New AdWord and Metatag decisions
and cases in the USA and Germany
AdWords decision
in Germany: No trademark violation by booking two
generic words, which combined together in the right
order result in the claiment's trademark (District Court
of Munich, decision of April 10, 2008, Case Number 1 HK
O 5500/08). For more information see:
Posterlounge Case,
Austrotrabant’s Blog.
FXP filed a
class-action lawsuit against Google in federal court in
Texas for showing ads of competitors when someone
searched for its trademark "Firepond". FPX is suing as
lead plaintiff on behalf of all Texas trademark owners.
It is the first class action lawsuit against Google over
its AdWords trademark policy. But according to legal
experts (see e.g. Goldman,
Google Hit With Major Class Action Trademark Lawsuit
Over Trademarked Keyword Ad Sales--FPX v. Google,
Technology & Marketing Law Blog), it is unlikely the
court will certify the class.
FPX, LLC v. Google, Inc.,
2:2009cv00142 (E.D. Tex.
complaint filed May 11, 2009)
A few days later, the same
group of lawyers filed a second class action lawsuit
against Google, only this time alleging a class
comprised of all US trademark owners (See Goldman,
Firepond "Copycat" Lawsuit Filed Against Google--John
Beck Amazing Profits v. Google,
Technology & Marketing Law Blog).
John Beck Amazing Profits, LLC v. Google Inc.
2:2009cv00151 (E.D. Tex.
complaint filed May 14, 2009)
Hearts on Fire Co. v Blue Nile, Inc.,
2009 WL 794482 (D. Mass. March 27, 2009). The
court determined that the purchase of a trademark
constitutes a use in commerce under the Lanham Act and
created a multifactor test for assessing likelihood of
confusion in the context of sponsored ads: "In
addition to these familiar factors, under the
circumstances here, the likelihood of confusion will
ultimately turn on what the consumer saw on the screen
and reasonably believed,given the context. This content
and context includes: (1) the overall mechanics of
web-browsing and internet navigation, in which a
consumer can easily reverse course; (2) the mechanics of
the specific consumer search at issue; (3) the content
of the search results webpage that was displayed,
including the content of the sponsored link itself; (4)
downstream content on the Defendant's linked website
likely to compound any confusion; (5) the web-savvy and
sophistication of the Plaintiff's potential customers;
(6) the specific context of a consumer who has
deliberately searched for trademarked diamonds only to
find a sponsored link to a diamond retailer; and, in
light of the foregoing factors, (7) the duration of any
resulting confusion. This list is not exhaustive, but it
identifies what the Court views as the most relevant
elements to showing a likelihood of confusion in this
case."
For more information see: Goldman,
Catching Up on Three Keyword
Advertising Cases--Hearts on Fire, Romeo & Juliette, AAA,
Technology & Marketing Law Blog and Gile,
Massachusetts District Court Finds
Keyword Purchase Constitutes Trademark Use