In the ongoing battle surrounding the use of trademarks as
keywords for online searching, trademark owners scored a victory.
In a recent decision, the Central District of California ruled that
a law firm's purchase of a competitor's trademark as a
Google AdWord was "use in commerce" and likely to cause
confusion. The Court awarded damages for willful infringement and
found the case was exceptional, entitling the plaintiff to seek
attorney fees and costs. Binder v. Disability Group Inc.
C.D. Cal., No. 2:07-cv-02760 (1/25/11).
Plaintiff Binder & Binder, a law firm specializing in Social
Security benefit claims, owns three federal trademark registrations
in its name and logo. Disability Group of Santa Monica, a law firm
that also handles Social Security benefit claims, purchased the
keyed term "Binder and Binder" through Google AdWords.
Binder & Binder sued for trademark infringement, false
advertising and California unfair competition.
The Court ruled that the defendant's purchase of "Binder
& Binder" as an AdWord, and the resulting Google
advertising keyed to the mark, constituted "use in
commerce," a requirement to finding a violation under the
Lanham Act. The Court found the similarity of the trademark and
AdWord, the similarity of the services offered, the intent of
Disability Group and the overlap in market channels all weighed in
favor of finding a likelihood of confusion. In addition, the Court
found evidence of actual confusion.
The Court ruled that the Disability Group "used
Plaintiffs' mark in their advertising campaign through Google
to market their business in a manner that was likely to confuse
potential clients into thinking that they were being led to
Plaintiffs' website."
In a 2008 case, a Massachusetts District Court also found that
purchasing a keyword met the "use in commerce"
requirement, but, in that case, the Court ruled there was no
likelihood of confusion because the content of the Defendant's
advertising clearly distinguished itself from the trademark
holder's services. Boston Duck Tours, L.P. v. Super Duck
Tours, LLC, Civ. A. No. 07-11222 (D. Mass. Dec. 5,
2007).
Clients should consider the Binder Court's award of lost
profits, enhanced damages and the possible recovery of attorney
fees and costs when they assess the risks posed by purchasing
another company's name or trademark for keyword-triggered
advertising. If you believe your trademark is being improperly used
as a keyword, Google AdWords and others have procedures for
restricting such use.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
