Google AdWords Lawsuits Continue

Rosetta Stone, the world's leading language-learning software company, has sued search-engine giant Google for trademark infringement over Google's AdWords advertising program. The AdWords advertising program allows companies to purchase advertising that appears on Google's search results pages when an internet user types a particular word in the search box -- and in some instances, that word may be a competitor's trademark. In a statement by its general counsel, Rosetta Stone said that "Google and its advertisers benefit financially from and trade off the goodwill and reputation of Rosetta Stone without incurring the substantial expense that Rosetta Stone has incurred in building up its popularity, name recognition and brand loyalty."

Rosetta Stone is the latest in a series of companies to file similar trademark infringement lawsuits against either their competitors who purchase search advertising triggered by searched keywords, or against the internet search companies such as Google. Results in these cases have been mixed, but so far the Second Circuit has provided the best results for search engine defendants based on rulings that the sale of such advertising does not constitute the "use in commerce" of a trademark, which is a threshold element required to establish trademark infringement. Recently, however, the U.S. Court of Appeals for the Second Circuit, in Rescuecom v. Google , held that Google's sale of advertising triggered by a search for Rescuecom's trademark was a "trademark use" sufficient for Rescuecom to survive Google's motion to dismiss Rescuecom's action for failure to state a claim for relief.

Even when the threshold issue of "use in commerce" is established, however, a plaintiff must still prove a likelihood of confusion in order to establish trademark infringement. Concerning the Rescuecom case, trademark attorney Bill O'Neill says, "the Second Circuit held that Google 'used' the Rescuecom trademark in connection with the services of selling advertising -- Google presented the Rescuecom mark to the potential advertiser, to try to sell advertising space to that advertiser. Now, Rescuecom has a very large task, to try to convince the court that Google's presentation of the Rescuecom trademark to Google's potential advertiser results in a likelihood of confusion -- even though Google's advertising sales services are completely different from Rescuecom's computer services, as are their respective customers and channels of trade."