Lerner & Rowe Pc v. Brown Engstrand & Shely LLC

FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

LERNER & ROWE PC, an Arizona No. 23-16060

corporation,

D.C. No. 2:21-cv-

Plaintiff-Appellant, 01540-DGC

v.

OPINION

BROWN ENGSTRAND & SHELY

LLC, DBA Accident Law Group, an

Arizona corporation; JOSEPH L.

BROWN, an individual,

Defendants-Appellees,

and

DOES, 1-10, inclusive,

Defendant.

Appeal from the United States District Court

for the District of Arizona

David G. Campbell, District Judge, Presiding

Argued and Submitted May 14, 2024

Phoenix, Arizona

Filed October 22, 2024

2 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

Before: Roopali H. Desai and Ana de Alba, Circuit Judges,

and Edward M. Chen, * District Judge.

Opinion by Judge de Alba;

Concurrence by Judge Desai

SUMMARY **

Lanham Act

The panel affirmed the district court’s grant of summary

judgment in favor of defendants in a trademark infringement

action under the Lanham Act.

Plaintiff Lerner & Rowe, PC, a personal injury law firm

based in Arizona, had three registered trademarks, including

the name “Lerner & Rowe.” In a strategy known as

“conquesting,” defendant Brown, Engstrand & Shely, LLC,

doing business as The Accident Law Group, or ALG,

purchased the term “Lerner & Rowe” as a Google Ads

keyword.

The panel affirmed the district court’s grant of summary

judgment on Lerner & Rowe’s trademark infringement

claim on the ground that Lerner & Rowe failed to establish

that ALG’s use of the mark was likely to cause consumer

confusion. The panel concluded that the strength of the

*

The Honorable Edward M. Chen, United States District Judge for the

Northern District of California, sitting by designation.

**

This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 3

mark weighed in favor of Lerner & Rowe. But the de

minimis evidence of actual confusion weighed in favor of

ALG, as did the reasonably prudent consumer’s degree of

care and the labeling and appearance of ALG’s

advertisements. And other factors did nothing to change the

panel’s conclusion that Lerner & Rowe failed to establish a

genuine dispute of material fact regarding the likelihood of

confusion element of a claim for trademark infringement.

Concurring in the majority opinion in full, Judge Desai

wrote separately to urge the court to reconsider en banc the

holding of Network Automation, Inc. v. Advance Systems

Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), that keyword

bidding and purchasing constitutes a “use in commerce,”

which is required to show a likelihood of confusion under

the Lanham Act.

COUNSEL

Andrew Gaggin (argued), Lerner & Rowe PC, Tucson,

Arizona, for Plaintiff-Appellant.

Maria C. Speth (argued) and Aaron K. Haar, Jaburg Wilk

PC, Phoenix, Arizona, for Defendant-Appellee.

4 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

OPINION

DE ALBA, Circuit Judge:

“What’s in a name?” WILLIAM SHAKESPEARE, ROMEO

AND JULIET act 2, sc. 2, l. 46. According to Juliet Capulet,

not much. Romeo Montague’s last name, though charged

with meaning, does not confuse her about who he is. In this

keyword advertising trademark dispute, the district court

saw most consumers as discerning Juliets. Appellant,

however, likens them to the larger Capulet clan, a group

more prone to confusion. As explained below, we disagree

and affirm the district court’s grant of summary judgment.

I. Factual and Procedural Background

Appellant Lerner & Rowe, PC (“Lerner & Rowe”), and

Appellee Brown, Engstrand & Shely, LLC—which does

business as The Accident Law Group (“ALG”)—are both

personal injury law firms based in Arizona. Founded in

2005, Lerner & Rowe is the larger of the two firms with

nineteen offices throughout the state. It has three registered

trademarks: on June 14, 2011, it registered the phrase

“Lerner & Rowe Gives Back;” on March 3, 2015, it

registered the name “Glen Lerner;” and, on May 19, 2020, it

registered the name “Lerner & Rowe.” Lerner & Rowe has

spent over $100 million promoting its brand and trademarks

in Arizona.

Since its founding in 2015 until 2021, ALG purchased

the term “Lerner & Rowe” as a Google Ads keyword, which

prompted ALG’s advertisements to appear near the top of

Google’s search results list whenever someone searched for

“Lerner & Rowe.” This strategy, known as “conquesting,”

is a common internet marketing tool by which companies

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 5

promote their services to potential customers who might be

searching for a competitor. In fact, Lerner & Rowe has

engaged in conquesting in other contexts. Importantly,

while the format and copy of ALG’s advertisements varied

from search to search, they never included or referenced the

term “Lerner & Rowe.”

On September 8, 2021, Lerner & Rowe filed a complaint

alleging claims for (1) trademark infringement, unfair

competition, false designation of origin, and false

description under the Lanham Act; (2) state trademark

infringement and unfair competition; and (3) unjust

enrichment. In a May 18, 2023, order, the district court

granted summary judgment in favor of ALG on the

trademark infringement and unjust enrichment claims but

denied summary judgment on the unfair competition claims.

ALG moved for reconsideration, and the district court

subsequently entered summary judgment as to all claims.

Lerner & Rowe timely appealed that ruling. We have

jurisdiction pursuant to 28 U.S.C. § 1291.

II. Legal Standard

We review grants of summary judgment de novo. Multi

Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930, 935

(9th Cir. 2015). “[O]n a defendant’s motion for summary

judgment, not only does the movant carry the burden of

establishing that no genuine dispute of material fact exists,

but the court also views the evidence in the light most

favorable to the non-moving party.” JL Beverage Co., LLC

v. Jim Beam Brands Co., 828 F.3d 1098, 1105 (9th Cir.

