Using Others' Trademarks as Keywords Continues to Be a Risky Practice

This week, another federal appeals court held that using someone else's trademark in keyword metadata constitutes "use in commerce" - a requirement for bringing a trademark infringement claim against another party. In Rescuecom Corp. v. Google, Inc. the Second Circuit Court of Appeals changed its tune from a previous case where it held that use of another's trademark as a keyword in a pop-up advertisement did not constitute "use in commerce" because the keyword in the metadata used in the pop-up advertising technology was not visible to users. However, in Rescuecom, the Second Circuit held that Google's act of selling to Rescuecom's competitors the ability to buy a keyword (consisting of Rescuecom's registered trademark) to trigger sponsored advertising on Google search results pages was "use in commerce" and thus allowed Rescuecom to pursue its trademark infringement claim against Google. The case now goes back to the lower court to determine if the "use" is one that infringes the trademark, which will likely take some significant time to resolve. Regardless of the ultimate outcome of this case, this reinforces the message that businesses and individuals which choose to purchase or incorporate someone else's trademarks as keywords in their advertising should do so with caution at the very least, as the question of infringement liability remains an open question.

-- Originally published in Larkin Hoffman's IP/Tech Buzz.