Second Circuit Holds that Use of Trademarks as Search Keywords Constitutes "Use in Commerce" in Rescuecom


In a highly anticipated decision, on April 3, 2009, the Court of Appeals for the Second Circuit overturned the district court?s dismissal of Rescuecom's action against Google for trademark infringement, false designation of origin, and dilution arising out of Google?s controversial “AdWords” program.[1] The district court had dismissed the case for failure to state a claim for relief, finding that Google?s use of Rescuecom?s trademarks to trigger sponsored links did not constitute “use in commerce” within the meaning of the Lanham Act. The Second Circuit vacated the district court?s decision and remanded the case to the district court for further proceedings. Keyword-based trademark infringement claims in the Second Circuit are now much more likely to survive a motion to dismiss, forcing Google and other search engine operators to proceed to discovery and further stages of litigation.

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