Summary: The Second Circuit has headed off confusion from an earlier case and made clear that, at least as far as that circuit is concerned, Google’s use of trademarks in its AdWords program constitute “use in commerce” for purposes of stating a claim. Rescuecom Corp. v. Google Inc., 2009 WL 875447
Rightly or wrongly, Google enables users to select as keywords the names of competitors and their products and services. In a recent case, the Second Circuit has distinguished an earlier opinion (1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005)) by pointing out that in the earlier case, the use of the trademarks was inside an internal database—in other words, inside the company—while in the Rescuecom case, Google was actively selling these names. Two such Google programs were at issue: AdWords and Keyword Suggestion Tool. In the opinion of the court, these programs fell within the ambit of “use in commerce” necessary for a trademark infringement suit.
So What?
So, now one of the barriers to filing a claim against Google is gone. Yes, this opinion applies strictly to the Second Circuit, but its opinions are very influential. So one can expect more such suits. They are expensive, but they may be worth it. And one can expect an appeal by Google.