2016). A genuine dispute of material fact exists “if the

evidence is such that a reasonable jury could return a verdict

for the nonmoving party.” Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 248 (1986). “If the evidence is merely

6 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

colorable or is not significantly probative, summary

judgment may be granted.” Id. at 249–50 (citations omitted).

When, as here, the moving party does not have the burden of

proof on an issue at trial, it “can prevail merely by pointing

out that there is an absence of evidence to support the

nonmoving party’s case.” Soremekun v. Thrifty Payless,

Inc., 509 F.3d 978, 984 (9th Cir. 2007). “If the moving party

meets its initial burden, the non-moving party must set forth,

by affidavit or as otherwise provided in Rule 56, ‘specific

facts showing that there is a genuine issue for trial.’” Id.

(quoting Anderson, 477 U.S. at 250). Due to the fact-

intensive nature of trademark infringement claims, we grant

motions for summary judgment infrequently. See JL

Beverage, 828 F.3d at 1105. Nevertheless, when no genuine

issue of material fact exists, we have not hesitated to affirm

a grant of summary judgment. See Surfvivor Media, Inc. v.

Survivor Prods., 406 F.3d 625, 634 (9th Cir. 2005); M2

Software, Inc. v. Madacy Ent., 421 F.3d 1073, 1085 (9th Cir.

2005).

III. Discussion

“To prevail on a claim of trademark infringement under

the Lanham Act, 15 U.S.C. § 1114, a party ‘must prove:

(1) that it has a protectible ownership interest in the mark;

and (2) that the defendant’s use of the mark is likely to cause

consumer confusion.’” Network Automation, Inc. v.

Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1144 (9th Cir.

2011) (quoting Dep’t of Parks & Recreation for the State of

Cal. v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th

Cir. 2006)). Because the parties do not dispute that Lerner

& Rowe has a protectible interest in its mark, this case

concerns only the likelihood of confusion element.

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 7

When assessing the likelihood of confusion in the

keyword advertising context, we primarily consider the

following non-exhaustive list of factors:

(1) the strength of the mark; (2) the evidence

of actual confusion; (3) the type of goods and

degree of care likely to be exercised by the

purchaser; and (4) the labeling and

appearance of the advertisements and the

surrounding context on the screen displaying

the results page.

Id. at 1154. Other, less relevant factors include the

“proximity of the goods, similarity of the marks, marketing

channels used, defendant’s intent in selecting the mark, and

likelihood of expansion of the product lines.” Id. at 1145

(quoting AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–

49 (9th Cir. 1979)) (cleaned up). These factors are “not a

rote checklist,” and we must be flexible when analyzing

them. Id. Depending on the circumstances of a given case,

certain factors may be more important than others. Id. at

1148; see also Multi Time Mach., 804 F.3d at 937, 939

(affirming grant of summary judgment based on two factors:

“evaluation of the web page at issue and the relevant

consumer”).

This case primarily concerns “initial interest confusion,”

which occurs when an alleged infringer uses a competitor’s

mark to direct consumer attention to its product. 1 See

1

Lerner & Rowe also advanced a theory of source confusion, which

occurs when consumers purchase services from an alleged infringer due

to confusion about the actual provider of those services. See Brookfield

Commc’ns, Inc. v. W. Coast Ent. Corp., 174 F.3d 1036, 1062 (9th Cir.

8 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

Playboy Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d

1020, 1025 (9th Cir. 2004). “Although dispelled before an

actual sale occurs, initial interest confusion impermissibly

capitalizes on the goodwill associated with a mark and is

therefore actionable trademark infringement.” Id. Such a

claim applies, however, only to “misleading and deceptive”

uses of a mark, not to “legitimate comparative and

contextual advertising.” Network Automation, 638 F.3d at

1148. Therefore, in the keyword advertising context, we

have emphasized that, “the owner of the mark must

demonstrate likely confusion, not mere diversion.” Id. at

1149; see also Playboy Enters., 354 F.3d at 1035 (Berzon,

J., concurring) (“There is a big difference between hijacking

a customer to another website by making the customer think

he or she is visiting the trademark holder’s website (even if

only briefly) . . . and just distracting a potential customer

with another choice, when it is clear that it is a choice.”).

A. Strength of the Mark

Strong trademarks receive greater protection because “a

user searching for a distinctive term is more likely to be

looking for a particular product, and therefore, could be

more susceptible to confusion when sponsored links appear

that advertise a similar product from a different source.”

Network Automation, 638 F.3d at 1149. Courts measure a

mark’s strength both conceptually—by its “inherent

distinctiveness”— and commercially—by its “actual

marketplace recognition.” Id. (quoting Brookfield

Commc’ns, 174 F.3d at 1058). Even when a mark is not

1999) (citing Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109

F.3d 1394, 1405 (9th Cir. 1997)). This does not, however, affect our

analysis, because both theories turn on the same likelihood of confusion

test.

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 9

inherently distinctive, commercial strength—“extensive

advertising, length of exclusive use, public recognition”—

can compensate for its conceptual weakness. Am. Int’l Grp.,

Inc. v. Am. Int’l Bank, 926 F.2d 829, 832 (9th Cir. 1991)

(quoting Accuride Int’l, Inc. v. Accuride Corp., 871 F.2d

1531, 1536 (9th Cir. 1989)).

