You may be asking, “What about Google’s liability in all this?” For the most part, Google has managed to escape. But, how? Remember the Lanham Act and the eight factors used to determine the degree of confusion? In Jurin v. Google Inc., 09-cv-03065 (E.D. Cal. Sept. 9, 2010), Jurin based its argument on Google being a “direct competitor” and referred directly to the Lanham Act factors; however, this was a complete stretch. Jurin was in the building materials supply business, and the court quickly sided with Google and brought the matter to an end. In Rosetta Stone Ltd. V. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010), the plaintiff claimed that Google auctioned its trademarks to third party advertisers used in sponsored links, which ultimately constitutes infringement. The court thought otherwise and said no “reasonable juror” would come to the conclusion that Google
was intentionally trying to confuse potential consumers or that Google tried to pass off its own goods as if it were those of the plaintiffs. These are just two cases that reflect the commonly held belief in and out of the courtroom: Google is liability free for trademark infringement through the use of Google AdWords.
“What’s in a name?” How about years of hard work building a brand and millions of dollars spent in promotion of that brand. The most important message we can take from the Binder & Binder case is this: If you haven’t already, take action now and seek a federal trademark registration of your law firm’s name for your own protection. If you already have, great! If you have someone local that provides for your IP needs, wonderful! If you need assistance in securing your trademark, cj is happy to help! Just contact Jimmy Bewley for more information. This is one of those moments where we can get a glimpse of the future—let’s prepare and protect ourselves.
“Advertisers Beware: Using a Competitor’s Registered Trademark as a Keyword with Google’s AdWords Program can Constitute Trademark Infringement.” Muradyan, David. The ip law Blog. March 3, 2011.
“Use of Competitor’s Trademark in Keyword Advertising: Infringement or Not?” Garrison, Grady M., Merritt, Laura P., and Lafeber, Michael, M.