A recent search on Amazon for “MTM Special Ops” results in several other military-style watches.
If Amazon doesn’t sell a specific product I’m looking for, should it simply tell me “Sorry, nothing here” or should it bring up a slate of other, possibly similar, competing products? To one high-end watchmaker that’s been involved in a four-year legal battle with Amazon, these questionable search results aren’t just an annoyance but constitute trademark infringement. And yesterday, a federal appeals panel said Amazon must face this trademark complaint in court.
In a 2-1 opinion [PDF], the San Francisco-based 9th Circuit Court of Appeals overturned a lower court ruling that Amazon would not have to go to trial over a trademark dispute with watchmaker Multi Time Machine Inc.
MTM first filed the lawsuit against Amazon back in 2011, claiming the retailer’s search results cause confusion for its potential buyers.
MTM sells its watches directly to consumers and not through other retailers, including Amazon.
However, MTM’s suit claims that when an individual searches for the military-style watch on Amazon the results turn up a list that includes several trademarked “MTM Special Ops” references in the search field and immediately below the search field, a list of similar products, and no indication that the online retailer doesn’t actually carry the products.
“Once the customer has clicked on a particular result, he will see the particular product’s brand name and the product title, which also shows the brand name (e.g., Luminox),” MTM contends in its suit. “On the top of the product detail page, the customer’s initial inquiry, ‘MTM Special Ops,’ will still appear in the search field. Nothing on either of the pages states that Amazon does not carry MTM products.”
According to MTM, these results could cause customers to buy from a competing watchmaker. The company says that other online retailers like Overstock.com and Buy.com do not subscribe to the same search methods and instead clearly state that no search result match a search for “MTM Special Ops.”
MTM asserts that even if shoppers knew they weren’t purchasing from the company, the list generated by Amazon could cause “initial interest confusion,” a point the appeals court’s opinion agreed with.
“The [Los Angeles] district court found Amazon’s use of MTM’s trademark created no likelihood of confusion as a matter of law,” the Appeals Court opinion states. “But we think a jury could find that Amazon has created a likelihood of confusion. We therefore reverse the district court’s grant of summary judgment in favor of Amazon.”
In reversing the lower court’s decision, the appeals panel disagreed with Amazon’s defense that using “MTM Special Ops” as a search on the site didn’t constitute “use in commerce,” which means the bona fide use of a mark in the ordinary course of trade.
“This court has held that 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,” the opinion states. “We hold that the customer-generated use of a trademark in the retail search context is a use in commerce.”
In a dissent for the court, 9th Circuit Judge Barry Silverman wrote that Amazon’s search page clearly labels products with their manufacturer’s names, concluding that “there was no likelihood of consumer deception as a matter of law because no reasonable consumer could have been deceived by the label/advertisement at issue.”
Following the federal appeals court decision, the suit returns to the district court in Los Angeles.
Amazon must face trademark lawsuit over search results [Reuters]
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