Google’s Sale of Trademark Is Not Use

Google’s sale of trademarks as keywords is not a “use” under the law to support a claim for infringement, a New York federal district court found.

Rescuecom Corp. sued Google under the Lanham Act for trademark infringement, false designation, and dilution of its trademark. The court granted Google’s motion to dismiss.

Rescuecom alleged that Google’s “AdWords” program sold the term “rescuecom,” a trademark registered by Rescuecom. In addition, Google through its “Keyword Suggestion Tool” recommended “rescuecom” to the company’s competitors as a keyword. Rescuecom argued that Google’s actions lured Internet searchers away from Resecuecom’s website and caused confusion.

The court found that the use by Google did not result in users going directly to another website but rather led users to a page showing sponsored links and search results including Rescuecom’s website. Rescuecom’s trademark does not appear in the other links.

“Defendant’s internal use of plaintiff’s trademark to trigger sponsored links is not a use of a trademark within the meaning of the Lanham Act, either, because there is no allegation that defendant places plaintiff’s trademark on any goods, containers, displays, or advertisements, or that its internal use is visible to the public,” the court wrote. Becauase Rescuecom did not allege any use under the Lanham Act, its claim for dilution also must fail, the court said.

Rescuecom Corp. v. Google, Inc., N.D. New York No. 04CV1055, slip opinion September 28, 2006.