The district court correctly found, and ALG does not

dispute, that Lerner & Rowe’s mark is strong. Not only is

the mark federally registered, but Lerner & Rowe has spent

millions of dollars advertising it, garnering the business of

over 100,000 clients. This factor weighs in favor of Lerner

& Rowe.

B. Evidence of Actual Confusion

“[A] showing of actual confusion among significant

numbers of consumers provides strong support for the

likelihood of confusion.” Playboy Enters., 354 F.3d at 1026.

In fact, if a plaintiff can demonstrate “that an ‘appreciable

number’ of people are confused,” that fact, alone, might

entitle the plaintiff to a trial on the likelihood of confusion.

Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 902

(9th Cir. 2002), superseded on other grounds by statute,

Trademark Dilution Revision Act of 2006, Pub. L. No. 109-

312, 120 Stat. 1730–33, as recognized in Blumenthal

Distrib., Inc. v. Herman Miller, Inc., 963 F.3d 859, 870 (9th

Cir. 2020) (quoting Entrepreneur Media, Inc. v. Smith, 279

F.3d 1135, 1151 (9th Cir. 2002)). Nevertheless, because

actual confusion evidence is difficult to gather, “the absence

of such evidence is not dispositive.” Off. Airline Guides, Inc.

v. Goss, 6 F.3d 1385, 1393 (9th Cir. 1993).

Here, Lerner & Rowe’s proffer of actual confusion

consists of 236 phone calls that ALG’s intake department

received during which the caller mentioned Lerner & Rowe

10 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

by name when responding to a question about how the caller

found ALG’s phone number. 2 Data from Google shows that,

between 2017 and 2021, searches for “Lerner & Rowe”

returned results featuring ALG’s advertisement 109,322

times. Evidence of 236 instances of actual confusion,

therefore, constitutes only 0.216% of the total number of

users exposed to the challenged advertisements. 3 Moreover,

users clicked on ALG’s advertisements 7,452 times, or just

6.82% of the time Google displayed them. ALG separately

commissioned an expert survey concluding that ALG’s

advertisements confused between 0% and 3% of consumers.

The district court dismissed this evidence of actual confusion

as de minimis and concluded that this factor favored ALG.

Lerner & Rowe does not dispute these statistics. Nor did

it commission its own survey. Rather, it relies on cases like

Ironhawk Technologies, Inc. v. Dropbox, Inc., 2 F.4th 1150

2

The district court concluded that most of these call log entries were too

ambiguous to constitute reliable evidence of actual confusion. The

entries are indeed terse, and many do not convey any apparent

impression of customer confusion. For example, some callers mentioned

Lerner & Rowe because the firm had referred them to ALG. This is not

evidence of confusion at all. Other entries—like one that states,

“Google. Thought we were L&R”—more likely express confusion.

Most of the entries fall somewhere between these two poles in terms of

the clarity with which they convey customer confusion. Nevertheless,

for the sake of brevity, we will treat all 236 call log entries as evidence

of actual confusion because, as discussed below, even that total, under

the particular facts of this case, represents only de minimis evidence of

actual confusion.

3

In the district court, the parties acknowledged that, because the call logs

did not include entries from 2017, it would be more accurate to compare

the 236 calls to the 102,382 results featuring ALG’s advertisements that

occurred between 2018 and 2021. Doing so results in a purported actual

confusion rate of 0.231%, which does not meaningfully change our

analysis.

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 11

(9th Cir. 2021), for the proposition that even one or two

instances of actual confusion should weigh in the plaintiff’s

favor on summary judgment. In Ironhawk, we weighed two

instances of actual confusion in favor of the plaintiff,

concluding that “it is evidence a reasonable jury could rely

on to support a finding of actual confusion or when assessing

a likelihood of confusion under the totality of the

circumstances.” 2 F.4th at 1166; see also Entrepreneur

Media, 279 F.3d at 1151 (holding that, while a jury could

disregard as de minimis a single incident of actual confusion,

such evidence still weighed slightly in favor of plaintiff’s

infringement claim for purposes of summary judgment). In

Lerner & Rowe’s view, its proffer of 236 instances of actual

confusion easily meets Ironhawk’s standard regardless of the

number of times consumers viewed ALG’s advertisements.

Typically, instances of actual confusion present a

numerator with no denominator, saying little or nothing

about the actual proportion of the consumer population that

is confused. In such cases, we see the tip of an iceberg and

have no ability to speculate about how much lies below the

surface. Here, however, no speculation is necessary—we

can see the entire iceberg. Because we have both the

numerator—the 236 calls representing actual confusion—

and the denominator—the 109,322 consumers who saw the

advertisements—we can discern with a high degree of

precision the proportion of all consumers who were actually

confused. See 3 J. Thomas McCarthy, McCarthy on

Trademarks and Unfair Competition § 23:14 (5th ed.)

(“Evidence of the number of instances of actual confusion

must be placed against the background of the number of

opportunities for confusion before one can make an

informed decision as to the weight to be given the

evidence.”). The resulting 0.216% confusion rate is direct

12 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

evidence of the likelihood of confusion comparable to, but

more complete than, survey evidence. No reasonable jury

would conclude that this percentage is anything but de

minimis and fails to support a finding of likelihood of

confusion. See Nutri/Sys., Inc. v. Con-Stan Indus., Inc., 809

F.2d 601, 606–07 (9th Cir. 1987) (holding that after a bench

trial, the trial court properly discounted instances of

confusion that “at best, were thin, and at worst, were

trivial”); Entrepreneur Media, 279 F.3d at 1151 (holding

that “a reasonable juror could find de minimis, and thus

unpersuasive, one instance of actual confusion”); see also

Henri’s Food Prods. Co., Inc. v. Kraft, Inc., 717 F.2d 352,

358 (7th Cir. 1983) (holding that a survey confusion rate of

7.6% weighed against infringement).

