Keywords are Not Trademarks under the Federal Lanham Act

This past month, a New York Federal Court stated that the sale of a trademark as a keyword does not constitute trademark infringement in the case of Rescuecom Corporation vs. Google, Inc. The court stated that Google’s sale of Rescuecom’s mark as a keyword with the purpose of generating advertisements was not a valid legal claim because it did not constitute “trademark use in commerce.” The Court based this decision on the principle that because the consumer never sees the trademark in an ad or otherwise on any goods or products, Google was not using any trademarks “in commerce”. The court was basing its decision from an earlier case, in which another court stated that when a pop-up advertisement from a Plaintiff’s website does not display its trademark, it is not using the trademark in commerce. Rescuecom made several arguments supporting their claims that Google’s use of the “RESCUECOM” trademark constituted infringement and free riding.


First they said that by selling the “RESCUECOM” trademark, Google was free riding on the goodwill of their mark. The Court did not agree, stating that although Google was using the mark in a commercial nature, they were not using the mark in a way that they were generating revenue from the use of the mark, which is a requirement for proving free riding. Second, Rescuecom argued that the Google’s use of their trademark hinders consumers trying to access the Rescuecom website. The Court stated that because none of the links being complained of contained trademarks belonging to Plaintiff (except those links going to the Plaintiff’s site), there was no free riding. Lastly, Rescuecom claimed that Google's sale of keywords modified search results delivered to users and such modifications diverted its customers to other pages. The court further disagreed with Rescuecom stating that Google’s internal, invisible use of the “RESCUECOM” trademark to generate sponsored links is not an official trademark because there is no evidence that Google “…places plaintiff's trademarks on any goods, containers, displays, or advertisements, or that its internal use is visible to the public." In the end, the court dismissed all of the claims against Google, finding that there was no free riding or infringement on their part.


This is a landmark case for search engines and online ad providers. "We welcome Chief Judge Mordue's decision to dismiss the case, which again confirms our long-held belief that our trademark policy is lawful," said Google senior litigation counsel. Google has been sued several times under similar pretenses here in the United States as well as overseas. This is the first case found in favor of a search engine stating that the sale of a keyword is NOT trademark infringement.

REF: Sedo News letter:
Monthly Update on Domain-Related Legal News
By Sheri Archidiacono, Esq, L.L.M Legal Counsel

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It should be noted that this case narrowly focuses on the paid placement activities of the search engines.

Using other's "trademarks" in your Web site keywords, META-TAGS, or alt image text can still be construed as infringement and bad faith, and have been used to prove diversion and tarnishment.

Glad Google won... but I doubt this is over.

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