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Is 'No Use' Always a 'Fair Use'?

By Stephen Feingold, Marc A. Lieberstein, and Cecelia Kehoe Dempsey
April 28, 2006

In order to avoid liability for trademark infringement relating to the sale of keywords corresponding to trademarks, search engines, including Google, are attacking the concept that trademark owners should be able to protect the 'commercial magnetism' of their marks. Recently, in Rescue.com v. Google, Inc., No. 5:04-CV-1056 (N.D.N.Y.), Google argued that the trademark laws 'are not meant to protect consumer good will [sic] created through extensive, skillful, and costly advertising.' Google's Reply Brief at 4 n.4 (2005) (citing Smith v. Chanel, Inc., 402 F.2d 562, 566 (9th Cir. 1968)).

At issue in Rescue.com is the current business practice of allowing advertisers to purchase particular search terms to generate what are typically labeled as 'sponsored links.' Rescue.com alleged Google infringed its trademark by allowing and advising a rival computer service company to buy Rescue.com's trademark as a keyword. As a result, Rescue.com alleged, Google users contacted Rescue.com's competitor under the mistaken impression that the competitor was associated with Rescue.com. Google's position is that its conduct does not involve a 'trademark use' and therefore is beyond the reach of the Lanham Act.

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