Our conclusion does not conflict with cases like

Ironhawk, where we weighed individual instances of

confusion without the benefit of knowing the total number

of opportunities consumers had for confusion. See 2 F.4th

at 1165–66. We surmised that a reasonable jury would likely

find the proffered evidence of actual confusion in Ironhawk

de minimis, but we could not make that determination

ourselves without more data. See id. at 1166. Here, on the

other hand, we know how many times consumers searched

for “Lerner & Rowe” on Google and saw an ALG

advertisement. We also know how many of those consumers

called ALG and, in a potential expression of confusion,

referenced “Lerner & Rowe.” The resulting calculation is

simple and telling: unlike in Ironhawk, the evidence of actual

confusion here is demonstrably de minimis.

While evidence showing the actual proportion of

confused consumers is important, we do not suggest that

courts should automatically discount de minimis instances

of actual confusion when the record contains additional

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 13

evidence of consumer confusion. The Fourth Circuit’s

decision in Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144

(4th Cir. 2012), is instructive. There, the district court

disregarded five depositions from confused consumers

because there had been more than 100,000 opportunities for

confusion over a period of six years. Id. at 157–58. The

Fourth Circuit noted that, if the depositions had been the

only evidence of actual confusion before the district court,

disregarding them would not have been improper. Id. at 158.

But the plaintiff had presented other evidence, including

records of 262 customer complaints, in-house studies from

Google about the likelihood that the defendant’s advertising

strategy could confuse consumers, testimony from Google’s

in-house trademark attorneys who were themselves unable

to distinguish between the links at issue in the case, and an

expert survey demonstrating a net confusion rate among

consumers of 17%. Id. at 158–59. Here, by contrast, Lerner

& Rowe’s de minimis actual confusion evidence stands

alone. In fact, ALG presented the only other evidence of

confusion—an expert survey showing a customer confusion

rate of 0% to 3% and evidence of a 6.82% click-thru rate 4—

which bolsters the de minimis nature of Lerner & Rowe’s

actual confusion evidence. See 5 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 32:189

(5th ed.) (“When the percentage results of a confusion

survey dip below 10%, they can become evidence which will

indicate that confusion is not likely.”).

4

As one circuit has recognized, a click-thru rate represents the upper

limit of initial interest confusion. See 1-800 Contacts, Inc. v. Lens.com,

Inc., 722 F.3d 1229, 1244 (10th Cir. 2013). But we cannot know how

many, if any, consumers clicked on ALG’s advertisements out of

confusion rather than mere diversion.

14 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

Having determined that Lerner & Rowe’s evidence of

actual confusion is de minimis, we must now decide how to

weigh it. In one sense, the evidence Lerner & Rowe has

presented is so slight it may as well have presented none at

all. Due to the difficulties in gathering evidence of actual

confusion, we have noted that “its absence [is] generally

unnoteworthy.” Brookfield Commc’ns, 174 F.3d at 1050;

see also LaQuinta Worldwide LLC v. Q.R.T.M., S.A. de C.V.,

762 F.3d 867 (9th Cir. 2014). But see M2 Software, 421 F.3d

at 1083 (weighing plaintiff’s failure to proffer evidence of

actual confusion in favor of defendant); One Indus., LLC v.

Jim O’Neal Distrib., Inc., 578 F.3d 1154, 1163 (9th Cir.

2009) (same). Here, however, the nature of the actual

confusion evidence paints a picture that affirmatively

contradicts Lerner & Rowe’s assertions that ALG’s

advertisements were likely to confuse an appreciable

number of consumers, compelling us to conclude that this

factor should weigh substantially in favor of ALG. See

Surfvivor Media, 406 F.3d at 633 (weighing de minimis

actual confusion evidence against plaintiff when defendant

presented consumer survey showing “an absence of

significant confusion”); see also Brookfield Commc’ns, 174

F.3d at 1050 (noting “a crucial difference” between a

plaintiff’s concession of no actual confusion and a mere

failure to present such evidence); Cohn v. Petsmart, Inc., 281

F.3d 837, 842–43 (9th Cir. 2002) (per curiam) (weighing

factor against plaintiff where, under the circumstances,

“some evidence of actual confusion should have become

available”).

C. The Reasonably Prudent Consumer’s Degree of Care

Sophisticated consumers and those shopping for high-

value products are likely to exercise a higher degree of care

while shopping and are, therefore, less likely to be confused

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 15

by similar marks. See Network Automation, 638 F.3d at

1152. Additionally, when it comes to online shopping, “the

default degree of consumer care is becoming more

heightened as the novelty of the Internet evaporates and

online commerce becomes commonplace.” Id. The district

court weighed this factor in favor of ALG because acquiring

legal services can be expensive and important and because

those accustomed to online shopping are typically savvy

enough to differentiate between search engine results.

We agree that this factor weighs in ALG’s favor. Since

at least 2010, we have recognized that “[c]onsumers who use

the internet for shopping are generally quite sophisticated

about” how the internet functions. Toyota Motor Sales,

U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1178 (9th Cir. 2010).

