By Jay G. Taylor

The Southern District of New York finds that Google's practice of selling a registered trademark as a key word to a competitor of the trademark owner so that a search of the trademark triggers the appearance of a sponsored link to the competitor's website as part of the search results does not constitute trademark use and is not actionable under the Lanham Act. In Rescuecom Corp. v. Google, Inc., 5:04-CV-1055, Chief Judge Norman Mordue concluded that because Google was not using the mark in connection with the sale, offering for sale, distribution or advertising of any goods or services, there was no actionable trademark use within the meaning of the Lanham Act. The court noted that the search results are not altered and searchers are not diverted because a link to the trademark owners web site is also available as a part of the search results. The sponsored link is identified as such either to the right of or immediately above the unaltered search results. The court likened this practice to the common retail practice of grouping generic products next to brand products on store shelves so that the consumer could reach purchasing decisions based upon product comparisons. The court also pointed out that neither the sponsored link nor the competitor's web page contained the trademark at issue. The court also found no dilution because there was no trademark use to cause dilution. This case is one of several recent district court cases which have gone both ways on this issue. So far no Federal Circuit Court of Appeals has directly weighed in on this issue and as a result the law on this issue remains very murky.

Rescuecom Corp. v. Google, Inc. Decision: LINK

Jay Taylor is a Partner with Ice Miller focusing his efforts on patent, trademark, copyright, and trade secret litigation.