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Search Engine Advertising Trademark Claims

By Howard S. Hogan and Michael B. Smith

Most search engines offer advertisers the ability to purchase “keywords” ' that is, to pay the search engine to display a company's advertisement on the search results page when a user searches for one of those “keywords.” For example, Google uses keywords to trigger the display of “sponsored links” above or alongside the search results generated by Google's own search algorithms. Google allows multiple advertisers to bid on the same keyword, and then ranks their placement on the page, in part, based on how much each advertiser is willing to pay Google if an Internet user clicks through the sponsored link to the advertiser's website.

Allegations that the use of a third-party's trademark in this context constitutes trademark infringement have been litigated throughout the country. Some district courts have found that this form of advertising is likely to cause consumer confusion, while other district courts have rejected such claims. Compare Binder v. Disability Group, Inc., __ F.Supp.2d __, 2011 WL 284469 (C.D. Cal. Jan. 25, 2011) (finding “a strong likelihood of confusion” after bench trial) and Mary Kay, Inc. v. Weber, 661 F.Supp.2d 632 (N.D. Tex. 2009) (entering judgment after jury verdict of infringement) with Rosetta Stone Ltd. v. Google Inc., 730 F.Supp.2d 531 (E.D. Va. 2010) (finding no likelihood of confusion on summary judgment), appeal pending, Case No. 10-2007 (4th Cir.) and College Network, Inc. v. Moore Educ. Publishers, Inc., 2007 cv 615 (W.D. Tex.), aff'd __ F.3d __, 2010 WL 1923763 (5th Cir. May 12, 2010) (affirming jury verdict of no infringement).

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