Intellectual Property Law

Alleged Confusion Over Mark Not Enough to Prevail in Google Keyword Case

By Michael Atkins

Daniel Jurin owns the trademark STYROTRIM for building materials.

Mr. Jurin sued Google, Inc., for false designation of origin for displaying “Styrotrim” as a commonly-searched term and making the term available for purchase to plaintiff’s competitors.

In particular, Mr. Jurin alleged that Google’s practice falsely misled persons in the building industry to believe that “Styrotrim” is a generic word and not a proprietary trademark.

On Google’s motion to dismiss, the Eastern District of California invoked the holding from Dastar Corp. v. Twentieth Centry Fox Film Corp., 539 U.S. 23 (2003), which requires a plaintiff asserting a false designation of origin claim to show a false or misleading suggestion as to “the producer of the tangible goods that are offered for sale.” 

Under this standard, the court found found Mr. Jurin’s allegations did not make the grade.

“In the context of false designation of origin claims, the Supreme Court has held the use of the word ‘origin’ as referring to a false or misleading suggestion as to ‘the producer of the tangible goods that are offered for sale.’ Here, despite Plaintiff’s many allegations, Plaintiff has failed to allege how Defendant’s use of the term ‘Styrotrim’ in its AdWords program, or display of Sponsored Links in response to an internet search for the term ‘Styrotrim’, creates a misleading suggestion as to the producer of the good. Plaintiff’s allegations seem to suggest that consumers may become confused as to Plaintiff’s affiliation with a Sponsored Link, or that advertisers may become confused as to the trademarked status of the term Styrotrim. However, even when accepting these possibilities as true, neither scenario addresses confusion regarding the producer of the good such as to warrant a claim for false designation of origin under the Lanham Act.”

The court also rejected Mr. Jurin’s attempt to establish confusion as to source through last year’s Second Circuit holding against Google. 

Inapposite, the court found.

“Plaintiff argues that this Court should rely on the Second Circuit’s holding in Rescuecom, Inc. v. Google, Inc., 562 F.3d 123 (2d Cir. 2009), which ruled in favor of a plaintiff challenging Google’s AdWords program as a violation [of] trademark protection under the Lanham Act. However, the decision in Rescuecom relied almost entirely on an analysis of the ‘use in commerce’ prong of the Lanham Act as defined by 15 U.S.C. § 1127. Such language is not in question here. Any reference by the court to the ‘confusion’ prong of a false designation of origin claim existed as mere dicta in which the Court ruling in Rescuecom is nonapplicable and nonpersuasive here.”

The case cite is Jurin v. Google, Inc., 2010 WL 3521955, No. 09-3065 (E.D. Calif. Sept. 8, 2010) (England, J.).

Full post as published by Seattle Trademark Lawyer on September 21, 2010 (boomark / email).