Bidding on a Competitor’s Trademark Is Not Infringement — Using It in Your Ad Is: The Eleventh Circuit’s Decision in Deltona Transformer Corp. v. The NOCO Company

If you own a brand and sell online, you have almost certainly typed your own trademark into Amazon or Google and watched a competitor’s “Sponsored” listing appear above your own products. The question every trademark owner then asks is a simple one: can they do that? On August 4, 2026, the United States Court of Appeals for the Eleventh Circuit—the federal appellate court whose decisions bind the federal courts in Florida, Georgia and Alabama—gave its first definitive answer in Deltona Transformer Corp. v. The NOCO Company, No. 24-13590, 2026 WL 2236806 (11th Cir. Aug. 4, 2026).

The short version is that the answer is “it depends on where the mark shows up.” Purchasing a competitor’s trademark as a search-advertising keyword, standing alone, is not trademark infringement in the Eleventh Circuit. But putting that trademark into the visible text of an advertisement, into a product description, or into what your sales team tells customers is what the court called “wheelhouse trademark infringement”—and in this case it supported a jury verdict, a disgorgement award of more than $12 million, and a permanent injunction that reaches even a word the plaintiff never registered.

This post walks through the facts, each of the court’s holdings, and what the decision means in practice. It closes with concrete recommendations on how trademark owners should monitor, report and enforce against unauthorized use of their marks in paid online advertising.

For background on how we help clients build and protect a trademark portfolio, see our Trademark Matters summary; for how we handle disputes once they arise, see our Litigation & Enforcement summary.

The Facts: “Battery Tender” and a Competitor Who Called Its Products the Same Thing

Deltona Transformer Corporation has made “smart” vehicle-battery chargers since the early 1990s. Its chargers charge a battery to full and then hold the charge without overcharging—they “tend” the battery. Deltona’s co-founder named the products “Battery Tenders” as a nod to his Merchant Marine service in World War II, where small boats called “tenders” ferried supplies to larger ships. Deltona invested for decades in the name: trade shows, television and magazine advertising, sponsored race teams and fishing boats, private-label chargers for Harley-Davidson, and co-branding arrangements with Lotus, Lexus and AAA. It has owned the federal registration for BATTERY TENDER since 2008 and DELTRAN BATTERY TENDER since 2013. By 2014, it was selling more than a million units a year, and its CEO had become known in the industry as “Mr. Battery Tender.”

The NOCO Company entered the battery-charger market in 2009 and, beginning in 2014, started promoting its own chargers as “battery tenders.” The Eleventh Circuit grouped NOCO’s conduct into four categories, and the distinction among them drives the entire opinion:

• Keyword bidding. NOCO paid Amazon to display NOCO’s ads whenever a shopper searched for “battery tender” or similar terms.
• Ad text. NOCO’s own Amazon ads used the mark in their visible copy: “The most advanced battery tender for any vehicle,” “More than just a Battery Tender—zero overcharge,” “The Winter Battery Tender with Zero Overcharge,” and “More Than Just A Tender. The Ultimate Charger.”
• Product descriptions. In the lead-up to Amazon Prime Day, NOCO inserted “battery tender” into the product-description text of its listings—a way, the district court found, to drive search traffic to NOCO’s listings without paying for keywords, which were far more expensive during Prime Day.
• Customer and marketing communications. NOCO’s president told a digital marketing firm that “battery tender” was “a generic word now”; a sales manager emailed a prospect that “most customers usually refer to the function … than the actual brand”; a support-chat representative told a consumer that “Battery Tender is a specific brand, but ‘a battery tender’ is a maintainer for your batteries”; and NOCO’s Vice President of Sales admitted his team routinely called NOCO’s products “battery tenders” knowing the term was trademarked.

