• The Second Circuit Finds that Google's Keyword Sales May Be "Use in Commerce"
  • May 4, 2009
  • Law Firm: Winston & Strawn LLP - Chicago Office
  • The Second Circuit Court of Appeals recently held that Google's keyword ad practices constituted a "use in commerce" for purposes of trademark law. Rescuecom, a computer repair service provider, sued Google, claiming that Google's sale of "Rescuecom" trademark as a keyword, constituted trademark infringement, false designation of origin, and trademark dilution. Google argued that its actions were not a "use in commerce" under trademark law, because when RESCUECOM was sold as keyword it did not require the display of Rescuecom's trademark. The Second Circuit Court of Appeals found that Google's alleged use of Rescuecom's trademark would constitute "use in commerce" as required for liability under trademark law because Google's alleged recommendation and sale of Rescuecom's trademark to Google's advertising customers was not an internal use. It should be noted that the court did not rule that Google's advertising practices, alleged in the complaint as constituting trademark infringement, but rather that Rescuecom's case could proceed, because these practices would constitute a "use in commerce" which is necessary for liability under trademark law.

    TIP: If selling trademarks as keywords is found to be an infringing use, the landscape of selling/buying keywords could substantially change.