For example, regular internet users can readily distinguish

domain names associated with the companies they are

searching for from those they are not. See id. Additionally,

Google’s search engine is so ubiquitous that we can be

confident that the reasonably prudent online shopper is

familiar with its layout and function, knows that it orders

results based on relevance to the search term, and

understands that it produces sponsored links along with

organic search results. Moreover, in this case, the relevant

consumers specifically typed in “Lerner & Rowe” as a

search term, suggesting that they would be even more

discerning of the results they received. Therefore, because

this case involves shopping on Google by using the precise

trademark at issue, this factor weighs in favor of ALG. 5

5

It is unnecessary for us to address the district court’s assumption that

the value of personal injury legal services heightens the degree of

consumer care.

16 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

D. Labeling and Appearance of Advertisements

“[C]lear labeling can eliminate the likelihood of initial

interest confusion in cases involving Internet search terms.”

Multi Time Mach., 804 F.3d at 937; see also Network

Automation, 638 F.3d at 1153 (“In the keyword advertising

context the ‘likelihood of confusion will ultimately turn on

what the consumer saw on the screen and reasonably

believed, given the context.’” (quoting Hearts on Fire Co. v.

Blue Nile, Inc., 603 F. Supp. 2d 274, 289 (D. Mass. 2009))).

The district court, after analyzing three screenshots depicting

ALG’s advertisements, concluded that the advertisements

would not confuse a reasonably prudent consumer searching

online for personal injury legal services. 6 We agree.

6

Lerner & Rowe provided 28 screenshots for the district court’s review,

but 25 of those images were gathered after May 2021, when ALG

stopped paying Google for “Lerner & Rowe” as an advertising keyword.

Accordingly, the district court looked only to the three screenshots that

pre-dated May 2021; we will do the same.

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 17

To frame the following discussion, the relevant

screenshots depicting ALG’s advertisements are reprinted

below:

First screenshot:

18 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

Second screenshot:

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 19

Third screenshot:

The most significant feature of the second and third

screenshots is the clearly labeled result for Lerner & Rowe’s

website. Though the first screenshot does not display a

result for Lerner & Rowe, we think it reasonable that, based

on the other two screenshots, such a result likely appeared

immediately after the ALG advertisement. But even if the

list of search results did not include an entry for Lerner &

Rowe after the ALG advertisement, our conclusion would

remain the same. Indeed, we find it difficult to believe that

20 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

consumers searching for the phrase “Lerner & Rowe” would

not choose to click on the link that matches their search

query word for word.

Nor do we think that ALG’s advertisements are so

confusing as to lure reasonably prudent online shoppers into

unwittingly clicking on them in search of Lerner & Rowe’s

website. Lerner & Rowe attempts to demonstrate confusion

by distinguishing Multi Time Machine v. Amazon.com,

where we held that Amazon’s search results page was so

clearly labeled that no reasonable consumer would find it

confusing. See 804 F.3d at 937–38. That case involved

Amazon searches for the MTM Special Ops watch, a product

that the manufacturer did not sell on Amazon. Id. at 933.

When someone searched for “mtm special ops” on Amazon,

the results page listed the search query twice above a

“Related Searches” field that contained alternative search

queries that might help the consumer find a related product.

Id. Below the “Related Searches” field, separated by a gray

bar, was a list of products available on Amazon that were

similar to the MTM Special Ops watch. Id. at 934. The entry

for each of these products included a photograph and listed

the name of the product and the manufacturer in “large,

bright, bold letters.” Id. at 938.

Lerner & Rowe notes that, unlike in Multi Time

Machine, Google’s search results do not contain a “Related

Results” field and do not separate advertisements from

organic results with “borders, bars, or shading.” First, it is

not surprising that Google styles its search results differently

from Amazon; they are distinct search engines with distinct

functions. Second, Multi Time Machine did not elucidate a

list of features that a search engine must incorporate in order

for their results to be clearly labeled. Analyzing the search

results in the context of the Google results at issue here, we

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 21

conclude that the bolded “Ad” designation next to each of

ALG’s advertisements sufficiently distinguishes ALG’s

advertisements from the search’s organic results. Moreover,

the fact that ALG’s advertisements sometimes appear above

organic results for Lerner & Rowe does not change this

analysis. We think that reasonably prudent consumers

shopping on Google would be accustomed to scrolling past

advertisements at the top of a list of search results to find the

organic result relevant to their query.

We acknowledge that some of ALG’s advertisements are

not models of clarity. As Lerner & Rowe points out,

sometimes the content of an advertisement contains generic

statements that could apply to any personal injury law

firm—for example, “Your Personal Injury Attorney—We

Don’t Win—You Don’t Pay.” In such cases, the only feature

identifying ALG as the source of the advertisement is the

URL, which is in a smaller, lighter font. While these features

could possibly cause confusion in isolation, our job is to

analyze the advertisements within the context of the entire

search results page. That page invariably contains a result

for Lerner & Rowe that includes the precise search term at

issue, dispelling any confusion ALG’s advertisements might

cause. The parties’ presentation of de minimis evidence of

actual confusion only bolsters our conclusion that it is only

the “[u]nreasonable, imprudent and inexperienced web-

shoppers” who might find the search results pages

confusing. Tabari, 610 F.3d at 1176.

E. Other Factors

While the factors above are the most relevant to

trademark infringement claims based on keyword

advertising, other factors can also be helpful. See Network

Automation, 638 F.3d at 1149–54 (weighing nine factors and

22 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

finding four to be the most relevant to the court’s analysis).

Here, however, our assessment of these other factors does

nothing to change our conclusion that Lerner & Rowe has

failed to establish a genuine dispute of material fact

regarding the likelihood of confusion element.

