Google's Sale of Marks to Trigger Ads Was Use in Commerce

by Thomas Long, Legal Editor, CCH Trademark Law Guide

Internet search engine operator Google's recommendation and sale of a computer services franchisor's well-known "Rescuecom" trademark to Google's advertisers, so as to trigger the appearance of their ads and links in a manner likely to cause consumer confusion when a Google user launched a search on the franchisor's mark, could have violated the Lanham Act, according to the U.S. Court of Appeals in New York City.

Google's AdWords program enabled advertisers (including the franchisor's competitors) to purchase or bid on certain keywords. When Internet users typed those words in Google's search engine, the program generated "sponsored links" to the advertisers' websites. The franchisor asserted that the appearance of links to competitors' websites when a Google search was run on the "Rescuecom" mark was likely to cause the searcher to believe mistakenly that the competitors' links and advertisements were sponsored by, endorsed by, approved by, or affiliated with the franchisor.

Google's alleged use of the franchisor's mark would constitute a "use in commerce" for purposes of Sec. 45 of the Lanham Act, the court said. Google displayed, offered, and sold the franchisor's mark to its advertising customers when selling its advertising services. In addition, Google encouraged the use of the franchisor's mark through its "Keyword Suggestion Tool," which identified keywords for advertisers to purchase and which had recommended the franchisor's mark to the franchisor's competitors.

Even if Google's use of the mark in its internal search algorithm did not constitute an actionable trademark use, Google's recommendation and sale of the mark to advertising customers were not internal uses. Moreover, an internal use of a mark in software could violate the Lanham Act, if the use created consumer confusion, the court said.

Rescuecom Corp., 2nd Cir., ¶61,408

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