Deltona sent a cease-and-desist letter each time it found an infringing ad, and each time NOCO took the ad down. After the fourth letter NOCO petitioned the Trademark Trial and Appeal Board to cancel Deltona’s registrations (that proceeding has been suspended pending this litigation). NOCO’s own internal communications, introduced at trial, were damaging: one employee wrote that “[w]e cannot use Battery Tender in our messaging as it will cause a legal issue, trademark infringement,” and in a brainstorming session NOCO’s marketers chose the “Winter Battery Tender” slogan precisely because it was “kind of passive aggressive” and would provoke Deltona. Deltona also offered evidence of actual confusion, including a retailer that mistakenly sent NOCO an inquiry about Deltona’s product and a consumer left “very confused” after a NOCO employee described NOCO’s product as a battery tender charger.

Deltona sued in the Middle District of Florida for trademark infringement under Section 32 of the Lanham Act, unfair competition and false designation of origin under Section 43(a), common law trademark infringement, and unfair competition under the Florida Deceptive and Unfair Trade Practices Act (FDUTPA). The jury found for Deltona on every count, awarded $1.3 million in actual damages for harm to reputation and goodwill, and—finding intentional misconduct by clear and convincing evidence—awarded $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 even the standalone word “Tender” in marketing its products. NOCO appealed nearly everything, except for the punitive damage award.

Holding One: “Battery Tender” Is Not Generic

NOCO’s threshold argument was that “battery tender” is simply the generic name for a category of battery-charging device, and therefore cannot be a trademark at all—or, alternatively, that it had become generic by 2020. Judge Newsom, writing for a unanimous panel, rejected both arguments.

The opinion is a useful refresher on the distinctiveness spectrum. Marks are classified as generic, descriptive, suggestive, arbitrary or fanciful. Generic terms (“welding services,” “liquor store”) are never protectable. Descriptive terms (“vision center”) are protectable only if they acquire secondary meaning: consumers have come to associate the term with a particular producer, as with “American Airlines.” Suggestive, arbitrary and fanciful marks (“penguin” for refrigerators; “Kodak”; “Xerox”) are inherently protectable.

Two things saved Deltona’s marks. First, federal registration is “prima facie evidence of the validity of the registered mark” under 15 U.S.C. § 1057(b), which the court said “puts a heavy thumb on the scale against genericness.” Second, the court found that “tend” is a metaphor rather than a literal description of what the product does, which makes “battery tender” at least descriptive and possibly suggestive. Because Deltona’s founder “made up” the term, it was not accurate to say it had referred to a kind of device “from the very beginning.” Thirty years of use, heavy promotional investment, co-branding with well-known companies, and industry recognition of “Mr. Battery Tender” supported the jury’s finding of secondary meaning.

NOCO also offered a consumer survey in which 78% of 558 respondents said they believed “Battery Tender” was a type of product rather than a brand. The court held the jury was free to reject the survey because Deltona had attacked its methodology—the survey universe included anyone who had been “exposed” to battery tenders by walking past them in a store, rather than actual or prospective purchasers. Notably, the court reaffirmed that a trademark owner in the Eleventh Circuit is not required to commission its own rebuttal survey to defeat a genericness challenge.

Holding Two: Keyword Bidding Alone Is Not Trademark Infringement

This is the holding that will be cited most often. Whether purchasing a competitor’s trademark as a search-advertising keyword can constitute infringement was a question of first impression in the Eleventh Circuit. The district court had allowed the theory to go to the jury on the view that keyword purchases plus “some other evidence of consumer confusion” could suffice. The Eleventh Circuit disagreed and held squarely that keyword bidding “doesn’t” constitute trademark infringement.

The reasoning is grounded in the second element of every infringement claim: likelihood of confusion. The court explained that the use of the plaintiff’s mark for keyword-bidding purposes occurs “behind the scenes.” Consumers do not—and cannot—see the plaintiff’s mark; all they see is the defendant’s ad. Adopting the Ninth Circuit’s formulation from Network Automation v. Advanced Systems Concepts, the court held that likelihood of confusion “turns on what the consumer saw on the screen and reasonably believed, given the context.” A consumer who sees a NOCO-sponsored ad, whether or not it was triggered by a keyword, will recognize the NOCO product as an alternative and is unlikely to mistake it for Deltona’s. In the court’s words:

“To be sure, ads driven by keyword bidding might distract consumers, but they’re not likely to confuse them.… [S]o long as NOCO’s ads don’t hold that company out as selling ‘battery tenders,’ consumers aren’t likely to be confused—just potentially overwhelmed by the presence of alternative products.”

