Warby Parker has responded to a lawsuit accusing it of attempting to confuse consumers into believing that its products are affiliated with those offered up by 1-800 Contacts. In the trademark infringement, unfair competition, and deceptive advertising practices suit that 1-800 Contacts filed with the U.S. District Court for the Southern District of New York in August, the 26-year old contacts company accuses the newly-publicly traded Warby Parker of adopting a website that allegedly “mimics the look and feel of 1800contacts.com” and of bidding on 1-800 Contacts’ trademarks as search engine keywords to generate Warby Parker advertisements in an attempt to dupe consumers given its status as a relatively “new entrant in the online contact lens marketplace.”
New York-based Warby Parker is now pushing back against 1-800 Contacts’ claims, taking issue with the plaintiff’s allegations that it engaged in an illegal pattern of “persistent and prevalent use” of 1-800 Contacts’ trademark, while also adopting a landing page “that deceptively and intentionally mimics the look and feel of the 1-800 Contacts website.”
Primarily, Warby Parker denies that it hatched a “plan” to confuse or mislead consumers who seek to go to 1-800 Contacts’ e-commerce site or to “thwart consumers’ legitimate rights and expectations to find what they are looking for when searching for 1-800 Contacts’ products and services.” Despite 1-800 Contacts’ claim that Warby Parker engages in “unauthorized bidding on 1-800 Contacts’ trademarks as search engine keywords that generate Warby Parker advertisements” in furtherance of an attempt by the defendant to “trade off [the 1-800 Contacts] brand name and reputation,” Warby Parker argues that its use of keywords does not create a likelihood of confusion for consumers.
1-800 Contacts also alleges in its complaint – and Warby Parker has since denied – that Warby Parker makes “persistent and prevalent use of the 1-800 CONTACTS trademarks in keyword advertising” not only to confuse customers, but also to force 1-800 Contacts “to spend substantial resources” in order to “outbid Warby Parker virtually every day to combat the likelihood of consumer confusion and deception caused by Warby Parker’s scheme” and ensure that consumers are not misled.
In a subsequent letter to the court dated November 6, counsel for Warby Parker states that 1-800 Contacts “mistakenly claims that the purchase of a competitor’s trademarks for keyword advertising may create liability for trademark infringement.” In reality, the defendant’s counsel states that in a case that 1-800 Contacts “cites extensively,” the Southern District of New York found that “[u]nder the Lanham Act,’ [v]irtually no court has held that, on its own, a defendant’s purchase of a plaintiff’s mark as a keyword term is sufficient for liability,’” and thus, a plaintiff must also “plausibly allege likelihood of confusion,” which 1-800 Contacts has not done here, per Warby Parker.
Beyond that, in the answer that it filed in October, Warby Parker takes aim at 1-800 Contacts’ assertion that it “possesses a valid, protectable proprietary interest in the ‘look and feel’” of its website – namely, “the prominently featured shade of light blue on its homepage,” as well as “the light blue rectangular shaded box that spans most of the screen in a horizontal configuration and displays representative contact lens product packages to the right of a discount offer to ‘Get 20% off your first order.’”
According to Warby Parker, no such interest exists and despite 1-800 Contacts’ claims to the contrary, the design of its site has not acquired distinctiveness. Warby Parker argues that 1-800 Contacts does not maintain rights in the appearance of its website, in part, because “multiple companies selling contact lenses online use the color blue and/or the same general layout as referenced [by 1-800 Contacts] in connection with their online promotion, advertisement, and sale of contact lenses,” making it so that the design is not distinctive and has not acquired secondary meaning in the minds of consumers. And to prove its point, Warby Parker points to “multiple third-party websites that present some combination of … (i) a blue and/or a rectangular shaded box that spans most of the screen; (ii) a display of representative contact lens products; and (iii) and a discount offer.”
In its November 8 letter to the court, Warby Parker doubles-down on its criticism of 1-800 Contacts’ trade dress claims, stating that the plaintiff “errs in cloaking its likelihood of confusion argument in the language of trade dress infringement when it knows that it cannot (and will not) allege that the website has non-functional, distinctive design elements that have acquired secondary meaning.” 1-800 Contacts “cannot have it both ways,” per Warby Parker, in that it cannot “plead that consumers will be confused because [Warby Parker] has imitated [its] website but not actually allege that [its] website has any trade dress which consumers have come to associate with the brand.”
