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    Wednesday, April 22, 2009

    Rescue Me

    Businesses seeking search engine optimization through use of keywords were dealt a blow by the US Court of Appeals for the Second Circuit on April 3, 2009. In Rescuecom Corp. v Google, Inc., the Second Circuit reversed the lower court’s dismissal of Rescuecom's suit against Google for Google's use of the term “Rescuecom” to trigger sponsored links through Google's Adwords and keyword suggestion programs. The lower court had dismissed the suit ruling that the Google programs use of the terms was not "use in commerce". The Second Circuit reversed, and in doing so, joined the other courts, notably the Ninth Circuit, that have ruled that use of keywords can be “use in commerce” for purposes of liability for infringement under the Federal Lanham Act.

    What are the implications? First, given the wide spectrum of trademark protectabilty, from no-protection generic terms to highly protectable fanciful or arbitrary terms, the business using keywords must navigate a minefield. How do you know if a term is claimed as a trademark by someone else? Certainly a search on the Federal register can yield those marks for which someone has sought Federal registration, but the Lanham Act allows suit for unregistered marks, such as State registered marks or common law marks. Searching for common law marks can be an unwieldy and expensive beast, and if the business owner has to do it for every term it wishes to use as a Google Adword, then marketing costs for internet advertising will quickly add up.

    Second, the decision ruling keyword use to be "use in commerce" seems at odds with the Federal Trademark Office interpretation of "use in commerce". To get a mark registered, the applicant needs to show that the mark has been "used in commerce" for the particular class of goods or service for which registration is sought. The Trademark Office does not accept keyword use as acceptable proof of use. But how can the Trademark Office continue to take this position when the Federal Courts of Appeals rule that keyword advertising is "use in commerce". This conflict is ripe for resolution, which doesn't currently appear anywhere near.
    Due diligence before use of a term in advertising that is even remotely suspected as being a possible trademark of another now seems to be the order of the day. What constitutes due diligence, however, is a topic for another day.