As Illinois Internet trademark infringement attorneys, we have kept track of the series of lawsuits filed against Google for selling advertisements using trademarked names and phrases. So we were not surprised to see an article in BusinessWeek July 13 announcing that Rosetta Stone, a maker of language-learning software, has sued Google for allowing competitors to buy its name for use in its Google AdWords advertisements. This was the ninth such lawsuit against Google for the same practices, although some have since been resolved.
Under the program, competitors to Rosetta Stone may bid for the right to have their own advertisements appear on the page of search results when a user searches for “Rosetta Stone.” The company contends that this is an illegal use of its trademark that forces it to spend thousands of dollars bidding on the keywords, so that competitors cannot have them. According to the article, the lawsuit was inspired by the loosening of Google’s AdWords restrictions. Until June 15, companies could not put the competitor’s name in their advertisements, although they could purchase the right to appear when users search for competitors. Now they may do either. This is tantamount to allowing competitors benefit from the goodwill and name recognition Rosetta Stone has invested in building, the company’s general counsel said.
The lawsuit’s chances are unclear. As the article points out, the case will likely hinge on whether consumers are legitimately confused by Google’s practices. No court has clarified this, making it an unsettled area of the law. However, in a different case, the Second U.S. Circuit Court of Appeals reinstated a software company’s lawsuit against Google, saying selling trademarks as keywords counts as a “use in commerce” under trademark law. While trial courts in other circuits, including our own Seventh, are free to disagree, our Chicago Internet trademark litigation lawyers believe this is a promising sign that courts will allow a jury to consider the likelihood of consumer confusion.
DiTommaso-Lubin has more than two decades of experience representing businesses in complex, challenging business lawsuits. Our Illinois online trademark infringement lawyers represent both plaintiffs and defendants in this emerging area of the law. In addition to Internet trademark infringement claims, we handle online and offline trade libel (product disparagement) cases; cases of duplicate or similar logos; and negative Web sites or product/service reviews. From offices in Oakbrook Terrace and Chicago, Ill., near Naperville, Aurora, Waukegan, Wheaton, Oakbrook, Wilmette, Highland Park, Elgin, Joliet, Northbrook and Chicago, our business trial attorneys represent plaintiffs and defendants throughout Illinois, Indiana and Wisconsin. For a consultation on a trademark claim or any other business lawsuit, please contact us through our Web site or call 1-866-990-4990.