The court analogized the situation to a shopper who walks into a corner store looking for Coke and finds Pepsi on the shelf next to it, or asks a salesperson about a Dell laptop and is told “Dell laptops are great, but have you looked at the new Lenovo?” In each case the consumer is “distracted, but not confused”—and the court said that is equally true whether the marketplace is a brick-and-mortar store or an online platform. With this holding, the Eleventh Circuit joined what it described as the “unanimous consensus” of the Second, Fifth, Ninth and Tenth Circuits: keyword purchases “divorced from the text of the resulting ads” cannot result in a likelihood of confusion, and “[d]istraction is insufficient.”

One practical consequence followed immediately: because 37 of the NOCO ads in the record were displayed as a result of keyword purchases but did not themselves display Deltona’s marks, the court held that any portion of the damages award attributable to those ads “must be reduced.”

Holding Three: The Mark in the Ad Text, the Product Description and the Sales Pitch Is Infringement

Everything changes once the mark becomes visible. The court called NOCO’s use of “battery tender” in the text of its own Amazon ads “wheelhouse trademark infringement.” NOCO argued that because Amazon labels the ads as “Sponsored,” consumers would recognize them as advertisements and not be confused. The court rejected that argument because the ads’ content stated that NOCO sold battery tenders, which it does not—only Deltona does. Combined with the internal evidence that NOCO employees knew they “c[ould] not use Battery Tender in [their] messaging” and green-lit a slogan because it used Deltona’s mark, a reasonable jury could find both likely confusion and an intent to misappropriate Deltona’s goodwill.

The product-description holding deserves particular attention from anyone selling on Amazon, Walmart, eBay or similar marketplaces. NOCO argued that Deltona offered no evidence that any consumer actually scrolled down and read “battery tender” in the product-description text, so there could be no confusion. The court acknowledged that product descriptions are “below the line” and less likely to be read than the ad headline, but identified two reasons the argument failed. First, unlike a keyword, a product description is “on the page”—a webpage featuring a NOCO charger said, in so many words, that it was a battery tender. Second, and more subtly, inserting the mark into the description manipulated the marketplace’s own search algorithm so that a shopper searching for Deltona’s product was steered to NOCO’s listing without the “Sponsored” tag that would at least have signaled a paid placement. In the court’s words, NOCO “impermissibly held itself out in those descriptions as a seller of battery tenders, rather than a provider of alternatives to battery tenders.” That is a meaningful line: it treats invisible-to-the-reader keyword stuffing in listing text differently from invisible-to-the-reader keyword bidding, because the former is a representation about what the product is.

Finally, the court held that NOCO’s communications with customers and marketing firms—repeatedly and deliberately describing “battery tender” as a generic term while knowing it was a registered mark—were themselves conduct a jury could find likely to confuse. Running the seven likelihood-of-confusion factors used in this circuit (strength of the mark, similarity of the marks, similarity of the goods, similarity of trade channels and customers, similarity of advertising media, intent, and actual confusion), the court found that every factor except the relative weakness of a descriptive mark pointed toward confusion. The infringement verdict was affirmed.

Holding Four: FDUTPA Supports an Injunction, but Not Damages for Lost Goodwill

Because a Lanham Act Section 43(a) violation is a per se violation of FDUTPA under Fla. Stat. § 501.203(3)(c), NOCO’s liability under Florida’s consumer-protection statute followed automatically. The remedy did not. FDUTPA’s damages provision, § 501.211(2), allows recovery only of “actual damages,” which Florida courts define as the difference between the market value of the product as delivered and as it should have been delivered. Harm to reputation and goodwill—the theory underlying Deltona’s $1.3 million award—is a consequential damage that is not recoverable under FDUTPA. Deltona was therefore entitled to injunctive relief under FDUTPA, but not monetary relief.