1. Proximity of the Goods

When companies provide similar services, consumers

are more likely to confuse them. See Network Automation,

638 F.3d at 1150. Nevertheless, “the proximity of the goods

. . . become[s] less important if advertisements are clearly

labeled or consumers exercise a high degree of care, because

rather than being misled, the consumer would merely be

confronted with choices among similar products.” Id. The

district court correctly noted that, even though ALG and

Lerner & Rowe are direct competitors offering similar

services, savvy online shoppers would be able to

differentiate between the parties’ links on Google. If it has

any weight at all, this factor falls in favor of ALG.

2. Marketing Channels

This factor might be relevant if ALG’s advertisements

appeared on a lesser-known or product-specific search

engine, but “[t]oday, it would be the rare commercial retailer

that did not advertise online, and the shared use of a

ubiquitous marketing channel does not shed much light on

the likelihood of consumer confusion.” Network

Automation, 638 F.3d at 1151. Lerner & Rowe cites a case

from the year 2000 to argue that online marketing increases

the likelihood of confusion. While that may have been true

over twenty years ago when internet advertising was new,

our precedent acknowledges that advertising on Google is

commonplace today. The district court properly accorded

this factor little to no weight.

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 23

3. Similarity of Marks

“Where the two marks are entirely dissimilar, there is no

likelihood of confusion.” Brookfield Commc’ns, 174 F.3d at

1054. Lerner & Rowe argues that this factor favors it

because ALG’s use of Lerner & Rowe’s mark as a keyword

means that ALG uses a mark identical to Lerner & Rowe’s.

Network Automation rejected this exact reasoning, holding

that this factor should reflect “what consumers ‘encountered

in the marketplace,’” not what Google’s algorithm uses to

churn out search results. 638 F.3d at 1151. In this case, ALG

does not display Lerner & Rowe’s mark in its

advertisements. In fact, the URL above each advertisement

displays ALG’s own mark, albeit in a lower-case, condensed

form. These two marks—“Lerner & Rowe” and “Accident

Law Group”—are in no way similar. This factor favors

ALG.

4. Intent

“When the alleged infringer knowingly adopts a mark

similar to another’s, reviewing courts presume that the

defendant can accomplish his purpose: that is, that the public

will be deceived.” Network Automation, 638 F.3d at 1153

(quoting Sleekcraft, 599 F.2d at 354). Apart from an

affirmative intent to confuse, an alleged infringer’s failure to

take remedial steps when faced with evidence of confusion

can cause a likelihood of confusion. See Playboy Enters.,

354 F.3d at 1028–29. We agree with the district court that,

because Lerner & Rowe’s evidence of intent is identical to

the evidence it offered to support its likelihood of confusion

argument generally, it has failed to distinguish between an

intent to deceive and an intent to compete on the part of

ALG. Accordingly, this factor bears little to no weight.

24 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

5. Likelihood of Expansion of Product Lines

“The likelihood of expansion of product lines factor is

relatively unimportant where two companies already

compete to a significant extent.” Brookfield Commc’ns, 174

F.3d at 1060. Lerner & Rowe acknowledges that this factor

is unimportant to the likelihood of confusion analysis

because it competes directly with ALG. The district court

correctly acknowledged the same.

IV. Conclusion

The district court was correct to conclude that this is one

of the rare trademark infringement cases susceptible to

summary judgment. The generally sophisticated nature of

online shoppers, the evidence demonstrating that there is not

an appreciable number of consumers who would find ALG’s

use of the mark confusing, and the clarity of Google’s search

results pages, convince us that ALG’s use of the “Lerner &

Rowe” mark is not likely to cause consumer confusion. The

district court’s judgment is affirmed. 7

7

ALG alternatively asks us to affirm the district court’s grant of

summary judgment on the ground that ALG never used Lerner & Rowe’s

trademark in commerce. Network Automation, however, explicitly held

that “the use of a trademark as a search engine keyword that triggers the

display of a competitor’s advertisement is a ‘use in commerce’ under the

Lanham Act.” 638 F.3d at 1145–46. Because no intervening Supreme

Court decision is “clearly irreconcilable” with this holding, we have no

power to overrule it. Miller v. Gammie, 335 F.3d 889, 900 (9th Cir.

2003) (en banc).

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 25

DESAI, Circuit Judge, concurring:

I concur in the majority opinion in full. But I write

separately to urge our court to reconsider whether keyword

bidding and purchasing constitutes a “use in commerce”

under the Lanham Act. Our binding precedent says it does,

Network Automation, Inc. v. Advance Systems Concepts,

Inc., 638 F.3d 1137, 1144–45 (9th Cir. 2011), but I am not

convinced that we got it right or that our holding withstands

the test of time and recent advancements in technology.

To prevail on a trademark infringement claim, a plaintiff

“must prove: (1) that it has a protectible ownership interest

in the mark; and (2) that the defendant’s use of the mark is

likely to cause consumer confusion.” Dep’t of Parks &

Recreation v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124

(9th Cir. 2006). Subsumed in the second element of this test

is the requirement that a defendant uses the mark in

commerce. 15 U.S.C. § 1114(1)(a). But we have not

seriously grappled with whether bidding on keywords

constitutes a “use in commerce.” That is partly because,

ordinarily, the bulk of our focus in trademark infringement

cases is devoted to whether the defendant’s conduct created

a likelihood of consumer confusion. With the growing

reliance by businesses on keyword advertising, it is time to

revisit what “use in commerce” means in this context.

