Section 43(a) Archives

Keyword bidding alone doesn’t constitute trademark infringement

Addressing trademark infringement arising from online advertising, the US Court of Appeals for the Eleventh Circuit held that purchasing a competitor’s trademark as a keyword (keyword bidding), without displaying or otherwise referencing the mark in the resulting advertisement, does not constitute trademark infringement because the behind-the-scenes use is not likely to confuse consumers. The Court nevertheless upheld the jury’s infringement finding based on the defendant’s visible use of the protected mark in advertising copy, product descriptions, and customer communications. Deltona Transformer Corporation v. The NOCO Company, Case No. 24-13590 (11th Cir. Aug. 4, 2026) (Lagoda, Kidd, Newsom, JJ.)

Deltona Transformer Corporation manufactures vehicle battery chargers that charge a battery to capacity and then maintain the charge without overcharging it. Deltona owns federally registered trademarks for BATTERY TENDER and DELTRAN BATTERY TENDER. One of Deltona’s founders coined the term “battery tender,” drawing on the maritime use of “tender” for a vessel that services or supplies another vessel.

The NOCO Company makes similar battery chargers. Beginning in 2014, NOCO promoted its products using “battery tender” in several ways, including bidding on the term as a search keyword, placing the term in advertisements and product descriptions, and referring to its products as battery tenders in communications with customers and marketing firms. Deltona sued for federal and state trademark infringement and unfair competition. A jury found for Deltona and awarded damages, and the district court later ordered disgorgement of NOCO’s profits and entered a permanent injunction. NOCO appealed.

NOCO first argued that Deltona’s marks were generic and therefore unprotectable. The Eleventh Circuit disagreed. Federal registration provided prima facie evidence of validity, and the Court concluded that “battery tender” was at least descriptive (and potentially suggestive) because “tend” metaphorically rather than literally describes what the charger does. The Court further concluded that a reasonable jury could find secondary meaning based on Deltona’s decades of use, advertising, promotion, and industry recognition.

The Eleventh Circuit also rejected NOCO’s argument that “battery tender” had subsequently become generic. Although NOCO introduced survey evidence indicating that many respondents understood the term as identifying a type of product rather than a brand, the survey was not conclusive, and the jury was entitled to weigh it against the remaining evidence supporting trademark significance.

Turning to infringement, the Eleventh Circuit addressed for the first time whether purchasing another party’s trademark as an online advertising keyword can itself constitute infringement. The Court concluded that it cannot in circumstances such as those presented here. Keyword bidding occurs “behind the scenes,” meaning consumers do not see the purchased keyword and instead see the resulting advertisement. Accordingly, likelihood of confusion depends on what the consumer sees in the advertisement, not on the invisible mechanism that caused the advertisement to appear.

The result was different where NOCO visibly used Deltona’s marks. NOCO used “battery tender” and similar language in the text of advertisements, including advertisements describing NOCO products as battery tenders. The Eleventh Circuit found sufficient evidence for the jury to conclude that these uses were likely to [...]

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What a Croc! False Claim That Product Feature Is Patented Can Give Rise to Lanham Act Violation

The US Court of Appeals for the Federal Circuit reversed and remanded a grant of summary judgment on a false advertising claim, concluding that a cause of action under Section 43(a) of the Lanham Act can arise when a party falsely claims to hold a patent on a product feature and advertises that feature in a misleading way. Crocs, Inc. v. Effervescent, Inc., Case No. 2022-2160 (Fed. Cir. Oct. 3, 2024) (Reyna, Cunningham, JJ.; Albright, District J., sitting by designation).

Crocs, the well-known maker of molded foam footwear, sued several competitor shoe distributors for patent infringement in 2006. The case was stayed pending an action before the International Trade Commission but resumed in 2012 when Croc added competitor U.S.A. Dawgs as a defendant to the district court litigation. The case was stayed twice more, from 2012 to 2016 and 2018 to 2020. In between those stays, in May 2016, Dawgs filed a counterclaim against Crocs and 18 of its current and former officers and directors, alleging false advertising violations of Section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a). The individual defendants were later dismissed from the action.

Dawgs claimed that Crocs deceived consumers and damaged its competitors by falsely describing its molded footwear material, which it calls “Croslite,” as “patented,” “proprietary,” and “exclusive.” Dawgs alleged that it was damaged by Crocs’ false advertisements and commercial misrepresentations because Crocs suggested that its competitors’ footwear material was inferior. Croslite is in fact not patented, as Crocs conceded.

Crocs argued in its motion for summary judgment that Dawgs failed as a matter of law to state a cause of action under Section 43(a) because the alleged advertising statements were directed to a false designation of authorship of the shoe products and not to their nature, characteristics, or qualities, as Section 43(a)(1)(B) requires. The district court agreed. Applying the Supreme Court’s 2003 decision in Dastar Corp. v. Twentieth Century Fox Film Corp. and the Federal Circuit’s 2009 decision in Baden Sports, Inc. v. Molten USA, Inc., the district court granted summary judgment to Crocs. It reasoned that falsely claiming to have “patented” something is similar to a false claim of authorship or inventorship, not to the types of false advertising prohibited by the Lanham Act. Dawgs appealed.

Dawgs argued that the district court’s application of Dastar and Baden to the circumstances of its case was inapposite, and the Federal Circuit agreed. In Dastar, the petitioner copied a television series in the public domain, made minor changes, and sold it as a video set, passing it off as its own. The Supreme Court held that a false claim of authorship does not give rise to a cause of action under the Lanham Act. Similarly, in Baden, the Federal Circuit found that a basketball manufacturer’s false suggestion that it was the author of the “innovative” “dual-cushion technology” in its basketballs did not give rise to a false advertising claim under the Lanham Act.

In this case, however, the Federal Circuit reasoned that Croc’s false [...]

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