decision on "Use in Commerce"
In a long awaited
decision, the Second Circuit reversed a lower court’s
dismissal of a case brought by Rescuecom against Google.
Rescuecom alleged trademark violation, because Google -
through its Keyword Suggestion Tool - had recommended that a
Rescuecom competitor use Rescuecom’s trademark as a keyword.
The district court had dismissed the case, accepting
Google’s argument that its use of Rescuecom’s trademark was
internal and not an infringing “use in commerce.”
So far every single
district court outside of the 2nd Circuit found that the
purchasing of a competitor’s keyword to trigger ads at least
constitutes "use in commerce". Every district court in the
2nd Circuit found otherwise, believing this opinion was
compelled by the Second Circuits holding in 1-800 Contacts,
Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir.192005)
(“1-800”). But the 2nd Circuit found these cases to be
materially different. In 1-800, the search term that was
alleged to trigger the pop-up ad was the plaintiff’s website
address, not its mark. Also, the advertiser could not
purchase keywords to trigger their ads. Instead they could
only choose a category. Google on the contrary, had
recommended its advertisers the Rescuecom trademark through
its Keyword Suggestion Tool and sold it as a keyword.
The case is now
going back to the trial court. Rescuecom still has to prove
that Google's use of the trademark in its AdWords program
causes likelihood of confusion or mistake.