Search engines Trademark use

Once they follow the instructions to click here, and they access the site, they may well realize that they are not at a PEI-sponsored site. However, they may be perfectly happy to remain on the competitors site, just as the Brookfield court surmised that some searchers initially seeking Brookfields site would happily remain on West Coasts site. The Internet user will have reached the site because of defendants use of PEIs mark. Such use is actionable. [665] 2

In the context of a referential or nominative type of use, the application of the traditional multi-factor test is difficult because often many of the factors are either unworkable or not suited or helpful as indicators of confusion in this context. [5] 3

(1) the distinctiveness of the senior mark (2) the similarity of the two marks (3) the similarity of the goods or services that the marks identify (4) the similarity of the facilities employed by the parties to transact their business (5) the similarity of the advertising used by the parties (6) the defendants intent in adopting the same or similar mark (7) actual confusion (8) the quality of the defendants product (9) the sophistication of the consuming public 4

Consideration of the similarity of the marks will always suggest the presence of consumer confusionthe mark used will always be identical because, by definition, nominative use involves the use of anothers trademark in order to describe the trademark owners own product. [5] 5

The strength of the plaintiffs mark is also of limited probative value as to the confusion created by a nominative use.... [I]n the nominative use context, the defendant is not passing off its products under the plaintiffs mark but rather is using plaintiffs mark to refer to plaintiffs own products. The strength of the mark is often not informative as to confusion in this context. [5] 6

The district court also did not address the two factors relating to the trademarked goodsthe similarity of the parties goods and services and the quality of the defendants goods. Because Google offers no products or services under Rosetta Stones mark, these factors are irrelevant in this context. [5] 7

When considering the similarity of facilities, courts are trying to determine if confusion is likely based on how and to whom the respective goods of the parties are sold.... As Google distributes no respective product via the Internet or other outlets, this factor does not aid the likelihood-of- confusion analysis in this case. [5] 8

[W]e conclude that a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result from its use of the marks. [6] 9

In granting summary judgment to Google because Rosetta Stone has not met the burden of showing that summary judgment is proper as to its contributory trademark infringement claim, the district court turned the summary judgment standard on its head. [12] 10

1. WhenU doesnt place the marks on goods 2. WhenU doesnt use plaintiffs trademark at all: it uses its URL 3. WhenU doesnt make trademark use of the URL: it doesnt use it as a source identifier, but only as an address 4. WhenU never displays the URL or trademark to the user 5. WhenU doesnt display the URL or trademark to its advertising clients 11

Googles utilization of Rescuecoms mark fits literally within the terms specified by 15 U.S.C. § According to the Complaint, Google uses and sells Rescuecoms mark in the sale... of [Googles advertising] services... rendered in commerce. § [682] 12