Organic search results aren't TM "use"

Alsa Refinish LLC v. Walmart Inc., 2024 WL 3914512, No.2:23-cv-08536-SVW-MAR (C.D. Cal. Jul. 31, 2024)

In 2024, people are still bringing keyword advertisingcases. Walmart wins summary judgment.

Alsa sells paint, including chrome paint, and claimscommon-law rights in  “Alsa,” “AlsaChrome Paint,” “Alsa Easy Chrome,” “Easy Chrome,” “Mirrachrome,” and “Mirrachrome.” Walmart offers an online marketplace on which it and third partiessell products. There are no infringing products on Walmart.com. Thus, searchingWalmart’s website with Alsa’s claimed marks results in search listings thataren’t related to Alsa.

Still, Alsa argued that Walmart was using its marks inadvertising in confusing ways. Walmart does pay for keyword ads. It does notpay for organic search listings.  

Presumably because Walmart is a big seller, a search for theterm “easy chrome paint walmart” results in several sponsored links to productson Walmart.com along with an organic link for a Walmart webpage named “EasyChrome Paint,” and a search for “walmart alsa easy chrome paint” results in aWalmart webpage named “Alsa Easy Chrome.”

"easy chrome paint walmart" search with sponsored Walmart results and organic result Google result for "walmart alsa easy chrome paint" showing organic Walmart result "Alsa Easy Chrome(256)"

But Alsa couldn’t identify any sponsored keyword ads thatused Alsa’s marks. Walmart did bid $0.45 for the phrase “Alsa Chrome Paint,”but received zero impressions as a result. Alsa focused on organic searchresults. Those organic results were

the same webpages one would arriveat by navigating to Walmart.com and entering the alleged Marks (e.g., “AlsaEasy Chrome”) into Walmart’s own search bar. This happens because when a termis entered into the search bar on Walmart’s website, the URL (i.e., the webaddress) for the Walmart search results page will often include the terms thatwere searched. For example, when a user searches “Alsa Chrome Paint” onWalmart.com, the URL for the search results page is listed as follows:https://www.walmart.com/search?q=%22ALSA+CHROME+PAINT%22. A Walmart searchresults page such as this will periodically be “indexed” by Google so that thepage appears on Google’s own search results.

If a user clicks on the organic result, they will go to thesame page on Walmart.com that they would have gotten to by putting the samephrase in the Walmart search bar.

 Under 9^thCircuit precedent, a court can conclude that summary judgment in a keyword caseis appropriate “without delving into any factors other than: (1) the type ofgoods and the degree of care likely to be exercised by the purchaser; and (2)the labeling and appearance of the products for sale and the surroundingcontext on the screen displaying the results page.”

First, “[b]ecause Walmart does not pay search engines toreturn organic search results or index webpages, it does not ‘use’ the marks inconnection with the sale or advertisement of goods.” The fact that Googlesometimes indexed search result pages on Walmart didn’t change that. “Plaintiffdoes not show that the alleged Marks appear anywhere else on Walmart.com apartfrom where they are inputted as search terms. Walmart’s website does not labelany of its products under the alleged Marks or contain any infringing products.Ultimately, Plaintiff has pointed out no evidence that Walmart did anything toappear on these unsponsored Google search results.”

As to “Alsa Chrome Paint,” there were no clicks, meaning noinfringement was possible.

As to Walmart-sponsored results to the query “easy chromepaint Walmart,” the court agreed with Walmart that those links were nottriggered by use of “easy chrome,” but by the separate words “easy,” “chrome,”and “paint.” (I would think "Walmart" probably also played some role in triggering Walmart-sponsored results.) This too did not constitute a “use” of Alsa’s putative mark. Evenassuming that it did, running sponsored ads in response to a Google search for“easy chrome paint Walmart” didn’t cause likely confusion.

There was no source confusion because Walmart didn’t sellany infringing products. There was also no initial interest confusion.Plaintiff’s cheapest product was $59, and “chrome paint products appear to bespecialized or even ‘sophisticated’ items rather than everyday goods.” Areasonably prudent consumer accustomed to shopping online would exercisegreater care. Moreover, each Walmart product in Google’s “sponsored” results wasclearly labeled with the name of the product along with a photograph, and withthe word “Walmart.” None of the sponsored products made any reference to thephrase “Easy Chrome” or the other putative marks. And finally, the sponsoredresults were “clearly distinguishable from objective search results.” Thus,confusion was unlikely.

Dilution also failed for want of “use.”