By Megan Rahman
Rosetta Stone Inc. and Google Inc. settled their trademark infringement suit Wednesday [Oct. 31st] in the Eastern District of Virginia (case no. 1:09-cv-00736). The suit, filed by Rosetta Stone (and previously posted about here and here and here), revolved around the treatment of trademarked terms in Google's AdWords advertising program, under which persons other than the mark owner can bid to have their site appear in searches for the trademarked terms. Rosetta Stone had alleged that Google's AdWords software violated Rosetta Stone's trademarks by selling online ads featuring Rosetta Stone's trademarked names.
The parties filed a joint stipulation of dismissal asking the court to dismiss the case with prejudice. No further details regarding the settlement agreement were released.
The companies announced in a joint statement today that they "have agreed to dismiss the three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet."
While the case has now settled, it did allow for the Fourth Circuit's April opinion (previously posted about here), vacating the Judge Lee's 2010 summary judgment ruling, that clarified that trademark infringement analysis in a keyword advertising context will follow traditional trademark standards applicable to likelihood of confusion, rather than specialized standards. Proving likelihood of confusion in these cases is a fact-specific inquiry, which will require evidence (survey or otherwise) suggesting that consumers are likely to be confused by the manner in which a trademark is used as a keyword to trigger advertising links and/or in the text of the links themselves.
© Troutman Sanders LLP. ADVERTISING MATERIAL. These materials are intended to inform you of developments that may impact your business and are not to be considered legal advice or legal opinion, nor do they create a lawyer-client relationship. Information included about previous case results does not assure a similar future result.
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