In a seeming unending daily lawsuit filed against search engines for allowing advertisers to place PPC using others trademark terms, Rosetta Stone filed suit against Google yesterday in the Federal Court for the Eastern District of Virgina.
The suit is typical of several others recently filed against Google, click here, here, and here and seek damages based on Google allowing advertisers, including competitors to Rosetta Stone from using Rosetta Stone trademarks in their PPC ads.
The lawsuit cites language in Google’s 2004 S-1 document with the SEC which states:
“We no longer disable ads due to…trademarks as keywords triggers for ads.”
The S-1 goes on to state that Google anticipates additional trademark infringement lawsuits because of its decision to allow advertising customers to use trademarks to trigger the delivery of sponsor links:
“Adverse results of these lawsuits may result in or even compel and change of this practice which could result in a loss revenue for us which could harm our business”
It seems that Google’s new policies announced back in May to actively promote the sale of trademark keywords to rivals, and using trademark terms in PPC ads, is triggering what we predicted would be a flood of litigation over this issue.
We said at the time Google has gone “all in” with the strategy and it now seems they could be facing hundreds of similar suits by next year (unless class action status is given to one of the existing claims).
It interesting that trademark groups which have come after domainers, have been pretty quite on this issue.
I have never heard a peep out of CADNA about Google allowing trademark terms to be used in ads, the same exact conduct which domainers are sued for and UDRP’s are filed against domainers every day.
Is this because these groups are really against the use of trademarks in competitors ads or is it because they just want to take our domains?
and if our domains can be taken, even generic ones, even without the trademarks being advertised, or competitors being advertised, then how is it that the big public companies can engage in this conduct?
I know Google says they can censor or play trademark cop when people submit ad copy. Yet you try using that as a defense in a URDP, that parking pages are automatically generated and you have no control of what comes up and see how far you get with that defense.
Mike,
It’ll be very difficult to gain class action status because each case is unique to the specific owner of the trademark. Even though Google appears to be a serial infringer, each infringement needs to be a separate legal action.
I suspect many CADNA members have been bidding on competitors trademark terms. That would be an ironic post of outing these members.
Well Rosetta Stone is a member of CADNA, however CADNA did not join them in this suit.
Here are the members of CADNA:
* American International Group, Inc.
* Bacardi & Company Limited
* Carlson / Carlson Hotels Worldwide / Carlson Restaurants Worldwide
* Compagnie Financière Richemont SA
* Dell Inc.
* DIRECTV, Inc.
* Eli Lilly and Company
* Goldman, Sachs & Co.
* Harrah’s Entertainment, Inc.
* Hewlett-Packard Company
* Hilton Hotels Corporation
* HSBC Holdings plc
* InterContinental Hotels Group
* Marriott International, Inc.
* New York Life Insurance Company
* Nike, Inc.
* Rosetta Stone Inc.
* Verizon Communications Inc.
* Wells Fargo & Company
* Wyndham Worldwide Corporation
http://www.cadna.org/en/members
The first one AIG, there’s a highly respectable company and as a taxpayer I love supporting it to the tune of $185 Billion, (so far) so they can turn around and attack me.
There you go! More evidence of what is really going on.
They are after our domains……coordinated effort going on many, many years designed to take the domains.
It’s about the domains and always has been. It’s where the sweet brands and the sweet, free traffic lie if they can steal them…….legally or not.
disappointed 🙁 … upon reading the headline I thought that a bunch of Egyptians had traveled through time to sue Google!
The term “Rosetta Stone” has been synonymous with language translation long before Rosetta Stone Inc even existed…they did not create this “brand”, but instead “borrowed” it from the public domain (being generous here). What’s next…trademarking “language software” or dictionary?
It should not be possible to trademark a generic or historic term or place-name.
Michael
I’ve said this many times before.
A ton of dictionary words are trademarked.
Every 2 and 3 letter combo is trademarked as well as most phrases and saying used in language for decades.
Read our comments to ICANN for more examples:
http://www.thedomains.com/2009/07/06/our-comments-to-icann-on-the-urs/
“…or is it because they just want to take our domains?”
BINGO!
“We know longer disable ads…”
Looks like Google should be sued for not proofreading!
I was just curious, so how did Rosetta Stone settle the petty larceny case on one of the Board of Director’s mother after her shoplifting arrest at a Safeway store in Mclean last year? The incident was published in The Mclean Ear last September. The hearing for this theft crime was February 1st and Rosetta Stone made no mention of it. It makes you wonder if there’s cover up going on.
where did you expect to see it mentioned? in rosetta’s 10q/10k? a company press release?
what does this have to do with rosetta’s business, or with trademarks, or with domain names?
does mclean have a town gossip website? mclean-gossip.com is available!
I agree with huh 100 percent. Google prevailed over Rosetta Stone. So what’s the big deal? Stealing is something you can’t be proud of so you might as well not broadcast it. However, RS legal team needs to do their homework to avoid further humiliation especially when you arrest people for piracy only to find out you have criminals lurking in your own backyard.