There is a new wave of litigation and one of those waves has to do with using a term or “keyword” that is a trademark of another, anywhere on the backend of your site, but easily discovered in full view with Google AdWords.
Google offers you the ability to pay for position by purchasing “keywords.” Recently there has been an infringement of companies purchasing other companies names.
However, the court found that where competitor’s trademarks are key words in generating paid-placement for search results Google’s “use” of the word is merely for indexing purposes rather than identifying and the aggrieved trademark owners were not violated.
Note the case for Binder and Binder who are disability attorneys running national leel media and commercials, where Binder was awarded $292,000 for the violation in the state of California, where Binder did win on the violation of keywords, however this is the exception to the courts reluctance to apply The Trademark Infringement Doctrine to cases that are not ironclad infringements.
Here are the landmark cases in a nutshell.
Rosetta Stone Ltd v. Google Inc. – In this case Rosetta Stone Ltd (the maker of the language program) claimed that others were able to beat the system by using Rosetta Stone for counterfeit Rosetta Stone products and therefore they sued Google for the infringement of deceptive and contributory trademark infringement. Rosetta Stone argued that no one should be able to open an account and bid on the trademark “Rosetta Stone.” Read a great analysis by Attorney Ron Coleman, in New York on the Likelihood of Confusion.
Rescuecom Corp v Google Inc. – You know that “keyword suggestion tool?” That is the one that gives you ideas for searches and many of those keywords are paid-advertisement. In this case the court ruled that, the inclusion of a trademark within and internal computer directory did not constitute as trademark infringement by Google. Rescuecom Corp. v. Google Inc., 562 F.3d 123, 127, 129 (2d Cir. 2009)
The Wenu Cases – The Company owns 1-800contacts.com, (also the company name); this case is over a teledotcom.
A teledotcom is a domain name that spells out a word, usually a brand and has a matching toll free number. In other words, the phone number is the brand name. So if this is the name of the company and you use 1-800-COMPANY NAME and someone else has that company name as a .com (dot-com) is it an infringement?
What does the court say? You have to prove it and prove it good; in the Wenu cases 1-800CONTACT.com remains.
Binder v Disability Group Inc. – Binder v. Disability Group, Inc., 2011 U.S.Dist. LEXIS 7037 (C.D. Cal, 2011) Disability Group used “Binder and Binder” a trademark, in their keywords purchase. Binder won the case and Disability Group was ordered to discontinue the use and pay $292,000 to Binder.
Google did not win these cases hands down and they have changed their policies to become more proprietary. Google will respond to keyword complaints and thety will remove the problem if notified with exception of text that is descriptive or generic or by a reseller information provider.