This is a point we regularly address with clients considering a FDUTPA claim alongside Lanham Act claims: the statute is a valuable source of injunctive relief and attorney’s fees exposure, but its damages remedy is narrower than many assume.

Holding Five: The False-Advertising Verdict Was Reversed on a Pleading Technicality

Section 43(a) of the Lanham Act contains two distinct bases of liability: unfair competition or false designation of origin under § 43(a)(1)(A), and false advertising under § 43(a)(1)(B). Deltona’s complaint contained a count titled “Federal False Designation of Origin and Unfair Competition” that cited § 43(a) generally and alleged that NOCO’s use of the marks constituted a “misleading description and representation of fact.” The district court read that language as sufficient to plead false advertising and instructed the jury on it.

The Eleventh Circuit reversed. Read in context, the “misleading description” allegation was simply a description of false designation of origin, and a generic citation to § 43(a) did not signal an intent to plead a separate § 43(a)(1)(B) claim. Nor had the claim been tried by implied consent under Rule 15(b)(2): the evidence Deltona offered (NOCO using “battery tender” in its ads) was equally relevant to the properly pleaded unfair-competition claim, and “introduction of evidence arguably relevant to pleaded issues cannot serve to give a party fair notice that new issues are entering the case.”

The lesson for plaintiffs is unglamorous but important: plead false advertising as its own count, cite § 1125(a)(1)(B) by subparagraph, and identify the specific false or misleading statements about the nature, characteristics or qualities of the goods.

Holding Six: Disgorgement of $12.1 Million and a Broad Injunction Were Proper

Disgorgement of an infringer’s profits is appropriate in the Eleventh Circuit when the defendant’s conduct was willful and deliberate, the defendant was unjustly enriched, or disgorgement is necessary to deter future conduct. The court needed only the first: NOCO’s own internal communications showed it knew it could not use the mark and did so anyway. NOCO’s three challenges to the amount all failed. Its conduct extended well beyond Amazon, so limiting disgorgement to Amazon-traceable profits was not required; Deltona’s own keyword bidding did not give it “unclean hands” because, as the court had just held, keyword bidding is lawful; and Deltona was not estopped by having told NOCO the matter was “closed” after the first cease-and-desist letter, because it closed the matter only because it believed NOCO had stopped, and it followed up with additional letters and eventually suit when NOCO resumed.

The injunction is broad. It bars NOCO from selling, marketing, advertising or promoting its products using “Battery Tender,” “Deltran Battery Tender,” “Deltran” or “Tender,” in any font, case or number. NOCO argued that “tender” alone is not a registered mark and therefore could not be enjoined. The court agreed the injunction was “pretty broad” but affirmed it, relying on the principle that a court of equity fashioning relief against a party who has already transgressed “is free to proscribe activities that, standing alone, would have been unassailable.” Omitting “tender” would have left NOCO free to keep running “More Than Just A Tender. The Ultimate Charger,” a slogan the court found just as likely to confuse as the more explicit ones. The district court had also found that NOCO’s voluntary cessation did not eliminate the risk of future infringement because NOCO had, “after brief interludes, repeatedly returned to infringing.” Notably, the injunction expressly exempts keyword purchases and true comparative advertising—advertising that compares brands on objectively measurable attributes and identifies the competing brand by name.

Holding Seven: The $1.3 Million Damages Award Was Vacated for a New Trial

Deltona’s actual damages award did not survive, though not because Deltona failed to prove harm. The court rejected NOCO’s argument that Deltona, as an IP-holding company that licenses the marks to its former subsidiary Deltran, had no reputation to injure — harm to the goodwill of marks a company owns is harm to the company. The problem was the verdict form. The jury awarded a single lump sum of $1.3 million across five claims: Lanham Act infringement, common-law infringement, Section 43(a) unfair competition, FDUTPA and false advertising. Having held that keyword bidding is not infringement, that FDUTPA damages are unavailable, and that false advertising was never properly in the case, the court could not tell how much of the $1.3 million rested on theories that no longer exist. It vacated the award and remanded for a new trial on damages.

