Rosetta Stone Trademark Infringement Case Against Google is Revived

By Joseph Mandour on April 19, 2012

LawyerLos Angeles – The U.S. Court of Appeals for the Fourth Circuit has given Rosetta Stone the opportunity to once again try and prove that Google committed trademark infringement on several of its trademarks.

In 2009, the language software maker sued Google for trademark infringement and accused the web search giant of selling trademarked Rosetta Stone phrases to “phony” or “copycat” software makers who in turn were Rosetta Stone’s competitors. Rosetta Stone accused Google of allowing third party companies to purchase keywords such as its trademarked “Rosetta Stone” and “language library” so that when these words are searched sponsored ads of competitors appear. In response to this accusation a representative of Google stated, “We think that the legitimate use of trademarks as keyword triggers helps consumers to make more informed choices” and “For what remains of the case, we’re confident we will prevail on both the merits and the law.”

In 2010, the U.S. District Court for the Eastern District of Virginia dismissed Rosetta Stone’s lawsuit along with the allegations against Google. The Eastern District Court of Virginia concluded that selling keywords does not cause confusion to consumers searching for the goods of Rosetta Stone. However, this week in Richmond, Virginia a panel of three judges in the Court of Appeals unanimously overturned a majority of the lower court’s decision and now the case can be heard in federal court. Rosetta Stone’s accusations that Google committed trademark infringement and negatively impacted the Rosetta Stone brand will be reviewed once again.

Michael Wu Rosetta Stone’s trademark attorney stated, “We’re deeply concerned about trademark infringement including the rampant problem of inline counterfeiting confusing consumers regarding our products.” In its ruling, the Fourth Circuit of Appeals is directing the lower court to directly review just when Google began to “dilute” the trademarks owned by Rosetta Stone and if such trademarks were considered to be famous at the time.

In the original complaint filed against Google, Rosetta Stone claimed, “In April, 2004, Google adopted a policy change that permitted its customers to bid on third-party trademarks as keywords, even though its previous policy did not permit this if the trademark owner objected.” Rosetta Stone claimed that Google changed its policy so it would increase its revenue by an estimated billion dollars.

Companies such as Ford Motor, Coach and 1-800 Contacts are among the many supporters of Rosetta Stone as these large corporations have previously filed similar lawsuits against Google which were based on confusingly similar sponsored links. If the outcome of the case sides with Rosetta Stone then Google may be in jeopardy of losing a large portion of its search revenue.

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