On July 10, 2009, Rosetta Stone sued Google in the Alexandria Division of the Eastern District of Virginia, for trademark infringement based on Google’s AdWords® program. Through AdWords, Google sells keyword search terms, so that when an Internet user types a search term into Google that has been purchased, a link to the purchaser’s website appears at the top or on the right column of the search results page as a “Sponsored Link.” In its Complaint, Rosetta Stone alleges that Rosetta Stone’s competitors (and companies selling counterfeit Rosetta Stone products) have purchased Rosetta Stone’s registered trademarks through AdWords; thus, when one of Rosetta Stone’s registered marks is entered into Google as a search term, links to these third parties websites appear as Sponsored Links on the search results page. Rosetta Stone thus alleges that Google is liable for trademark infringement based on its sale of Rosetta Stone’s registered marks.
Eric Goldman, author of the Technology & Marketing Law Blog who has been following these types of cases for years, has collected each of the pending cases against Google which make the same allegations here, and includes intelligence on Rosetta Stone's lawyers, and their previous experience with these cases.
The cases have been around for years, although the majority involve the mark holder suing the purchase of the keyword search term. The courts are split over whether purchase of a registered mark through AdWords constitutes a “use in commerce” under the Lanham Act. Courts in the First, Third, Fourth, Eighth, and Ninth Circuits have concluded in various scenarios that such purchases of trademarked keywords do constitute a use in commerce under the Lanham Act. Most recently, the Second Circuit joined this group on April 3, 2009, concluding that allegations similar to Rosetta Stone’s do state a cause of action under the Lanham Act. Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009).