What the Decision Means in Practice

For trademark owners in Florida and throughout the Eleventh Circuit, Deltona draws a bright line that is easy to state and, with the right monitoring, easy to apply. A competitor may buy your trademark as a keyword so that its ad appears when consumers search for you. A competitor may run truthful comparative advertising that names your brand. But, what a competitor may not do is describe its own goods using your mark—in ad copy, in listing titles or descriptions, in metadata that feeds a marketplace’s search algorithm, in chat and email with customers, or in instructions to its marketing agencies. And if it does so knowing the term is your registered mark, it exposes itself to disgorgement of profits, punitive damages under Florida law, and an injunction that may reach terms broader than your registration.

The decision also rewards owners who have invested in registration and in the discipline of trademark use. Deltona’s federal registrations put “a heavy thumb on the scale” against genericness, and its thirty-year record of advertising, sponsorships and co-branding is what established secondary meaning. Owners of descriptive or category-adjacent marks—and the court has confirmed “battery tender” is one—should read the genericness section of the opinion as both reassurance and warning: the survey NOCO commissioned found that nearly four in five respondents thought the term was generic, and the jury’s rejection of that survey turned on a methodological flaw. A better-designed survey might have produced a different result. Therefore, the safe option is to opt farther up in the scale: from suggestive to fanciful.

Practical Recommendations: Monitoring, Reporting and Enforcing Against Unauthorized Use in Paid Online Advertising

The following recommendations reflect the framework Deltona establishes and our experience enforcing trademarks in federal court and before online platforms. They are organized around the three questions clients ask most: how do I find it, whom do I tell, and when do I escalate.

1. Register, and keep using the mark as a mark

Every advantage Deltona enjoyed in this case flowed from its federal registrations. Registration supplies the presumption of validity, is the prerequisite for the platform enforcement programs discussed below, and is what allows a court to treat a genericness challenge with skepticism. If your core brand or product name is unregistered, or registered only at the state level, that is the first gap to close.

Our Trademark Matters page describes our clearance, filing and portfolio-management services, including flat-fee options for U.S. applications.

Registration is not self-sustaining. “Escalator,” “thermos,” “aspirin” and “yo-yo” were all once protected marks that became generic through use. To guard against the argument NOCO made, use the mark as an adjective modifying a generic noun (“Battery Tender® brand battery chargers”), never as a noun or verb; use the ® symbol consistently; correct generic use by dealers, reviewers and the trade press in writing; and keep a file of that correspondence. That file becomes evidence that the primary significance of the term to the public is the producer, not the product.

2. Monitor where paid advertising actually appears

The infringing uses in Deltona lived in three places—sponsored-ad copy, product-listing text, and customer communications—and none of them will be caught by a traditional trademark watch service that monitors USPTO filings. A monitoring program for paid online advertising should include the following:

• Scheduled searches of your own marks on Google, Bing, Amazon, Walmart, eBay, Etsy, Home Depot and any other marketplace where your goods are sold. Search the exact mark, common misspellings, and the mark combined with your top product categories. Do it in a logged-out or incognito session so that personalization does not skew the results, and do it at least monthly—weekly during peak seasons such as Prime Day, Black Friday and industry sales events, which is precisely when NOCO stuffed its descriptions.
• Review ad copy, not just ad placement. A competitor’s ad appearing on your keyword is lawful after Deltona. What you are looking for is your mark in the headline, the description line, the display URL, the extension links, the listing title, the bullet points, and the “below the fold” product description. Open the listing and read all of it.
• Use platform-provided tools. Google’s Ads Transparency Center lets you see the ads any advertiser is running; Meta’s Ad Library does the same for Facebook and Instagram; Amazon Brand Registry’s Report a Violation tool surfaces listings that use your registered text in titles and descriptions. Third-party ad-intelligence subscriptions (SEMrush, SpyFu, iSpionage and similar services) will report which competitors are bidding on your branded terms and archive the copy they use, which is useful evidence of the duration of infringement—the very fact that drove a disgorgement period of more than five years here.
• Monitor what competitors say, not just what they display. Several of the most damaging exhibits in Deltona were a support-chat transcript and sales emails. Reasonable, lawful ways to capture that evidence include monitoring public review sites, forums and social media for competitor statements that your mark is “just a generic term,” and, in appropriate cases and with counsel’s guidance, documented test purchases and inquiries.
• Preserve everything with date, time and URL. Take full-page screenshots or PDF captures that show the browser address bar and date, save the page’s HTML, and where possible capture the result through a neutral archive such as the Internet Archive’s Wayback Machine. Sponsored placements are ephemeral, and a competitor that takes an ad down in response to a letter—as NOCO did four times—will not preserve it for you.

