Life, Liberty, and the Pursuit of Customers: Developments on ‘Conquesting’ from the Ninth Circuit

By Howard Shire and Di’Vennci K. Lucas

In a recent decision, the U.S. Court of Appeals for the Ninth Circuit in Lerner & Rowe PC v. Brown Engstrand & Shely LLC, 119 F.4th 711 (9th Cir. 2024), addressed the issue of whether purchasing market competitors’ search engine keyword terms, known as “conquesting,” constitutes trademark infringement. In particular, the court addressed whether this competitive tactic is likely to confuse or mislead consumers. The crux of the case is whether the purchase of a competitor’s search engine keyword terms to appear near the top of consumers’ online search, results in fodder for a claim of trademark infringement under the Lanham Act?
The Lanham Act aims to safeguard consumers from marketplace confusion. Trademark law is focused on the benefit to consumers of having a clear ability to identify a product’s source. The infringement of trademark rights arises from creating a likelihood of confusion within the marketplace.
Courts in the Ninth Circuit assess whether there is trademark infringement by relying on the eight-factor balancing test established in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979), to assess the potential for consumer confusion. These non-exhaustive yet illustrative Sleekcraft factors are integral to the opinion.
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Case Background

In this case, Plaintiff Lerner & Rowe, PC (Lerner & Rowe) and Defendant Brown Engstrand & Shely LLC d/b/a The Accident Law Group (ALG) are both personal injury law firms based in Arizona. Lerner & Rowe, founded in 2005, is the larger of the two firms and has spent over $100 million to promote its brand and trademarks across Arizona.
Since being founded in 2015, and continuing up until 2021, ALG purchased the Google Ads keyword term “Lerner & Rowe,” prompting ALG’s advertisements to appear near the top of search results returned by the Google search engine when potential customers searched for “Lerner & Rowe.” This marketing tool, known as “conquesting,” is common among companies in promoting their services to potential customers searching for a competitor. Lerner & Rowe themselves even engaged in conquesting in other contexts. It is important to note that ALG never included or referenced the term “Lerner & Rowe” in any of its advertisements.
On Sept. 8, 2021, Lerner & Rowe sued, alleging claims for: 1) trademark infringement, unfair competition, false designation of origin, and false description under the Lanham Act, 15 U.S.C. §§1114, 1117 and 1125(a)(1)(A); 2) state law trademark infringement and unfair competition; and 3) unjust enrichment under Arizona Revised Statute Title 44 §44-403.
In May 2023, the U.S. District Court for the District of Arizona granted ALG summary judgment on the trademark infringement and unjust enrichment claims. The District Court denied summary judgment on the unfair competition claim. However, following ALG’s subsequent motion for reconsideration, the District Court entered summary judgment as to all claims.
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Legal Standard

On its motion for summary judgment, ALG carried the burden of establishing that no genuine dispute of material fact existed when the District Court viewed the evidence in the light most favorable to Lerner & Rowe. A genuine dispute of material fact exists if, given the evidence, a reasonable jury could have returned a verdict for Lerner & Rowe. The granting of summary judgment in relation to trademark infringement claims is infrequent, due to the fact-intensive nature of these claims. On appeal, the grant of summary judgment was reviewed de novo.
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Analysis of Likelihood of Confusion

Under the Lanham Act, to prevail on an allegation of trademark infringement, a plaintiff must demonstrate that the defendant’s actions are likely to cause confusion with its mark. Recall that the Ninth Circuit has held that the eight-factor Sleekcraft test is to be considered by district courts when evaluating Lanham Act trademark infringement claims. These factors are “not a rote checklist” and require flexibility when analyzing them. These nonexhaustive factors are:
(1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.
AMF v. Sleekcraft, 599 F.2d at 348‒49.
ALG did not dispute that Lerner & Rowe’s trademark was strong. The mark is federally registered, and Lerner & Rowe also spent millions of dollars advertising it. Lerner & Rowe has gained the business of over 100,000 clients as a result of these efforts. Thus, the first factor weighed in favor of Lerner & Rowe.
Next, the Ninth Circuit considered the evidence of actual confusion presented by Lerner & Rowe. This proof consisted of 236 phone calls that ALG’s intake department received where the caller mentioned “Lerner & Rowe,” when asked how the caller found the ALG phone number. Yet between 2017 and 2021, Google searches for “Lerner & Rowe” returned results featuring ALG advertisements 109,322 times. Thus, actual confusion based on these numbers constituted only 0.216% of total number of users exposed to the advertisements. As the court stated, “No reasonable jury would conclude that this percentage is anything but de minimis and fails to support a finding of likelihood of confusion.”
The court then considered the degree of care likely to be exercised by the purchaser. Because legal services can be cost-intensive, and in light of the typical savviness of online shoppers, the court deemed these consumers to be able to differentiate between search engine results. Noting the ubiquity of the Google search engine and general consumer knowledge of how to interpret Google search results, the court found these factors to weigh in favor of ALG.
In considering the labeling and appearance of the ALG advertisements as generated by the Google search engine, the court found it “difficult to believe that consumers searching for the phrase … would not choose to click on the link that matches their search query word for word.” The Court was unconvinced that consumers would unwittingly click on ALG’s advertisements in search of Lerner & Rowe’s website.
Though Lerner & Rowe contended that Google’s search results did not contain a “Related Results” field, the court did not find this fact convincing enough to alter its reasoning. The other factors briefly analyzed by the court offered nothing to change the conclusion that Lerner & Rowe failed to establish a genuine disputed issue of material fact regarding a likelihood of confusion.
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Keyword Search Terms, Business Strategy, and the Lanham Act

With that, the Ninth Circuit affirmed the District Court decision. But the issue may not be fully settled. Judge Desai wrote in concurrence that while the court held that keyword bidding and purchasing constitutes a “use in commerce” under the Lanham Act, she does not believe this holding “withstands the test of time and recent advancements in technology.” As Judge Desai explains, a mark under the Lanham Act is “used in commerce” when it is “used or displayed in the sale or advertising of services.” 15 U.S.C. §1127.