Trademark Law | Expert Legal Commentary
July 16, 2009
Rescuecom v. Google: Keyword Ad Sales May Constitute “Use in Commerce”
Rescuecom Corp. v. Google, Inc.
By
Jeffrey J. Zuber and Laura D. Castner of Zuber & Taillieu LLP
The Second Circuit held that Google’s practice of recommending and selling plaintiff’s exact trademark to Google’s advertisers (including plaintiff’s competitors) in order to trigger ads forms a basis for an actionable claim under sections 32 and 43 of the Lanham Act, 15 U.S.C. sections 1114 and 1125. Reversing the District Court’s dismissal of Rescuecom’s complaint under Rule 12(b)(6), the Second Circuit found that the use alleged was a “use in commerce” likely to cause confusion within the meaning of the Lanham Act. The opinion, Rescuecom Corp. v. Google, Inc. 562 F.3d 123 (2nd Cir. 2009), clarified and distinguished the 2nd Circuit’s previous ruling in 1-800 Contacts v. WhenU.com – an opinion that the court below and other district courts had relied on to find that the sale or purchase of trademarks as keyword triggers did not violate the Lanham Act.
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About the Authors
Jeffrey J. Zuber is a Partner of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.
Laura D. Castner is a Counsel of Zuber & Taillieu LLP, focusing on intellectual property litigation and arbitration.
Image Credit: ©iStockphoto.com/ssuni
View a PDF of the judicial opinion