Trademark holders, start your engines! - Internet search engine that is. After the Second Circuit's decision in Rescuecom Corp. v. Google Inc., trademark holders may finally be able to go after entities like Google for trademark infringement. Don't race off to the courthouse just yet though. Taking the facts alleged in the complaint as true (as required on the appeal of a 12(b)(6) motion), the Rescuecom court found that Google's sale of Rescuecom's mark to its competitors as an Internet search term constituted a "use in commerce" sufficient to state a claim under the Lanham Act. However, Rescuecom can only succeed on that claim if it can prove that Google's use of its trademark is likely to cause confusion.
Rescuecom's claims arose out of the way Google sells ads. Google identifies important Internet search terms and then sells them to its advertisers as "keywords." An advertiser's purchase of a particular keyword causes the advertiser's ad and link to be displayed (along with other results) on the user's screen after the term is entered into the Google search engine. Google gets paid when the user clicks on the link to connect to the advertiser's Web site. Google uses a Keyword Suggestion Tool to help advertisers identify terms that consumers are likely to use when doing searches related to the advertiser's areas of commerce. Google used its Keyword Suggestion Tool to sell Rescuecom's mark to Rescuecom's competitors.
In its complaint, Rescuecom claimed the Google advertising system infringed its trademark rights. Relying on the decision in 1-800 Contacts, Inc. v. WhenU.com., Inc, the lower court dismissed Rescuecom's complaint for failure to state a claim on the grounds that Rescuecom did not show Google's "use in commerce" of its mark. Reversing, the Second Circuit stated that the 1-800 decision was never intended to stand for the proposition that the use of a trademark in an internal software or computer directory would always be insulated from consideration of "use in commerce" and trademark liability.
Rather, because Google displays and offers Rescuecom's mark to its advertising customers when selling its advertising services and actually recommended and sold Rescuecom's trademark to advertisers, "use in commerce" sufficient to satisfy the requirements of the Lanham Act occurred. The court said nothing about the medium where the mark is in use changes that, and any other reading of the "use in commerce" language violates logic and the intent of the trademark laws. (The court also authored a lengthy "dicta" appendix addressing the confusion surrounding the term "use in commerce" in trademark cases.)
Trademark holders may want to wait out the rush to gain front-runner status after Rescuecom. There's a myriad of uncertainties left to be decided in the remanded Rescuecom litigation. In order to succeed on its trademark infringement, Rescuecom will need to show that consumers are likely to believe, mistakenly, that the ads or Web sites generated from Google's keywords are sponsored by, or affiliated with Rescuecom. How well Rescuecom meets that challenge - along with the individual circumstances of any trademark infringement litigation under contemplation - will determine whether such follow-on litigation unnecessarily "jumps the gun."
The best bet for the long run when it comes to Rescuecom inspired trademark infringement litigation? Whether pursuing or defending a claim, "Get Set" by seeking the advice of experienced intellectual property counsel before giving your battle "Go!"
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