Warby Parker is looking to tap into the pool of millions of customers that 1-800 Contacts has amassed as a result of more than a decade in business and hundreds of millions of dollars worth of advertising, marketing, and promotion, the contacts company argues in the new trademark infringement and unfair competition lawsuit that it filed this week.
Specifically, 1-800 Contacts alleges that in light of its relatively low consumer recognition for contacts, and instead of independently developing its own brand awareness related to the online sales of contacts, direct-to-consumer pioneer Warby Parker has devised a plan to confuse and mislead consumers who seek to go to 1-800 Contacts online store” by buying up 1-800 Contacts search keywords and linking them to a website that “intentionally mimics the look and feel of 1-800 Contacts website, including through the use of a confusingly similar colour scheme, layout, and discount offering, along with imagery evoking the 1800contacts.com website.
The case is the latest in a running list of trademark actions initiated by 1-800 Contacts against competitors for bidding on its trademark-protected name as a keyword, settling a large majority of those cases, and giving rise to the Federal Trade Commission taking on the contacts company on the basis that some of the restrictions in 1-800 Contacts’ settlement agreements unfairly restricted competitors’ search advertising practices.
Just like in the Daily Harvest case, which settled less than a year after it was filed, if 1-800 Contacts’ history is any indication, this case will settle out of court, too. Nonetheless, both cases are striking, as they drive home the point that many companies’ most valuable components are not necessarily the products, themselves, but branding-specific assets, including “distinctive” e-commerce sites that they use to sell those products.
As noted in connection with the Daily Harvest case, this emphasis on branding is, of course, not new to or exclusive to DTC players, and in the DTC space, the products, themselves, certainly are not irrelevant. At the same time, though, it is difficult to ignore the fact that one of the key distinguishing factors for many of these DTC companies is not necessarily earth-shattering, impossible-to-get-elsewhere products, but the branding – and marketing – and related elements at play.