Seattle Trademark Lawyer

Daniel Jurin owns the trademark STYROTRIM for building materials.

Mr. Jurin sued Google, Inc., for false designation of origin for displaying “Styrotrim” as a commonly-searched term and making the term available for purchase to plaintiff’s competitors.

In particular, Mr. Jurin alleged that Google’s practice falsely misled persons in the building industry to believe that “Styrotrim” is a generic word and not a proprietary trademark.

On Google’s motion to dismiss, the Eastern District of California invoked the holding from Dastar Corp. v. Twentieth Centry Fox Film Corp., 539 U.S. 23 (2003), which requires a plaintiff asserting a false designation of origin claim to show a false or misleading suggestion as to “the producer of the tangible goods that are offered for sale.” 

Under this standard, the court found found Mr. Jurin’s allegations did not make the grade.

“In the context of false designation of origin claims, the Supreme Court has held the use of the word ‘origin’ as referring to a false or misleading suggestion as to ‘the producer of the tangible goods that are offered for sale.’ Here, despite Plaintiff’s many allegations, Plaintiff has failed to allege how Defendant’s use of the term ‘Styrotrim’ in its AdWords program, or display of Sponsored Links in response to an internet search for the term ‘Styrotrim’, creates a misleading suggestion as to the producer of the good. Plaintiff’s allegations seem to suggest that consumers may become confused as to Plaintiff’s affiliation with a Sponsored Link, or that advertisers may become confused as to the trademarked status of the term Styrotrim. However, even when accepting these possibilities as true, neither scenario addresses confusion regarding the producer of the good such as to warrant a claim for false designation of origin under the Lanham Act.”

The court also rejected Mr. Jurin’s attempt to establish confusion as to source through last year’s Second Circuit holding against Google. 

Inapposite, the court found.

“Plaintiff argues that this Court should rely on the Second Circuit’s holding in Rescuecom, Inc. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009), which ruled in favor of a plaintiff challenging Google’s AdWords program as a violation [of] trademark protection under the Lanham Act. However, the decision in Rescuecom relied almost entirely on an analysis of the ‘use in commerce’ prong of the Lanham Act as defined by 15 U.S.C. § 1127. Such language is not in question here. Any reference by the court to the ‘confusion’ prong of a false designation of origin claim existed as mere dicta in which the Court ruling in Rescuecom is nonapplicable and nonpersuasive here.”

The case cite is Jurin v. Google, Inc., 2010 WL 3521955, No. 09-3065 (E.D. Calif. Sept. 8, 2010) (England, J.).

Likelihood of Confusion’s got a nice summary of the Aug. 3 Rosetta Stone v. Google keyword advertising decision, cribbed from Jane Coleman’s forthcoming update to her book on secondary trademark infringement.

It nicely synthesizes recent case law on contributory liability, including Second Circuit’s April 1 decision in Tiffany v. eBay.

One takeaway is the case law remains unsettled.

“In finding that Rosetta Stone had not met its burden of showing that summary judgment was proper as to the contributory trademark infringement claim, the court’s language left unclear what its conclusions were regarding Google’s liability for the sale of trademark-protected keywords to competitors who were not necessarily counterfeiters.”

Here’s Eric Goldman’s rundown on the case.

I understand Rosetta Stone appealed the decision today, so in time the Fourth Circuit will get a shot at clarity.

Law.com yesterday highlighted the keyword lawsuits against Google — and Google’s recent success in defending them.

Blogger Eric Goldman thinks the suits may be ill-fated. “We’re starting to see some of these lawsuits crack,” he said. “My current hypothesis is that they never made sense in the first place — the plaintiffs got all excited to go take down Google, but suing Google is a loser’s bet because Google’s going to fight to the death.”

I agree that Google’s going to fight to the death, though I’m not sure anyone’s excited at the prospect of starting that fight. Proving trademark infringement can be hard enough. When doing so challenges the very model on which Google depends? That’s a suit a rational plaintiff would take on only if it thought it had no other choice.

So do Google plaintiffs have no other choice? I don’t think so. Seems to me they could get all the relief they need by suing the competitor that’s buying their trademarks.

Eric Goldman reported a while back that a Western District case is one of eight currently pending against Google, Inc., for trademark infringement. In Soaring Helmet Corp. v. Bill Me, Inc., Soaring Helmet alleges that competing motorcycle helmet seller Bill Me, Inc., d/b/a Leatherup.com, purchased plaintiff’s VEGA trademark as a keyword from Google. When a person searches Google for “VEGA helmets,” the complaint states, Google returns a sponsored link stating that Bill Me offers “50% off Vega Helmets,” even though Bill Me does not sell plaintiff’s VEGA helmets.

Plaintiff claims this amounts to contributory trademark infringement. “Defendant Google, through its keyword advertising program, contributes to the aforementioned trademark infringement by knowingly encouraging advertisers to use Soaring Helmet’s Mark in false and misleading advertisements that have caused, and is likely to cause confusion, mistake, or deception of consumers, to the detriment of Soaring Helmet.”

Says Prof. Goldman: “…Google treated Soaring Helmet’s initial cease-and-desist letter as a trademark opt-out and blocked subsequent references to Vega in Leatherup.com’s ad copy. Thus, unless Soaring Helmet seeks to reach back to the ads displayed before its C&D, it appears Soaring Helmet is trying to hold both Google and Leatherup.com [liable] simply for showing ads triggered by Soaring Helmet’s “Vega” trademark.”

Neither defendant has answered the complaint, which plaintiff amended yesterday to identify Bill Me with more particularity. 

The case cite is Soaring Helmet Corp. v. Bill Me, Inc., No. 09-789 (W.D. Wash.).

Following is a teaser guest post by my partner, Bob Cumbow (though this and the last paragraph are mine):

For some time now, “keyword search advertising” has been a marketplace reality in the US. In the typical keyword search advertising situation, a search engine sells to an advertiser the right to have the advertiser’s ad or sponsored link appear whenever a user of the search engine inputs a particular search term. It’s become a common practice for search engines to suggest, and advertisers to choose, search terms that are the trademarks of the advertisers’ competitors. Thus, when a user keys in the name of a particular company, the resulting search results may be accompanied by an ad or sponsored link to a direct competitor of the company whose name was keyed in.

For several years, competitors have been using one another’s names in this way, while simultaneously asking whether this activity actually raises a legal issue over which a lawsuit could be filed. Indeed, several such lawsuits have been filed, and courts have differed in their findings. For the most part, courts have been troubled by whether keyword search advertising constitutes a “use” of another party’s trademark; because if it doesn’t, then there is no basis for a trademark infringement lawsuit. Most courts have found that it does constitute a use of a trademark, but have gone on to find either no liability for trademark infringement, or liability only on the part of the advertiser, not the search engine.

Recently the Second Circuit Court of Appeals handed down its long-awaited opinion in Rescuecom v. Google, reversing a longstanding trend in that circuit, and holding that keyword search advertising is indeed a use of another party’s trademark for which a search engine might be liable. What is the significance of this holding? What problems does it raise? And where does keyword search advertising go from here?

Bob answers these questions in his insightful article here. It’s a great read.