Last month, Google Inc. and Rescuecom Corp. settled their long fight over Google’s sale of the RESCUECOM mark as a search engine keyword, which permitted Rescuecom’s competitors to display “sponsored listings” when Internet users searched for Rescuecom. The dismissal settles Rescuecom’s trademark infringement and dilution claims, and comes after the parties took their dispute up to the Second Circuit, which found in favor of Rescuecom and remanded the case for further proceedings. The dismissal itself contains no clues as to why the parties finally decided to end their six-year dispute.
The Rescuecom case is just one of many trademark infringement and dilution cases filed in the US and in Europe against Google’s sale of third party trademarks as keywords in its AdWords program. For years, Google has defended these sales, and its “suggestion” tool that prompts customers to purchase the trademarks of others, by claiming that these sales do not fall within the definition of “use in commerce” under the Lanham Act’s trademark provisions. This has been a thorny issue for trademark owners, particularly in the Second Circuit, which includes New York. Last year, the Second Circuit’s decision in favor of Rescuecom cleared the way for trademark plaintiffs who sought to proceed past the complaint stage in lawsuits against search engines to be able to prove the substance of their trademark claims. Rescuecom Corp. v. Google, Inc.¸ 562 F.3d 123 (2d Cir. 2009). After last year’s appellate decision revived Rescuecom’s trademark infringement lawsuit against Google, many trademark owners were waiting to see how Rescuecom’s claims would proceed on their merits at the trial court.
Though the dismissal itself contains no settlement terms, news reports state that Rescuecom was ready to settle because it learned recently that Google had removed the RESCUECOM mark form its suggestion tool five years ago, which, when combined with Google’s stated policy of not allowing trademarks in ad text, would diminish the use and visibility of the RESCUECOM mark in competitors’ sponsored listings. Rescuecom is claiming victory in this settlement, trumpeting the dismissal as “A Case of David versus Googleiath” in a recent press release (available here). According to the press release, Rescuecom achieved two of its three objectives (i.e., removal of its mark from the suggestion tool and from the text of advertisements), though Rescuecom admits that it did not obtain relief on its third goal of preventing use of its mark as a keyword “trigger” for advertisements.
Google is still involved in other trademark keyword disputes but, with the settlement of Rescuecom, has avoided a trial on the merits of such a case for now. Meanwhile, Rescuecom is embroiled in another lawsuit, a declaratory judgment lawsuit it filed against Best Buy, which, ironically, seeks to prove that Rescuecom’s purchase of the GEEK SQUAD mark as a keyword is a fair use, among other things. See Rescuecom Corp. v. BBY Solutions, Inc. (NDNY filed Oct. 14, 2009).
- Suzanne Wilson and Catie Rowland
