Quote of the Day - The trademark can't go anywhere else, ... We exclusively own the radiator, the flying lady and Bentley.
Rescuecom, a company that's giving the Geek Squad a run for its money, sued Google last year because the 800-pound gorilla search engine allowed others to buy the name "Rescuecom" for its AdWords program, despite the real Rescuecom's trademark on the name. Filed in federal court, the lawsuit was dismissed by the court because Rescuecom apparently didn't actually use the trademark.
According to the Court, "there is no allegation that defendant places plaintiff's trademark on any goods, containers, displays, or advertisements or that its internal use is visible to the public."
That omission makes it difficult to win a trademark case. It's one thing to have one; it's quite another to use it in the stream of commerce according to the Court. Defendant Google argued that it could use the Rescuecom name to trigger delivery of AdWords that feature companies who compete directly with Rescuecom. Google claimed "fair use" of Rescuecom's name because it was only using Rescuecom's name internally in order to generate its AdWords when it also featured a link to Rescuecom's site.
The Court argued it was no different than a grocery store grouping competing products together on a shelf, which we all should know is not a trademark violation. There's just one difference; when I go to the grocery store, I don't tell the store manager that I want to see a particular product and then expect to have the manager show me the entire range of products. I expect to get what I asked for. Google's argument is that it gives you that and more - if you don't like it, I presume, the company would tell you to use another search engine.
Easy for Google to say.
These cases in the Second Circuit are all over the map, and you can look for this case to be appealed. Certainly the next such case won't be filed in the Second Circuit. Eventually, the matter will make it to the Supreme Court and we'll get some definitive law. In the meantime, if you want visibility on the Internet, start a blog.