Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistKickerSectionsNewsLJN Newsletters

Search Engine Advertising Trademark Claims

By Howard S. Hogan and Michael B. Smith
April 28, 2011

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).

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Law Firms are Reducing Redundant Real Estate by Bringing Support Services Back to the Office Image

A trend analysis of the benefits and challenges of bringing back administrative, word processing and billing services to law offices.

Bankruptcy Sales: Finding a Diamond In the Rough Image

There is no efficient market for the sale of bankruptcy assets. Inefficient markets yield a transactional drag, potentially dampening the ability of debtors and trustees to maximize value for creditors. This article identifies ways in which investors may more easily discover bankruptcy asset sales.

Bit Parts Image

Summary Judgment Denied Defendant in Declaratory Action by Producer of To Kill a Mockingbird Broadway Play Seeking Amateur Theatrical Rights

Risks of “Baseball Arbitration” in Resolving Real Estate Disputes Image

“Baseball arbitration” refers to the process used in Major League Baseball in which if an eligible player's representative and the club ownership cannot reach a compensation agreement through negotiation, each party enters a final submission and during a formal hearing each side — player and management — presents its case and then the designated panel of arbitrators chooses one of the salary bids with no other result being allowed. This method has become increasingly popular even beyond the sport of baseball.

Disconnect Between In-House and Outside Counsel Image

'Disconnect Between In-House and Outside Counsel is a continuation of the discussion of client expectations and the disconnect that often occurs. And although the outside attorneys should be pursuing how inside-counsel actually think, inside counsel should make an effort to impart this information without waiting to be asked.