I wrote a couple of days ago — and once again got hit hard by a learned commenter who disagrees with my view of the matter — about the Second Circuit’s ruling in the Rescuecom v. Google case that keyword advertising can be trademark use giving rise to an action to infringement.  That decision is dated the same day as my blog post, April 6th.  I wrote, “[U]ntil now, district courts in the Second Circuit have held that the use of trademarks as a term was not ‘trademark use.'”

romeo-juliette-by-andriolloNot quite right, it turns out.  For on March 26th, I learned yesterday via the New York Law Journal, Judge Thomas P. Griesa in the Southern District of New York anticipated the Second Circuit, at least insofar as acknowledging the limitations of that broad rule, and rejected a motion to dismiss based on the “keywords aren’t not trademark use” argument.

Ruling in a case with the felicitious caption of Romeo & Juliette Laser Hair Removal, Inc. v. Assara I LLC, Judge Griesa did not anticipate the Second Circuit’s legal ruling, however.  Rather, he focused on another often-overlooked point:  The difference between a keyword that generates a competitor’s otherwise inoffensive ad, and one that results in an ad that is it itself potentially confusing because it uses the keyword itself in a way not justifiable as a fair use.

According to the opinion, when a user searched for “romeo & juliette laser,” presumably the first search someone looking for romance-enhancing hair removal would make, the result came up with an ad like this:

Needless to say, neither the Capulets or the Montagues authorized this use of their trademark by their competitor, Assara.  Nor is their any obvious justification for it under trademark law or otherwise.  This kind of use, Judge Griesa easily determined, was not immunized even under the then-current understanding of the Second Circuit’s 1-800 decision:

Defendants argue that they are entitled to summary judgment because any use of the mark in this context was non-infringing.  In support of this argument, they invoke the Second Circuit’s holding that a “company’s internal utilization of a trademark in a way that does not communicate it to the public” is non-infringing.  1-800 Contacts, 414 F. 3d at 109.  Thus if defendants had paid Google to display Assara’s advertisement in response to a search for “Romeo & Juliette,” without having the advertisement itself contain a reference to Romeo & Juliette, that would not have been a ‘use’ of the mark. . . . In this case, however, plaintiff alleges that the use of its mark was in Assara’s advertisement itself, as well as on the face of Assara’s website.  Therefore, the cases approving of the “internal utilization” of a trademark are inapposite.

So they are, and, by virtue of the Circuit’s decision earlier this week, they may be more — or less — than that, too.  The Romeo & Juliette decision is here.

By Ron Coleman

I write this blog.

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