While in 2010, a Virginia district court had dismissed the case holding that the sale of keywords was not likely to confuse consumers and trademark infringement did not apply, on Monday, the U.S. Court of Appeals for the 4th Circuit overturned much of the dismissal and revived the claims that Google was committing direct trademark infringement by diluting the Rosetta Stone brand.
The court mentioned “A reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result from its use of the marks.”
Rosetta Stone claims that Google profited by allowing the rivals of Rosetta Stone to purchase trademarked keywords that generated links to rival sites when used for internet search. By allowing advertisers to by “sponsored links” on the search results page, Google ensured that people searching for “Rosetta Stone” ended up being redirected to competitors.
The language-software maker presented the depositions and testimonies of five consumers who attempted to buy bogus Rosetta Stone software after Google started allowing the use of trademarks in the text of sponsored links.
The three judge panel of the 4th Circuit Appeals Court also cited an internal Google study that found even sophisticated consumers were sometimes unaware that sponsored links were advertisements.
The appeals court also reinstated the trademark dilution claims against Google and directed the lower court to reconsider when Google first started its alleged dilution, and whether the trademark of “Rosetta Stone” Inc was famous at that time.
If that is the case, then the scene is getting vicious against Google indeed, for Google started the practice of selling keyword combinations of trademarks owned by other companies in 2009, and at that time, indisputably, Rosetta Stone was already known as one of the world’s leading language-software developers.
The case is Rosetta Stone Ltd v. Google Inc, U.S. Court of Appeals for the 4th Circuit, No. 10-2007.