UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT LERNER & ROWE PC, an Arizona No. 23-16060 corporation, D.C. No. 2:21-cv- Plaintiff-Appellant, 01540-DGC

v. OPINION BROWN ENGSTRAND & SHELY LLC, DBA Accident Law Group, an Arizona corporation; JOSEPH L. BROWN, an individual,

Defendants-Appellees, and DOES, 1-10, inclusive,

Defendant.

Appeal from the United States District Court for the District of Arizona David G. Campbell, District Judge, Presiding

Argued and Submitted May 14, 2024 Phoenix, Arizona

Filed October 22, 2024 2 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

Before: Roopali H. Desai and Ana de Alba, Circuit Judges, and Edward M. Chen, * District Judge.

Opinion by Judge de Alba; Concurrence by Judge Desai

SUMMARY **

Lanham Act

The panel affirmed the district court’s grant of summary judgment in favor of defendants in a trademark infringement action under the Lanham Act. Plaintiff Lerner & Rowe, PC, a personal injury law firm based in Arizona, had three registered trademarks, including the name “Lerner & Rowe.” In a strategy known as “conquesting,” defendant Brown, Engstrand & Shely, LLC, doing business as The Accident Law Group, or ALG, purchased the term “Lerner & Rowe” as a Google Ads keyword. The panel affirmed the district court’s grant of summary judgment on Lerner & Rowe’s trademark infringement claim on the ground that Lerner & Rowe failed to establish that ALG’s use of the mark was likely to cause consumer confusion. The panel concluded that the strength of the

* The Honorable Edward M. Chen, United States District Judge for the Northern District of California, sitting by designation. ** This summary constitutes no part of the opinion of the court. It has been prepared by court staff for the convenience of the reader. LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC 3

mark weighed in favor of Lerner & Rowe. But the de minimis evidence of actual confusion weighed in favor of ALG, as did the reasonably prudent consumer’s degree of care and the labeling and appearance of ALG’s advertisements. And other factors did nothing to change the panel’s conclusion that Lerner & Rowe failed to establish a genuine dispute of material fact regarding the likelihood of confusion element of a claim for trademark infringement. Concurring in the majority opinion in full, Judge Desai wrote separately to urge the court to reconsider en banc the holding of Network Automation, Inc. v. Advance Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011), that keyword bidding and purchasing constitutes a “use in commerce,” which is required to show a likelihood of confusion under the Lanham Act.

COUNSEL Andrew Gaggin (argued), Lerner & Rowe PC, Tucson, Arizona, for Plaintiff-Appellant. Maria C. Speth (argued) and Aaron K. Haar, Jaburg Wilk PC, Phoenix, Arizona, for Defendant-Appellee. 4 LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC

OPINION DE ALBA, Circuit Judge:

“What’s in a name?” WILLIAM SHAKESPEARE, ROMEO AND JULIET act 2, sc. 2, l. 46. According to Juliet Capulet, not much. Romeo Montague’s last name, though charged with meaning, does not confuse her about who he is. In this keyword advertising trademark dispute, the district court saw most consumers as discerning Juliets. Appellant, however, likens them to the larger Capulet clan, a group more prone to confusion. As explained below, we disagree and affirm the district court’s grant of summary judgment. I. Factual and Procedural Background Appellant Lerner & Rowe, PC (“Lerner & Rowe”), and Appellee Brown, Engstrand & Shely, LLC—which does business as Th