Under the Lanham Act, a mark is “used in commerce”

when it is “used or displayed in the sale or advertising of

services.” 1 15 U.S.C. § 1127. This definition is easily

1

This definition relates to the requirements for registering a mark, but

courts routinely use it in the infringement context as well. See

Rescuecom Corp. v. Google Inc., 562 F.3d 123, 139–41 (2d Cir. 2009)

26 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

satisfied when a defendant displays a mark. But what about

when a defendant does not display a mark? Is it enough that

a defendant merely bid on a mark, even if the defendant

never displayed the mark themselves?

We have previously suggested that a defendant can “use”

a mark in commerce even if the mark is not visibly

displayed. See Brookfield Commc’ns, Inc. v. W. Coast Ent.

Corp., 174 F.3d 1036, 1064–65 (9th Cir. 1999) (holding that

use of competitor’s trademark in metatags, which are not

visible on a website, is actionable under the Lanham Act).

Other circuits suggest the same. See, e.g., 1-800 Contacts,

Inc. v. WhenU.Com, Inc., 414 F.3d 400, 411 (2d Cir. 2005)

(recognizing that the use of metatags may involve conduct

that constitutes a “use” under the Lanham Act). But this case

presents a different question: Whether an action, like bidding

on keywords, that involves no display or presentation of a

mark whatsoever satisfies the “use in commerce” definition.

In other words, does a buyer of advertising keywords who

bids on certain terms and phrases “use” its competitor’s

mark when bidding on it?

In Network Automation, we answered, yes. 638 F.3d at

1144–45. But we provided no analysis to support this

holding, id. at 1145, and we relied on cases with

meaningfully different facts. Given that the cases on which

Network Automation relied are readily distinguishable, the

purpose of trademark infringement actions and modern

practice on the internet suggest we may have gotten it wrong.

(explaining how § 1127 evolved to apply to the infringement context,

despite Congress’s apparent intention that it apply to registration of

trademarks).

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 27

I. Network Automation relied on factually

distinguishable cases.

A. Rescuecom did not consider purchasers of

advertising keywords.

Network Automation relied almost exclusively on the

Second Circuit’s decision in Rescuecom Corp. v. Google,

Inc., 562 F.3d 123, 129 (2d Cir. 2009), for its conclusion that

purchasing advertising keywords satisfies the “use in

commerce” definition. 638 F.3d at 1145 (citing Rescuecom

and concluding, “[w]e now agree with the Second Circuit

that such use is a ‘use in commerce’ under the Lanham

Act”). But the plaintiff in Rescuecom sued Google, the seller

of the keywords, not the buyer of the keywords. 562 F.3d at

129. Specifically, the plaintiff alleged that Google’s

“Adwords” program and Keyword Suggestion Tool used the

plaintiff’s marks to cause consumer confusion. Id. at 125–

26. The district court granted Google’s motion to dismiss,

holding that Google did not use Rescuecom’s mark in

commerce. Id. at 127. The Second Circuit reversed. Id. at

131. It explained that Google satisfied § 1127’s “use or

display” definition because Google “displays, offers, and

sells Rescuecom’s mark to [its] advertising customers when

selling its advertising services.” Id. at 129. By

“recommending and selling [Rescuecom’s mark] to its

advertisers,” Google necessarily displayed Rescuecom’s

trademark in the sale of services. Id. The Second Circuit’s

decision in Rescuecom is based on the display of a

trademark, a fact that does not exist here.

Purchasers of keywords do not display the mark. Here,

Lerner & Rowe alleges that ALG bid on certain search

terms—including “Lerner & Rowe”—and having been the

highest bidder, paid Google to place its own advertisement

28 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

near the top of the list when users use that search term. This

process does not involve ALG displaying Lerner & Rowe’s

mark. Google—not ALG—displayed, offered, and sold the

advertising term consisting of Lerner & Rowe’s mark. While

Google or other search engine providers may “use”

trademarks by displaying and selling them as advertising

words, it does not necessarily follow that bidding on those

advertising words involves a “use.” And, to be sure, the

buyer of keywords does not in any way display a trademark

to sell or advertise services.

B. Purchasing adwords is not comparable to using

metatags.

Network Automation also pointed to a separate line of

cases involving metatags to support its holding. Metatags are

snippets of HTML code that describe the contents of the

website. Brookfield, 174 F.3d at 1045. During the earlier

days of the internet, many search engines relied on metatags

in code to rank their search results. 4 J. Thomas McCarthy,

McCarthy on Trademarks and Unfair Competition § 25A:3

(5th ed. 2024). “The more often a term appear[ed] in the

metatags and in the text of the web page, the more likely it

[wa]s that the web page [would] be ‘hit’ in a search for that

keyword and the higher on the list of ‘hits’ the web page

[would] appear.” Brookfield, 174 F.3d at 1045. Internet users

took advantage of this system, incorporating their

competitors’ trademarks into their website codes to improve

the likelihood of appearing in a search for their competitor’s

mark.

We have previously assumed without expressly deciding

that this type of conduct with metatags constitutes a “use in

commerce.” Id. at 1062–63. In Brookfield, we held that the

use of metatags was actionable because it could cause initial

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 29

interest confusion. Although the parties did not expressly

raise the “use in commerce” issue, our conclusion implied

that metatags constituted such a use.

