For a change, Google isn’t the target of a trademark infringement...
For a change, Google isn’t the target of a trademark infringement suit for sales of competitors’ keywords. The U.S. Dist. Court, Minneapolis, ruled that an infringement case can proceed to trial against a real estate website that bought keywords…
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based on a realty group’s trademark on Google and Yahoo. TheMLSOnline.com bought sponsored-link keywords on Google for Midwest real-estate brokerage firm Edina Realty, including “Edina Realty,” “EdinaRealty.com,” “EdinaRealty,” “EdinaReality.com” and variants. The website bought similar keywords on Yahoo, though Yahoo has stopped allowing bidding on competitors’ keywords since the suit was filed. In a search for Edina, TheMSLOnline’s sponsored links showed up above Edina’s own website in results. The court said 18-32% of users searching with Edina-themed keywords on Google have clicked on TheMLSOnline ads instead of Edina’s website, the court said. The website also used Edina’s trademark in hidden text -- white text on a white background. The court denied the website’s motion to dismiss testimony from Edina’s expert witness, saying Akshay Rao is an expert in consumer behavior and marketing and didn’t need to do a survey on consumer confusion to submit testimony. The “plain meaning of the Lanham Act,” which governs trademark use in commerce, argues for viewing the purchase of search terms as a “use in commerce,” the court said, disagreeing with the site. On the other motion for summary judgment, claiming no likelihood of confusion, the site argued that its purchase of Edina’s trademark for search keywords is “nominative fair use,” meaning use of the mark doesn’t imply sponsorship or endorsement by the trademark holder. The court found a factual dispute over whether the website was trying to “pass off” itself as associated with Edina, noting that Google made the site change its sponsored-link text multiple times to cut likelihood of confusion. A handful of phone calls and e- mails to TheMLSOnline, suggesting consumers assumed it was linked with Edina, “are sufficient to raise a genuine issue of material fact” in considering summary judgment, the court said. It denied partial summary judgment on Edina’s trademark infringement claims, but also denied summary judgment to the site. TheMLSOnline’s claim that its use of the trademark is nominative fair use doesn’t hold up, given alternative phrases it could have used in ads, such as “Twin Cities real estate,” the court said. Edina’s claim of trademark dilution failed for lack of evidence, the court added.