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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Rescuecom Corp. v. Google, Inc.

456 F.Supp.2d 393 (N.D.N.Y., September 28, 2006)

Search Engine's Sale Of Plaintiff's Trademark As Keyword Held Not To Be Actionable Trademark Use

Federal District Court holds that Google's use of plaintiff's trademark "Rescuecom" as a keyword in Google's "Ad words" program to trigger the display of "sponsored link" advertisements from third party competitors for a fee is not a "trademark use" of plaintiff's mark, as the mark is not being used to identify the source of any goods or services.  The same holds true of Google's use of plaintiff's trademark in its "Keyword Suggestion Tool," in which Google recommends to potential advertisers, including plaintiff's competitors, keywords they may be interested in using, for a fee, as a trigger for the display of their advertising.  Notably the advertisements themselves, which appear along with search results for plaintiff's mark, were not alleged to display plaintiff's Rescuecom mark. 

As a result, the Court grants Google's motion to dismiss trademark infringement, unfair competition and dilution claims brought by plaintiff under the Lanham Act, as such claims require a showing of actionable "trademark use" which, the Court holds, Rescuecom cannot make.  Having dismissed plaintiff's federal claims, the Court declined to exercise pendant jurisdiction over plaintiff's state law claims, including a claim for tortuous interference.

In reaching this result, the District Court elected not to follow decisions reached by the courts in Geico v. Google, 330 F.Supp. 2d 700 (E.D. Va. 2004) and Edina Realty v. MLS Online.com, 2006 WL 737064 (D.Minn., March 20, 2006) which had denied motions to dismiss trademark infringement claims arising out of similar activity.  The Court, instead, followed the path taken by the court in Merck & Co. Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp. 2d 402 (S.D.N.Y. 2006), which dismissed similar claims on the ground, inter alia, that there was no "trademark use."

Google Sells Competitors The Right To Have Listings Displayed In Response To Searches For Plaintiff's Trademark

Plaintiff Rescuecom is a computer service franchise business offering, among other things, computer repair services.  Plaintiff operates a website at Rescuecom.com, at which it does substantial business, and holds a federal trademark registration for its "Rescuecom" mark, under which mark it markets its products and services.

Defendant Google operates the Internet's premier search engine.

The Complaint arose out of Google's alleged use of plaintiff's "Rescuecom" trademark in both its "Adwords" and "Keyword Suggestion Tool."  As alleged in the Complaint, Google offered and sold to third party competitors the right to have links to their sites appear on search result pages triggered by user searches containing plaintiff's mark.  These advertisements appear either to the right, or at the top of the search results page, and are denominated "Sponsored Links."  The third party advertisements were not alleged to contain plaintiff's trademark.  Nor does Google display the mark itself.  Rather, its use of the mark is internal, and unseen by the computer user.  An internal program run by Google triggers the display of advertisements when plaintiff's mark is entered.

The complaint further alleged that Google also included plaintiff's Rescuecom mark in its Keyword Suggestion Tool, thereby suggesting to plaintiff's competitors that they purchase advertisements triggered by plaintiff's mark.

As a result, plaintiff commenced this suit, advancing claims of trademark infringement, unfair competition and dilution under the Lanham Act.

No Actionable Trademark Use 

Relying on the Second Circuit's opinion in 1-800 Contacts v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005) the Court held that to prevail on a claim for trademark infringement, a plaintiff "must establish that (1) it has a valid mark that is entitled to protection under the Lanham Act; and that (2) the defendant used the mark, (3) in commerce, (4) 'in connection with the sale … or advertising of goods or services,' 15 U.S.C. § 1114(1)(a), (5), without the plaintiff's consent. …  Plaintiff must also show that defendant's use of that mark is 'likely to cause confusion…'".

More particularly, held the Court, trademark use, use in commerce, and likelihood of confusion are each separate elements a plaintiff must demonstrate to prevail.  To establish a trademark use, the mark holder must demonstrate the use of its mark as "indicating source or origin."

As Google did not place plaintiff's mark on any goods or services it offered for sale, or in any advertisements offering services for sale, it had not used the mark as a trademark, which mandated dismissal of plaintiff's Lanham Act claims.  This was true, held the Court, even accepting plaintiff's allegations "that defendant is capitalizing on the good will of plaintiff's trademark by marketing it to plaintiff's competitors as a keyword in order to generate defendant's own advertising revenues, that plaintiff's competitors believed defendant is authorized to sell its trademark, or that Internet users viewing the competitors' sponsored links are confused as to whether the sponsored links belong to or emanate from plaintiff …".  The Court held that "none of these facts, alone or together, establish trademark use."

Nor would plaintiff prevail even if it demonstrated that defendant's use diverted users from plaintiff's site, or altered the search results a user receives in response to plaintiff's search request.

Finally, an internal use of plaintiff's mark in software to trigger the display of a competitor's ad, held the Court, such as that at issue, did not constitute a trademark use of plaintiff's mark.  Said the Court:

Defendant's internal use of plaintiff's trademark to trigger sponsored links is not a use of a trademark within the meaning of the Lanham Act, either, because there is no allegation that defendant places plaintiff's trademark on any goods, containers, displays, or advertisements, or that its internal use is visible to the public.

*          *          *

Thus, in the absence of allegations that defendant placed plaintiff's trademark on any goods, displays, containers, or advertisements, or used plaintiff's trademark in any way that indicates source or origin, plaintiff can prove no facts in support of its claim which would demonstrate trademark use.

The Court accordingly dismissed plaintiff's Lanham Act claims, finding each required a showing of trademark use.

Other Courts Have Differing Views

In reaching this result, the Court found support in the decision of the court in Merck & Co. Inc. v. Mediplan Health Consulting Inc., 425 F. Supp. 2d 402 (S.D.N.Y. 2006).  It declined to follow the lead of the courts in either Geico v. Google, 330 F. Supp. 2d 700 (E.D. Va. 2004) or Edina Realty v. MLS Online.com, 2006 WL 737064 (D.Minn., March 20, 2006) which had both denied motions to dismiss trademark infringement claims arising out of similar activity.

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