With the foregoing in mind, Warby Parker sets out a single affirmative defense, alleging that 1-800 Contacts fails to state a claim upon which relief can be granted, as it “cannot sustain its trademark infringement and unfair competition claims … on the bare allegation that [Warby Parker] used the ‘1 800 CONTACTS trademarks’ in connection with keyword advertising.” In addition, Warby Parker contends that “courts in this jurisdiction, including the Second Circuit” have held that use of a competitor’s trademarks in keyword advertising is “not sufficient to support a claim of trademark infringement,” further noting that “nothing alleged in or attached to the complaint provides any plausible factual support for the confusion element of the plaintiff’s unfair competition and false designation of origin claims,” and amounts to “generalized, conclusory assertions that [its] conduct” runs afoul of the law.
Websites as Trade Dress
Not the first company to make website design-specific trade dress claims, the 1-800 Contacts case comes as a growing number of companies have made similar claims, including Daily Harvest, which filed against Revive, alleging that its fellow frozen foods company copied not only its product packaging but the design of its website. In that since-settled case, Daily Harvest asserted that it maintains trade dress rights in the “look and feel” of its e-commerce site – from “the home page, [which consists of] a vivid and colorful photograph of a line-up of prepared products topped with garnishes, with a black, rectangular call to action button prompting consumers in white lettering to ‘Get Started’” to “the subpages, [which] feature rows and columns of images of Daily Harvest’s lineup of products.”
Having used such “inherently distinctive” branding consistently since April 2016, Daily Harvest claimed in its April 2020 complaint that “consumers have come to immediately identify Daily Harvest as the exclusive source of products bearing and/or offered in connection with the trade dress,” including products sold by way of its website.
In response to the case, Revive characterized Daily Harvest’s trade dress claims (and its case as a whole) as devoid of merit, arguing, among other things, that Daily Harvest’s alleged website trade dress is not distinctive, “meaning that the design of the website itself is not an indicator of source.” Revive argued that Daily Harvest’s “website is a compilation of common ornamental and functional features that are neither inherently distinctive nor have they acquired distinctiveness.”
Rising Similarity
Website – and app-based – trademark infringement claims (and the arguments made in response in the 1-800 Contacts and Daily Harvest cases, among others) are likely to keep surfacing in litigation in the future as companies continue to rely heavily on their e-commerce sites as a critical sales channel (and as companies spin off their e-comm divisions as significant sources of value)even as surging online sales growth has started to normalize in the wake of the pandemic.
While trademark law serves as a source of protection for a wide array of source-identifying elements – from logos and colors to product packaging and even elements of products, themselves, infringement arguments that rely on website design as trade dress are not easy to sustain for a number of reasons. Among other things, plaintiffs must be able to properly describe the trade dress, which has proven a problem in more than onw website trade dress case. They must also establish that the trade dress is not functional; that it is either inherently distinctive or has acquired secondary meaning; and that there is a likelihood of confusion between its trade dress and the alleging infringing use. (Warby Parker claims that 1-800 Contacts fails on each of these fronts.)
In terms of distinctiveness, it seems to me that one of the challenging elements stems from the overarching similarity that exists among most websites. For instance, after running a series of data mining studies that scrutinized nearly 200,000 images across 10,000 websites, Sam Goree, a PhD Student in Informatics at the Indiana University, and his colleagues Bardia Doosti, David Crandall, and Norman Su found that across three metrics – color, layout and AI-generated attributes, the average differences between websites in declining, which the academics claim confirms their suspicions that websites are becoming more similar.
As for what can be made of this creeping conformity, they say that “adhering to trends is totally normal in other realms of design, like fashion or architecture,” and so, it makes sense for companies to look to – and adopt – the same design trends when it comes to their websites. (In furtherance of the Instagram aesthetic, for example, a large pool of buzzy direct-to-consumer brands have drawn from “a relatively small set of design codes” to attract millennial consumers.)
At the same time, “The use of software libraries – which feature collections of generic code for common tasks, like resizing a page for mobile devices or making a hamburger menu slide in and out – has increased a lot, thereby, explaining some of the commonality among sites that use certain less-flexible libraries,” per Goree. This is also true given that no shortage of companies use the same e-commerce or other website platforms, whether it be WordPress or Shopify, etc.
Ultimately, the fact that websites are “morphing into uniformity,” as Goree and co. put it, could mean two things: (1) it give rise to more website-centric trade dress lawsuits like the one at hand, and (2) it could make it even more difficult for companies to successfully argue that the elements of their websites taken together are able to act as identifiers of source. As such, companies will likely want to keep these considerations in mind if/when they build – or rebuild – their sites. Developing case law in this arena should also prove telling going forward.
The case is 1-800 Contacts, Inc. v. Jand, Inc. d/b/a Warby Parker, 1:21-cv-06966 (SDNY).
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