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
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).