Bidding on a Competitor's Trademark Is Not Infringement. What You Put in the Ad Still Is.

The short answer

On August 4, 2026, the Eleventh Circuit held that buying a competitor's trademark as a search keyword cannot by itself support an infringement claim, because consumers never see the purchase. It affirmed a disgorgement award of more than $12.1 million on the visible uses, reversed a false advertising verdict that had never been pleaded, and vacated the actual damages award. All three holdings are useful, and the reason for each is worth understanding.

Why it comes up

Competitive keyword advertising is standard practice and it generates a steady stream of demand letters. Businesses receive them, panic, and either stop a lawful practice or keep doing something genuinely unlawful because the letter did not distinguish between the two.

What the court held

The case arose from a dispute over the mark "Battery Tender," tried in the Middle District of Florida.

On keyword bidding. Purchasing a competitor's mark as an invisible ad keyword is not infringement standing alone. The consumer never sees the purchase, only the resulting advertisement. Visible use of the mark in the resulting listings and advertisements was infringing.

On genericness. The mark was not generic. Registration created a presumption of validity, and the record showed descriptiveness plus secondary meaning.

On disgorgement. The court affirmed $12,135,943.70 on a finding of willfulness, resting heavily on the defendant's internal communications acknowledging that it could not use the mark in its messaging.

On false advertising. The verdict was reversed because the theory was never pleaded and the defendant never consented to try it.

On actual damages. The award of roughly $1.3 million was vacated because the lump sum could not be separated from theories that had now failed.

Our take: the money came from the emails

The disgorgement figure is the part that will get attention, and the reason for it is the part worth acting on. Willfulness was established by the defendant's own internal communications. The company knew it could not use the mark and used it anyway, and it wrote that down.

That is how nearly every large trademark award happens. Liability is usually a close question. Willfulness usually turns on a document. It is not a precondition to disgorging the infringer's profits: in Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), the Supreme Court held that a plaintiff need not show willful infringement to obtain a profits award under 15 U.S.C. 1117(a) for a section 1125(a) violation. The defendant's mental state remains a highly important equitable consideration, and in practice it is decided by what is in the emails. Any business running a competitive advertising program should assume that its internal discussion of a competitor's mark will be read to a jury.

Two other lessons are less dramatic and more likely to matter to an ordinary case.

Plead your theories separately. A false advertising claim under a different subsection of the statute is a different claim from infringement. Trying it by implication and winning is not the same as pleading it, and the Eleventh Circuit will not save it.

Do not put your damages theories in one bucket. A single lump sum that depends on four theories dies if one of them fails. Ask for separate findings.

What it means practically

For a brand owner: keyword bidding by a competitor is not, by itself, a case in this circuit. Look at what the resulting ad says. That is where the exposure is.

For an advertiser: your keyword program is probably defensible. Your ad copy and your marketplace listings may not be, and your internal emails about the competitor are the highest-risk documents in the file.

When to call a lawyer

On receipt of a keyword advertising demand letter, before changing a lawful program or continuing an unlawful one, and before any internal discussion of a competitor's brand is committed to writing.

Sources

●      Deltona Transformer Corp. v. The NOCO Co., No. 24-13590 (11th Cir. Aug. 4, 2026), via Justia

Disclaimer

This post discusses publicly reported legal developments for general informational purposes. It is not legal advice, it does not create an attorney client relationship, and it does not reflect the firm's position in any pending matter. Outcomes depend on the specific facts and the governing law of the relevant jurisdiction.