But incorporating metatags consisting of a competitor’s

trademark into a website code is comparable to displaying or

presenting a mark. Rescuecom explained, and we appear to

have endorsed the view that such “internal” displays still

constitute a “use in commerce.” See, e.g., 562 F.3d at 129

(explaining that “use of a trademark in a software program’s

internal directory [does not] preclude[] a finding of

trademark use”). Even if metatags do not involve an external

display, they are functionally equivalent to “affixing” the

competitor’s mark to the product—a defendant affixes the

competitor’s mark to its website through its code to gain the

benefits of the mark. This is precisely what the “use in

commerce” requirement aims at. McCarthy, supra,

§ 23:11.50 (explaining that the “use in commerce” definition

in § 1127 is a “relaxed remnant” of trademark law’s

requirement that a user “affix” a trademark to goods to

obtain trademark protection).

A defendant bidding on keywords may not be the same

as a defendant incorporating its competitor’s trademarks into

its own website. Although metatags and bidding on

keywords are similar because neither involve a visible

display of the competitor’s mark on the defendant’s website,

the visibility of the mark or lack thereof is not what

constitutes “use.” Metatags constitute a “use” because the

defendant affixes the competitor’s mark to its website via its

code. In contrast, keyword bidding does not require the

defendant to display or affix a mark—internally or

externally—in the advertising of its services.

30 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

Here, Google, not ALG, displayed Lerner & Rowe’s

mark on its website. ALG merely bid on keywords. Even if

bidding on keywords resulted in the display of ALG’s

advertisements when consumers searched for Lerner &

Rowe’s mark, Google and not ALG is responsible for

displaying the mark. Whether the defendant used a mark thus

requires us to look at the defendant’s conduct. Purchasing

keywords may not be the same as using metatags for

purposes of “use in commerce.”

II. We should reconsider our holding in Network

Automation en banc.

Because purchasing keywords is different than selling

them or using metatags, Network Automation’s holding is

unsupported by existing case law. When considering

whether ALG used or displayed Lerner & Rowe’s mark in

the sale or advertising of its services, 15 U.S.C. § 1127, the

more reasoned conclusion may be that it did not. As noted

above, ALG did not affix, display, offer, or present Lerner

& Rowe’s mark to any consumers. And while “use in

commerce” is a relatively permissive standard, Network

Automation, 638 F.3d at 1145, it is not boundless. Multiple

considerations support the conclusion that the boundary

could be drawn at ALG’s conduct in this case.

First, trademark infringement typically requires

presenting the mark to the allegedly confused consumers. In

an ordinary infringement case, the defendant’s presentation

of a similar mark causes consumer confusion about the

source of the goods or services. See, e.g., Surfvivor Media,

Inc. v. Survivor Prods., 406 F.3d 625, 629 (9th Cir. 2005).

ALG’s actions look nothing like the ordinary case. Indeed,

ALG never presented Lerner & Rowe’s marks to the

consumer on the other end of the search engine—or to any

LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 31

consumer at all. Google users entered their chosen search

terms, and Google arranged the results, including sponsored

advertisements, for the user. To the extent ALG displayed or

presented anything to the consumer, it presented its own

mark, which both parties acknowledge is not similar to

“Lerner & Rowe.” An action based only on one’s own

placement of their own product appears outside the realm of

what the Lanham Act seeks to protect. 15 U.S.C.

§ 1114(a)(1).

Second, the traditional likelihood of confusion factors

are not well-suited to address these circumstances. As

Network Automation noted, even the Sleekcraft factors that

typically apply in the internet context are “a particularly poor

fit for the question presented here.” 638 F.3d at 1148. We

noted, for example, that an inquiry into the similarity of the

marks “is impossible here where the consumer does not

confront two distinct trademarks.” Id. at 1151. Ultimately,

Network Automation devised an entirely new factor to deal

with competitive keyword advertising: “labeling and

appearance.” Id. at 1153–54. We give this factor great

weight in our analysis. Id. (explaining that “likelihood of

confusion will ultimately turn on what the consumer saw on

the screen and reasonably believed, given the context”).

Rather than continue relying on a nearly dispositive factor

created exclusively for this context with little guidance, we

should consider correcting our precedent and holding that

purchasers of keywords do not “use” their competitors’

trademarks in commerce.

And third, given the predominance of the internet in our

lives, this type of advertising has become commonplace.

Scrolling through sponsored ads at the top of a results page

is often the rule—not the exception—when using a search

engine. The familiarity of sponsored ads to those navigating

32 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

internet platforms makes the likelihood of confusion inquiry

difficult, if not impossible, to satisfy. McCarthy, supra,

§ 25A:7 (“Courts almost always find no likelihood of

confusion if all that [a] defendant has done is use another’s

mark as a keyword to trigger an ad for defendant in which

the other’s trademark does not appear.”). Consumers likely

understand that, even when they search for a trademarked

term, the sponsored results may not be associated with that

trademark. This is not because the keyword purchaser has

displayed or incorporated the trademark into its own page,

but because sophisticated internet consumers understand the

general norms and context in which internet advertisements

appear. See Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610

F.3d 1171, 1178 (9th Cir. 2010) (explaining that

“[c]onsumers who use the internet for shopping are generally

quite sophisticated” about how the internet works).

* * *

Twenty-five years ago, we recognized that “emerging

technologies require a flexible approach” in the internet

context. Brookfield, 174 F.3d at 1054. But that flexible

approach is limited by the plain text and purpose of the

Lanham Act. At bottom, trademark law is designed to

protect parties against infringing uses of their marks.

Bidding on and purchasing keyword search terms may not

constitute such a use. We should take the opportunity to

directly address this issue en banc rather than relying on our

holding in Network Automation.