Yes, this could be illegal. When Google actively sells the name 'Rescuecom' to other companies for advertising, it is 'using' Rescuecom's trademark to make money. This isn't just some secret computer process; it's a business deal. This case is different from a past case where a program just showed random pop-up ads based on general categories. Here, Google is specifically selling the trademark as an advertising tool. Rescuecom's lawsuit is valid and should be allowed to continue to see if Google's actions actually confuse customers.

Yes, Google might have broken the law by selling and suggesting Rescuecom's trademark to other companies for their ads. When Google does this, they are 'using the trademark in commerce' under the Lanham Act. The lower court was wrong to dismiss the case based on an earlier case that was different. 

The earlier case was about pop-up ads, but Google's ads are different because Google actually sells specific trademarked words to advertisers. Just using a trademark internally, like in a computer program, might not break the law. But Google went further by selling Rescuecom's trademark to other companies.

Rescuecom says Google's actions are likely to confuse people about whether competitors' ads are connected to or approved by Rescuecom, especially when the ads look like normal search results and not paid ads. The court can't say if Google's actions are actually confusing or not at this stage. They have to assume what Rescuecom says is true for now. The case will go back to the lower court to look at the facts more closely.

Rescuecom has adequately alleged that Google's selling and suggesting of Rescuecom's trademark to other companies for their ads constitutes 'use in commerce' under the Lanham Act. By selling specific trademarked words to advertisers, Google goes beyond mere internal use of a trademark; it uses the trademark to generate advertising revenue. The lower court was incorrect to dismiss the case based on an earlier case involving pop-up ads, which is distinguishable from the present case.

At this stage, we must assume Rescuecom's allegations are true, including the claim that Google's actions are likely to confuse consumers about whether competitors' ads are connected to or approved by Rescuecom, especially when the ads resemble normal search results rather than paid advertisements. Therefore, the dismissal of Rescuecom's complaint is reversed, and the case is remanded for further proceedings.

On a motion to dismiss, the court must "accept as true all factual allegations set out in the plaintiff's complaint, draw inferences from those allegations in the light most favorable to the plaintiff, and construe the complaint liberally."

—ruled in favor of a plaintiff challenging Google's AdWords program as a violation trademark protection under the Lanham Act.

—distinguishing Google's advertisements from WhenU's advertisements by noting that Google sold specific trademarked keywords to advertisers looking for sponsored ad space, while WhenU took users' inputs, trademarked or not, to match them with relevant advertisers, without offering any particular trademarks for sale

—providing analysis of the meaning of "use in commerce" in Section 1127 as compared to a "use in commerce" that amounts to trademark infringement

Advertisers pay Google based on the number of times Internet users "click" on the advertisement, so as to link to the advertiser's website.

—the Ninth Circuit ruled that a sufficient use of Network Automation's mark had been made by Advanced Systems, and that it "agree [d] with the Second Circuit that such use is a `use in commerce'under the Lanham Act. "

It also conceded that an earlier Second Circuit case had applied the "use in commerce" requirement to a case of trademark infringement.

Plaintiff has also adequately alleged violations of the Lanham Act.[9] The Lanham Act "impose [s] liability for unpermitted `use in commerce'of another's mark which is `likely to cause confusion, or to cause mistake, or to deceive'`as to the affiliation... or as to the origin, sponsorship or approval of his or her goods or services... by another person.'"

Yes, a search engine's practice of recommending and selling a competitor's trademark as a keyword to trigger advertising constitutes a 'use in commerce' under the Lanham Act. The court distinguished this case from its precedent in *1-800 Contacts*, where the defendant's software merely used a website address in an internal directory to trigger pop-up ads for a category of goods, without selling the keyword to advertisers. Here, Google actively recommends and sells Rescuecom's actual trademark to advertisers, which is a commercial transaction that fits squarely within the Lanham Act's definition of using a mark 'in the sale or advertising of services.' The court rejected Google's argument that this was a purely 'internal use,' reasoning that the recommendation and sale to third-party advertisers is an external, commercial use. Therefore, Rescuecom adequately pleaded an actionable claim for trademark infringement, and the case should proceed to determine whether this use causes a likelihood of consumer confusion.

Yes, Google's recommendation and sale of Rescuecom's trademark to its advertising customers, as well as its Keyword Suggestion Tool, constitute a 'use in commerce' under the Lanham Act because Google uses and sells Rescuecom's mark in the sale of its advertising services rendered in commerce. The District Court's dismissal based on the understanding of precedent was incorrect, and the case is remanded for further proceedings. 

The court distinguished Google's advertisements from the pop-up ads at issue in the 1-800 Contacts case, noting that Google sold specific trademarked keywords to advertisers looking for sponsored ad space, while the defendant in 1-800 Contacts did not offer any particular trademarks for sale. The court also provided analysis of the meaning of 'use in commerce' in Section 1127 as compared to a 'use in commerce' that amounts to trademark infringement. 

While Google's use of Rescuecom's mark in its internal search algorithm alone may not constitute an actionable trademark use, Google's recommendation and sale of Rescuecom's mark to its advertising customers are not internal uses. The 1-800 Contacts decision did not imply that use of a trademark in a software program's internal directory precludes a finding of trademark use. Rather, the particular use at issue in that case did not constitute a use in commerce because the defendant was not using the plaintiff's trademark as the basis of a commercial transaction.

Rescuecom has alleged that Google's actions are likely to cause confusion or mistake as to the affiliation or sponsorship of the competitor ads that appear in response to searches for 'Rescuecom.' This is particularly so when the sponsored links appear in a manner which makes them appear to be the most relevant search results rather than paid advertisements. Whether Google's actual practices are benign or likely to cause confusion is a matter to be determined in further proceedings. At this stage, the court must accept Rescuecom's allegations as true.

Yes, Google's recommendation and sale of Rescuecom's trademark to its advertising customers, as well as its Keyword Suggestion Tool, constitute a 'use in commerce' under the Lanham Act because Google uses and sells Rescuecom's mark in the sale of its advertising services rendered in commerce. The District Court's dismissal based on the understanding of precedent was incorrect, and the case is remanded for further proceedings.

We distinguished Google's advertisements from the pop-up ads at issue in the 1-800 Contacts case, noting that Google sold specific trademarked keywords to advertisers looking for sponsored ad space, while the defendant in 1-800 Contacts did not offer any particular trademarks for sale. We also provided analysis of the meaning of 'use in commerce' in Section 1127 as compared to a 'use in commerce' that amounts to trademark infringement.

While Google's use of Rescuecom's mark in its internal search algorithm alone may not constitute an actionable trademark use, Google's recommendation and sale of Rescuecom's mark to its advertising customers are not internal uses. The 1-800 Contacts decision did not imply that use of a trademark in a software program's internal directory precludes a finding of trademark use. Rather, the particular use at issue in that case did not constitute a use in commerce because the defendant was not using the plaintiff's trademark as the basis of a commercial transaction.

Rescuecom has alleged that Google's actions are likely to cause confusion or mistake as to the affiliation or sponsorship of the competitor ads that appear in response to searches for 'Rescuecom.' This is particularly so when the sponsored links appear in a manner which makes them appear to be the most relevant search results rather than paid advertisements. Whether Google's actual practices are benign or likely to cause confusion is a matter to be determined in further proceedings. At this stage, we must accept Rescuecom's allegations as true.

Rescuecom Corp. v. Google, Inc.

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