In ZW USA, Inc. v. PWD Systems, LLC, plaintiff ZW is the owner of federal registrations for the trademarks ONEPUL and ZEROWASTE for doggie waste disposal bags. Defendant PWD also sells doggie waste disposal bags under the name BagSpot, and uses the phrase “one-pull” to describe some of its products. ZW sued PWD, alleging infringement of its ONEPUL mark.
In support of its infringement claim, ZW pointed to PWD’s purchase of the Google Adword “zerowaste,” another of ZW’s federally registered trademarks for doggie waste disposal bags. ZW argued that PWD’s use of a phrase allegedly similar to one ZW trademark, and purchase of an adword identical to another ZW trademark — all to advertise the same goods that ZW sold — demonstrated PWD’s bad faith in adopting the “one-pull” phrase in its marketing.
The Eighth Circuit disagreed. In holding that PWD did not infringe ZW’s ONEPUL trademark, the court said PWD’s purchase of the “zerowaste” adword “might be relevant if we were analyzing [alleged infringement of] a ‘zerowaste’ trademark, but the issue in this case is the likelihood of confusion between ZW’s ONEPUL mark and PWD’s product description.” Since the adword PWD purchased was different from the trademark ZW claimed was infringed, the court found that PWD’s purchase of “zerowaste” as an adword constituted “only minimal evidence that PWD intended to do anything but fairly compete with ZW in the dog-waste disposal industry.” The decision demonstrates a broader acceptance of keyword advertising as acceptable competition in the eyes of federal courts.