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

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.

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.