“Texas Hammer” has second chance to nail referral center for trademark infringement

As recently reported, the 5th U.S. Circuit Court of Appeals has revived a Texas lawyer’s trademark lawsuit against a personal injury referral centre over an alleged search-engine “bait-and-switch” scheme.

The plaintiff, personal injury lawyer Jim Adler, alleges that McNeil Consultants, doing business as the Accident Injury Legal Center, mislead consumers by purchasing Google keyword ads for his trademarks.

Adler’s marks include “Jim Adler,” “The Hammer,” “The Texas Hammer,” and “El Martillo Tejano”. In his pleading, Adler alleges that when users type Adler’s marks into Google, a “click-to-call” advertisement for McNeil’s services appears. If a user clicks on one of those ads while using a cellphone, it automatically launches a phone call to the personal injury centre.

Previously, the district court adopted the conclusion of a magistrate judge, who had found Adler’s allegations conclusory, and dismissed Adler’s suit for failure to state a claim. In reversing the district court, the 5th Circuit held that Adler’s allegations were sufficient. The 5th Circuit further observed that the case involves initial interest confusion, which has never been addressed in the context of search-engine advertising and which requires a fact-specific inquiry.

Author: Luke Devine, 2021/2022 Articling Student-at-law