Search Engine Advertising Trademark Claims

Allegations that the use of a third-party's trademark in this context constitutes trademark infringement have been litigated throughout the country. Some district courts have found that this form of advertising is likely to cause consumer confusion, while other district courts have rejected such claims. Compare Binder v. Disability Group, Inc., __ F.Supp.2d __, 2011 WL 284469 (C.D. Cal. Jan. 25, 2011) (finding “a strong likelihood of confusion” after bench trial) and Mary Kay, Inc. v. Weber, 661 F.Supp.2d 632 (N.D. Tex. 2009) (entering judgment after jury verdict of infringement) with Rosetta Stone Ltd. v. Google Inc., 730 F.Supp.2d 531 (E.D. Va. 2010) (finding no likelihood of confusion on summary judgment), appeal pending, Case No. 10-2007 (4th Cir.) and College Network, Inc. v. Moore Educ. Publishers, Inc., 2007 cv 615 (W.D. Tex.), aff'd __ F.3d __, 2010 WL 1923763 (5th Cir. May 12, 2010) (affirming jury verdict of no infringement).

In Network Automation, Inc. v. Advanced Systems Concepts, Inc., No. 10-55840 (9th Cir. March 8, 2011), the Ninth Circuit: 1) expressly held that the use of a trademark as a search engine keyword for the purpose of triggering advertisements is a “use in commerce” of that trademark under the Lanham Act; but 2) vacated a preliminary injunction, finding that the district court's analysis of consumer confusion in the Internet context was too narrow.