Companies with an Internet marketing presence face the recurring questions of: (1) whether to use a competitor’s trademarks as advertising keywords and (2) whether to pursue an infringement action against a competitor using the company’s trademarks as advertising keywords. In general, keywords refer to index terms used to retrieve information in a search. In the context of this discussion, keywords refer to index terms that may be purchased through various search engines to include or enhance a website’s presence or prominence in search results. Unfortunately, there is no clear demarcation as to what use of a competitor’s trademark as a keyword is permissible and what is not. Court decisions continue to stir the dust of confusion. Risk accompanies any use of a competitor’s trademark as an advertising keyword. On the other hand, there is still no assurance that a court will find that mere use of a trademark as a keyword amounts to trademark infringement.
The law concerning use of a trademark as a keyword has been jurisdictionally dependent and has evolved over time. For example, the Second Circuit had previously held that use of a trademark as a keyword or adword was not use in commerce and, therefore, was not a basis for a trademark infringement claim. See e.g., S&L Vitamins, Inc. v. Australian Gold, Inc.1 In S&L Vitamins the dispute involved various actions related to trademark and copyright claims. One of the specific issues involved the use of trademarks as meta tags or sponsored keywords. The court determined that use of a trademark as a keyword (or meta tag) was not use in commerce and thus could not be the basis for an infringement claim. Therefore, until recently, a complaint of this nature could readily be dismissed in the Second Circuit. This changed recently when the Second Circuit Court of Appeals held in Rescuecom Corp. v. Google Inc. that Google’s sale of trademarks as keywords is use in commerce to support a claim for trademark infringement. 2
Article authored by McAfee & Taft Attorney: Andy Peterson.
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