Background
Deltona Transformer Corporation makes vehicle-battery chargers that charge batteries and then maintain a full charge without overcharging them. It owns federally registered trademarks for “Battery Tender” and “Deltran Battery Tender.” Deltona alleged that competitor The NOCO Company infringed those marks by bidding on them as Amazon search keywords, using “battery tender” in advertisements and product descriptions, and referring to NOCO chargers as battery tenders in communications with customers and marketing firms.
A jury found for Deltona on its federal and state trademark and unfair-competition claims, also found false advertising under the Lanham Act, and awarded $1.3 million in actual damages and $5.75 million in punitive damages. After a bench trial on equitable relief, the district court ordered NOCO to disgorge $12,135,943.70 in profits and permanently enjoined it from using “Battery Tender,” “Deltran Battery Tender,” “Deltran,” or “Tender” to sell, market, advertise, or promote its products. NOCO appealed the liability rulings, remedies, and denial of its post-trial motions.
The Court’s Holding
The Eleventh Circuit held that sufficient evidence supported the jury’s findings that Deltona’s marks were protectable and that NOCO infringed them. The marks were not inherently generic, and a reasonable jury could find that “battery tender” was at least descriptive and had acquired secondary meaning. The court also upheld infringement liability based on NOCO’s visible use of the marks in advertisements and product descriptions and its communications portraying its products as battery tenders.
The court held, however, that merely purchasing a competitor’s trademark as an invisible search-advertising keyword does not constitute infringement because diversion alone, without likely consumer confusion, is insufficient. It also held that Deltona could not recover FDUTPA damages for reputational or goodwill injuries, which were consequential rather than actual damages under Florida law, and reversed the false-advertising verdict because that distinct claim was neither adequately pleaded nor tried by consent. Because the jury awarded $1.3 million as an undifferentiated lump sum that might include those invalid theories, the court vacated that award and remanded for a new damages trial. It nevertheless affirmed the disgorgement order and permanent injunction, including the prohibition on using “Tender,” based on NOCO’s willful conduct and the need to prevent circumvention.
Key Takeaways
- Purchasing a competitor’s trademark as a behind-the-scenes advertising keyword, without displaying or otherwise referencing the mark, does not by itself constitute trademark infringement in the Eleventh Circuit.
- Visible use of a protected mark in advertisements, product descriptions, or customer communications may support infringement liability when it is likely to confuse consumers about the product’s source or identity.
- A lump-sum damages award must be retried when the reviewing court cannot determine how much rests on legally invalid claims or theories.
Why It Matters
The decision establishes the Eleventh Circuit’s rule for keyword advertising: competitors may bid on trademarked search terms to present clearly identified alternatives, but they may incur liability if the resulting advertisements or product pages visibly use the mark in a confusing manner. The distinction turns on what consumers encounter, not the unseen mechanism that triggered the advertisement.
The opinion also underscores the importance of separately pleading Lanham Act false-advertising claims and using verdict forms that allocate damages among claims and theories. Although Deltona preserved its core infringement victory and equitable remedies, the undifferentiated verdict required a new damages trial after several bases for recovery were rejected.