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Merck & Co. Inc. v. Mediplan Health Consulting Inc.

The U.S. District Court for the Southern District of New York held that the purchase of keyword advertising triggered by a trademarked term is not an actionable "use in commerce" (Merck & Co. Inc. v. Mediplan Health Consulting Inc. (SDNY Mar. 30, 2006). Federal law provides that a mark is "used in commerce" (15 U.S.C. 1127 (1)) in connection with services "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce" (15 U.S.C. 1127 (2)). According to the court "the ZOCOR mark is used only in the sense that a computer user's search of the keyword "ZOCOR" will trigger the display of sponsored links to defendant's website. This internal use of the mark "ZOCOR" as a key word to trigger the display of sponsored links is not use of the mark in a trademark sense."  The Court found further support for its decision in the fact that "defendants actually sell Zocor (manufactured by Merck's Canadian affiliates) on their websites.  Under these circumstances, there is nothing improper with defendants' purchase of sponsored links to their websites from searches of the keyword "Zocor."

So, simply put the Merck case is directly contrary to the Edina Realty case on the question of whether purchasing a competitor's trademark as a keyword constitutes use in commerce.  Upon a motion to reconsider and review the Edina Realty opinion, the Merck court reaffirmed its ruling dismissing the mark owner's trademark infringement claims. Merck., F.Supp.2d, 2006 WL 1418616 (S.D.N.Y. May 24, 2006).

Two lower courts have ruled that use of a trademarked term to trigger ads is "use in commerce." See Government Employee Ins. Co. v. Google Inc., 330 F.Supp.2d 700 (E.D. Va. 2004) and Google Inc. v. American Blind and Wallpaper Factory Inc. (N.D. Cal. March 30, 2005).

Also see:

Merck & Co. Inc. v. Mediplan Health Consulting Inc., Decision of April 7, 2006, U.S. District Court Southern District of New York




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