In 2009, language-learning software provider Rosetta Stone Ltd. filed a trademark infringement action against Google, Inc. From 2004 through 2009, Google allowed "sponsored links" to purchase keywords on its AdWords platform, including terms that were third party trademarks and service marks. Rosetta Stone alleged that this practice by Google infringed Rosetta Stone's various federally registered marks.
Although Rosetta Stone had presented evidence of a handful of instances of actual confusion by consumers who inadvertently purchased fake copies of Rosetta Stone software from sites that appeared through keyword searches, the trial court granted Google's motion for summary judgment. The court held that the use of "Rosetta Stone" as a keyword did not create a likelihood of confusion on the part of users. Rosetta Stone appealed this decision to the Fourth Circuit Court of Appeals and, in April, 2012, the appellate court vacated the lower court's ruling on the issue of confusion, holding that Google was not entitled to judgment as a matter of law.
The case was ready for trial, however, trademark owners expecting a definitive court decision on this issue will be disappointed. On October 31, 2012, Google and Rosetta Stone issued a joint press release announcing that they reached a settlement. The companies also stated that they will "meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet."
To review the joint press release, go to: http://pr.rosettastone.com/phoenix.zhtml?c=228009&p=irol-newsArticle_print&ID=1752377&highlight=