Company Can Use Rival's Trademark as Web Page 'Placement Strategy'

So much of marketing strategy focuses on search engines, and where in search results a business shows up. Is it page 1 of the search results or page 10? The difference between the two can be the difference between survival or failure for a company. Businesses look for every advantage to get their company information in front of a consumer conducting an Internet search. It's no surprise then that using a competitor's trademark in a company's keywords was bound to happen, and was also bound to end up in court.

Find out how one New York court ruled on this practice, courtesy of the Computer & Internet Litigation Reporter.

Rescue.com Corp v. Google, Inc.

A business that gets its Web site link to show up in Internet search results by using a competitor's trademark in its keywords does not infringe the mark under federal law, a New York federal judge has ruled.

Comparing the linking strategy to the time-honored practice of placing competing products next to each other on store shelves, U.S. District Judge Norman A. Mordue said that Rescue.com Corp. could not prevent rivals from using its trademark as a search term.

Keywords and tags are included in the behind-the-scenes processing of Web sites to allow search engines to retrieve and compile material into search result pages.

Rescue.com discovered that other computer service companies had bought its trademark for use as a search term from Google, the monolith Internet search engine, to ensure Web searchers would see links to their businesses as well.

Rescue.com filed suit against Google in the U.S. District Court for the Southern District of New York, alleging trademark infringement, false designation of origin and trademark dilution under the federal Lanham Act.

The lawsuit also alleged three state law claims for common-law trademark infringement, dilution and tortious interference.

Not a Trademark Use

Google moved to dismiss the lawsuit for failure to state a claim. Google argued that its sale of the Rescue.com mark as a search term is not a trademark use within the meaning of the Lanham Act.

Judge Mordue agreed, finding that neither Google nor the rival companies were displaying the Rescue.com trademark on fake goods or services or offering such goods for sale. Therefore, he said they are not using the mark in trade or commerce, which would violate the Lanham Act.

The fact that competitors were using the mark to bring up their company links in juxtaposition with Rescue.com's link was merely a "product placement" tactic, the judge said.

"For example, a drugstore typically places its own store-brand generic products next to the trademarked products they emulate in order to induce a customer who has specifically sought out the trademarked product to consider the store's less-expensive alternative," he said.

Judge Mordue dismissed the three federal Lanham Act claims with prejudice and declined to retain jurisdiction over the state law claims. He dismissed those claims without prejudice so that Rescue.com could refile them in a state court if it chose to do so.



Rescue.com Corp. v. Google Inc., No. 5:04-CV-1055, 2006 WL 2811711 (S.D.N.Y. Sept. 28, 2006).
Computer & Internet Litigation Reporter
Volume 24, Issue 10
10/18/2006