3. Report to the platform first — it is fast, free and creates a record

Each major advertising platform maintains a trademark complaint process that operates independently of, and much faster than, litigation. These programs will generally act on a registered mark appearing in ad text; consistent with Deltona, most will not act on keyword bidding alone.

• Google Ads. Google’s trademark policy prohibits use of a registered trademark in ad text where it is likely to confuse, subject to exceptions for resellers and informational sites. A trademark owner submits a complaint through Google’s trademark complaint form identifying the registration and the offending ads; Google will restrict use of the term in ad text across the account. Keyword use is expressly not restricted.
• Amazon Brand Registry. Enrollment requires a registered (or, in some cases, pending) trademark. Once enrolled, the Report a Violation tool allows you to report listings whose titles, bullets, descriptions or backend search terms use your mark to describe goods that are not yours. Amazon’s Project Zero and Transparency programs add automated and serialization-based protection for owners with significant infringement exposure.
• Microsoft Advertising, Meta, TikTok, Walmart, eBay (VeRO). Each has an analogous intellectual-property report form. The reports are short, but they should be prepared carefully: identify the registration number, quote the specific text, attach the dated capture, and explain in one or two sentences why the use is a source-identifying use rather than a comparative or descriptive reference.

Platform reports serve two purposes beyond the takedown itself. They generate a timestamped record of notice, which is central to proving willfulness later, and they create a pattern. A competitor that has had its ad copy rejected by Google or Amazon and re-launches the same copy under a new campaign or ASIN has supplied you with the “repeatedly returned to infringing” narrative that justified the permanent injunction in Deltona.

4. Send a cease-and-desist letter that is calibrated to the Deltona line

A well-drafted demand letter in the wake of Deltona should be precise about what is and is not being demanded. Demanding that a competitor stop bidding on your mark as a keyword is now a demand the law does not support in this circuit, and including it undermines the credibility of the letter. Instead, the letter should identify the registrations, reproduce the specific ad copy, listing text and communications that use the mark to describe the competitor’s goods, explain that this is the use the Eleventh Circuit condemned, and demand removal, an accounting of the period of use, and written confirmation that the competitor will not resume.

Our Litigation & Enforcement summary describes how we approach these letters for both trademark owners and, when the shoe is on the other foot, for recipients.

Two drafting lessons come directly from the opinion. First, be careful with language that “closes” a matter. Deltona narrowly avoided an estoppel defense because it could show it closed the matter only on the belief that NOCO had stopped. A letter that accepts a takedown should say expressly that the owner reserves all rights, that the reservation extends to any resumption of use, and that the owner will continue to monitor. Second, keep sending letters. Each of Deltona’s four letters produced a takedown; the sequence of letters and resumptions is what the district court and the Eleventh Circuit relied on for willfulness, for the duration of the disgorgement period and for the necessity of a permanent injunction. Silence after the first takedown would have weakened every one of those findings.

