Geico v. Google
(E.D. Va. Dec. 15 2004) (On Oral Arguments).
Google’s use of a trademarked term for advertising keywords does not create customer confusion — and thus does not violate the Lanham Act. However, the use of the trademarked term itself in sidebar ads does create customer confusion and may violate the Lanham Act.
Geico has sued Google for trademark infringement. Geico is upset that Google users may find a competitor’s ads after searching for "Geico." Essentially, the issue is whether the use of trademarks as keywords for paid advertising violates the Lanham Act. A bench trial began last week in U.S. District Court in Alexandria Virginia.
As plaintiff, Geico first presented case-in-chief (excluding damages). At the close of Geico’s case, Google asked the court to grant judgment as a matter of law under Rule 52(c).
Federal Rules of Civil Procedure Rule 52(c) Judgment on Partial Findings. If during a trial without a jury a party has been fully heard on an issue and the court finds against the party on that issue, the court may enter judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue . . . Such a judgment shall be supported by findings of fact and conclusions of law.
In its oral decision on the motion, the court sided with Google in-part. First, the court noted that Geico had not established that the "mere use of its trademark" as an advertising keyword violates the Lanham Act.
Having heard the plaintiff’s case, the Court is satisfied that the plaintiff has not established that the mere use of its trademark by Google as a search word or keyword or even using it in their AdWord program standing alone violates the Lanham Act because that activity in and of itself, there’s no evidence that that activity standing alone causes confusion.
However, on the issue of whether Google’s sponsored ads that actually use GEICO’s name in the title or text of the ad, the court found that the plaintiff had presented sufficient evidence of confusion to allow the case to continue.
However, as to the narrow issue of whether the plaintiff has presented sufficient evidence at this point to let the case continue on the issue of whether Google is liable for violating the Lanham Act for those sponsored ads using GEICO’s name in either the title or the text that appear next to a — and a GEICO organic listing as a result of the AdWord program, at this point, there has been enough evidence of confusion as a result of Dr. Ford’s report to deny the motion and to allow the case to continue so the Court can consider the defendant’s evidence as to whether or not this situation creates a likelihood of confusion in the marketplace and, if so, what damages might be appropriate.
When presenting its case Google will continue to argue that it has a policy in place to prevent the use of the GEICO trademark in competitor’s ads — and that Google should not be held liable when those competitors violate the policy.
The case has been stayed until early January — awaiting the judge’s written decision.
Is Google a stand-up company or what! Most defendants who are being sued over their core technology would take any available legal self-help measures. Is anyone surprised that a Google search for Geico still turns up Geico? [Link]