Buying Keywords As Trademark Use?

The London Free Press is reporting on a case in a New York Federal District Court, Rescuecom v. Google, in which the Judge granted a motion to dismiss on Google's behalf. The case involved the use of trademarked terms as keywords, finding that keyword advertising isn't a use in commerce. But, don't go looking to this ruling for any insights when it comes to the use of trademarked keywords in adwords. There are at least three reasons not to...

First, as the London paper notes, this case was between the holder of the trademark and the search engine, and not the advertiser. It's possible that the advertiser using the trademark in advertisements might not see the same result as Google.

Second, this ruling added to a number of other cases making the landscape around the use of trademarks as keywords a murky area. Eric Goldman reported on the case, and quoted part of the Court's ruling in his post:

"Defendant's internal use of plaintiff's trademark trigger sponsored links is not a use of a trademark...because there is no allegation that defendant places plaintiff's trademarks on any goods, containers, displays, or advertisements, or that its internal use is visible to the public."

Does this apply just to the search engine? We can't be certain what meaning this might have for an advertiser.

Third, a New Jersey Federal District Court, after the Rescue.com decision, held against an advertiser in denying a motion for summary judgment. Eric Goldman also wrote about this case. A snippet from the Court's decision:

First, the alleged purchase of the keyword was a commercial transaction that occurred “in commerce,” trading on the value of Plaintiff's mark. Second, Defendants' alleged use was both “in commerce” and “in connection with any goods or services” in that Plaintiff's mark was allegedly used to trigger commercial advertising which included a link to Defendants' furniture retailing website.

It appears that the New York Federal Court doesn't consider the sales of adwords including a trademark as a use in commerce, and the New Jersey Federal Court does consider the purchase of adwords including a trademark as a use in commerce. The two positions seem contradictory.

Eric Goldman's latest post cites some other cases that cloud the issue even further.