor did they dispute that Warby Parker’s bid for the search terms of those marks qualified as ‘use’ for the purposes of pleading trademark infringement or unfair competition under the Lanham Act,” according to a JD Supra analysis of the court’s decision. “Rather, the sole issue was whether 1-800 Contacts plausibly plead that Warby Parker’s use of the marks would likely cause actual confusion as to the origin or sponsorship of Warby Parker’s goods with 1-800 Contact’s goods.”

The Court determined that although Warby Parker “uses” the 1-800 Contacts mark, the marks are too dissimilar for ordinarily sophisticated internet consumers to be confused or misled as to which company’s website they have navigated to, or which company’s goods they are purchasing, the court ruling noted.