Trademark Protection in Cyberspace Rescued

A recent decision of the U.S. Court of Appeals for the Second Circuit, Rescuecom Corp. v. Google Inc., No. 06-4881, F.3d (2d Cir. April 3, 2009), has clarified precedent that had been assumed to foreclose Lanham Act challenges to the surreptitious use of trademarks to compete in cyberspace. In a 2005 decision, 1-800 Contacts v. WhenU.com, 414 F.3d 400, the Second Circuit dismissed a Lanham Act action against an online marketer because the challenged activity ' alleged use of a trademark to generate pop-up Web ads for competitors ' was not a “use in commerce” under the statute. District courts uniformly read 1-800 as holding that internal cyber-use of a trademark is never actionable under the Lanham Act. (For more on the 1-800 case, see, “WhenU Helps Keyword Companies See Clearly” in the August 2005 issue of e-Commerce Law & Strategy; www.ljnonline.com/issues/ljn_ecommerce/22_4/news/144951-1.html.)