5. When a competitor persists, build the case the way Deltona was built

If platform reports and demand letters do not resolve the problem, Deltona offers a template for litigating a paid-advertising case successfully in the Middle and Southern Districts of Florida. The following points are worth incorporating from the outset:

• Plead each claim separately and specifically. Plead Section 32 infringement, Section 43(a)(1)(A) false designation of origin, and—if the competitor’s statements misrepresent the nature or qualities of its goods—a separate Section 43(a)(1)(B) false-advertising count, citing the subparagraph and identifying the statements. Deltona lost its false-advertising verdict, and with it part of its damages award, for want of a separate count.
• Match each claim to the remedy it actually supports. Plead FDUTPA for injunctive relief and, if applicable, attorney’s fees, but do not rely on it for lost-goodwill damages—those belong under the Lanham Act. If the client has suffered measurable lost sales, plead that as “actual damages” under FDUTPA with the market-value theory Florida courts require.
• Separate keyword-triggered ads from mark-bearing ads in discovery and at trial. Because keyword bidding is not infringement, ads that were triggered by keywords but did not display the mark cannot support damages. Organize the exhibits so the jury (and the appellate court) can see which ads bear the mark, and ask the platform in discovery for the underlying campaign data that shows both the keyword and the displayed copy.
• Insist on a verdict form that itemizes damages by claim. The single most avoidable loss in Deltona was the lump-sum verdict. A form that asks the jury to allocate damages among the infringement, unfair-competition, FDUTPA and false-advertising claims would have preserved the award on the affirmed theories.
• Go after internal communications early. NOCO’s virtual brainstorming session, its marketing-agency instructions and its “we cannot use Battery Tender” email were the evidence of willfulness that supported disgorgement of $12.1 million and $5.75 million in punitive damages. Requests for internal messaging, agency correspondence, keyword and copy-approval workflows, and sales-team scripts should be served with the first set of discovery.
• Prepare for the genericness counterattack. A competitor accused of using a descriptive mark will almost always file a cancellation petition, as NOCO did, and commission a genericness survey. Have your own evidence of secondary meaning, including advertising spend, sales, media coverage, co-branding, and unsolicited recognition, assembled before the letter goes out, and retain a survey expert early enough to critique the opposing survey’s universe and design.
• Draft the proposed injunction to close loopholes. Deltona confirms that a court may enjoin terms beyond the registered mark where the record shows the defendant will exploit any gap. Identify the variants, abbreviations and evocative fragments the defendant has actually used and ask that they be included, while carving out keyword purchases and true comparative advertising so the injunction is defensible on appeal.

6. A note for advertisers: what you may still do

Because many of our clients are both trademark owners and competitors of other trademark owners, it bears emphasizing what Deltona permits. You may bid on a competitor’s mark as a keyword. You may run comparative advertising that names the competitor and compares objectively measurable attributes or price. You may truthfully describe your product as an alternative to the competitor’s—the court’s own example was a salesperson saying “Dell laptops are great, but have you looked at the new Lenovo?” What you may not do is describe your product as the competitor’s product, and you should assume that every instruction to your agency, every sales script and every internal chat about the competitor’s brand will one day be a trial exhibit. Advertising and marketing teams should have a short-written policy, reviewed by counsel, on the use of competitors’ marks in copy, listing text, metadata and customer communications.

Conclusion

Deltona Transformer Corp. v. The NOCO Company settles in the Eleventh Circuit a question that has divided district courts for two decades and aligns Florida’s federal courts with the Second, Fifth, Ninth and Tenth Circuits: buying a competitor’s mark as a search keyword is not, by itself, trademark infringement, because consumers never see the mark. At the same time, the decision affirms a $12.1 million disgorgement award and a sweeping injunction against a competitor that put the mark where consumers could see it—in ad copy, in listing descriptions, and in what its salespeople said.

For trademark owners, the message is to focus monitoring and enforcement on visible use rather than on keyword bidding, to register and police the mark so that a genericness challenge fails, and, when litigation becomes necessary, to plead and try the case so that each theory of liability is matched to its own remedy. For advertisers, the message is that the line is clear, and the cost of crossing it knowingly is severe.

If a competitor is using your trademark or trade name in its online advertising, or if you have received a demand letter concerning your own advertising, our attorneys can evaluate the conduct against the Deltona framework and recommend the fastest effective response.

Please visit our Trademark Matters and Litigation & Enforcement pages, or contact us at 305-374-8303.