If trademark / Internet cases are not at the top of things to stay on top of in late December, you may have missed this potentially important decision giving Google an out of the box win in the battle (not, as suggested by the CNET story’s headline, the war) between its own quaint self and insurance mass-marketer GEICO. This is a case being watched by all of us practicing in this area.
Indeed we have a case in our office in which we represent a California Internet-based retailer accused (quite falsely, as a fact matter) of little more than using a “competitor’s” domain name as a Google search term. Not only did this not happen — and we have the proof from Google Itself that our client ordered no such keyword purchase. Not only is our adversary’s name not even remotely a trademark. No, the real point is that even if it had happened; even if it were a trademark — this would almost certainly not be trademark infringement.
I have long been a critic of the over-use of the Lanham Act as a way to either stifle dissent or use the courts as a way to compete unfairly. My humble little opinion is that the bad guy here is Professor McCarthy’s dubious doctrine of so-called “initial interest confusion.” (At about the same time, a couple of fellows from a quaint little New York firm published a more extensive article. Mine’s easier to read.) I have been able to turn the attention of my subcommittee at the International Trademark Association — that would be the esteemed Online Trademark Use Subcommittee of the INTA Internet Committee (yawn) — to this topic, and I seem to have found an audience. INTA tends to be very pro-plaintiff in the trademark context, but I guess it doesn’t hurt that the head of the Subcommittee is Google’s top trademark lawyer.
Anyway, I see this as a hopeful sign if you’re interested in free expression and free competition.