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.