This week Resuecom which sued Google for selling ads under its trademarked keywords 6 years ago simply dropped the case.
Back in April 2009 we wrote about how the appeals court ruled against Google in favor of Resuecom.
At the time we wrote:
“””The 2nd Circuit Federal Court of Appeals ruled against Google in a trademark lawsuit stemming from AdWords ads, saying that allowing a trademark term to trigger a search ad is a “use in commerce”, within the meaning of federal trademark laws.
“”Google was sued by computer repair shop, Rescuecom, for allowing rivals to appear as sponsored listings when consumers typed “Rescuecom” into the query box. A district court judge dismissed the case before trial on the theory that allowing a word to trigger an ad didn’t violate trademark law because it wasn’t a use in commerce.””
Judge Pierre Leval, who wrote the appellate opinion, disagreed.
The case was sent back to the federal district court for a trial, on whether search ads potentially confused consumers.
You can read the decision here.””
So now the case goes back to the federal trial court and Rescuecom drops the suit.
So why would a plaintiff drop a case it had perused for 6 years after winning an appeal?
It seems while Rescuecom was suing Google for selling ads under trademark keywords, they were also buying ads under another company’s trademarked term.
Last October, Best Buy demanded that Rescuecom stop using “geek squad” as an ad keyword.
Rescuecom filed a suit against BestBuy seeking a declaratory judgment that its use of “geek squad” was not an infringing use.
The company argued its use of geek squad was protected by fair use principles and that the ad copy obviously showed that Rescuecom was a competitor to Geek Squad. “Rescuecom’s use of the Geek Squad trademark to trigger this advertisement does not give rise to a likelihood of confusion”
Best Buy counterclaimed alleging trademark infringement.
“Consumers looking for the Geek Squad or information on the Geek Squad using a Google search have been confronted with sponsored links that direct consumers to Rescuecom’s website,” adding that Rescuecom’s use of keyword ads is misleading and diverts consumers who are trying to find Best Buy.
Rescuecom CEO David Milman said that his company’s use of geek squad is legitimate because Rescuecom is attempting to compare its repair service to that offered by Best Buy.
“If you actually look at our ads in the Best Buy case, they’re very, very clear. We’re drawing a distinction,” he said. “No reasonable person could ever think that our ad is for that company.”
A Google search for “geek squad” conducted Friday morning yielded a results page with a sponsored ad carrying the headline, “Switch to Rescuecom today” and copy stating, “Leave the geeks.”
So Recuecom now switches hats from being a plaintiff looking for damages for trademark infringement to defending against the same type of case for seemingly the same conduct.
Google is still a defendant in at least nine other lawsuits alleging trademark infringement in AdWords so that issue is far from settled.
Interesting. At first I thought Google might have settled for a nice sum, to try to stay under the radar so to speak. I’m pretty sure trademark infringing keyword buying is a very big business for Google and they’d want to keep it going quietly.. but not so sure after reading about the Best Buy case.
Thanks for the report. Esa
Enrico Schaefer says
It is hard to be a white hat plaintiff and a black hat defendant at the same time. Someone at corporate got a little too cute. Distinctions don’t hold up that well in 30 second sound bytes.
Rashid Mahmood says
There were some strong sales and great names in this auction. Good to see the sell through on the names with reasonable reserves
That’s what I call greed and selfishness – on RescueCom’s part. Suing someone for doing something you do yourself. It can’t get any more foolish.
I am happy that Google won the case. They should win all of them.