Reprinted with permission from FindLaw.com
In a recently issued press release, Rescuecom states, with respect to its long-running lawsuit against Google, that it "can finally declare victory in its effort to protect how its trademark 'Rescuecom' is treated on Google's search engine." As a consequence, Rescuecom has dismissed its lawsuit. But was this a true "victory" for Rescuecom?
Rescuecom claims that in early 2004, prior to going public, Google changed its trademark policy to allow anyone willing to spend the money to use the trademarks of others to trigger their own sponsored link advertisements and that Google began suggesting certain trademarks, including Rescuecom's mark, to prospective advertisers via its Keyword Suggestion Tool. Rescuecom notes that during its litigation against Google, a federal appellate court rejected Google's argument that its "auction" of Rescuecom's mark to the highest bidder was not a trademark use of that mark.
Rescuecom states that Google has since changed its policy to disallow the use of trademarks within the text of a sponsored link (with some exceptions), and that Google "has recently" confirmed that it has removed Rescuecom's trademark from the Keyword Suggestion Tool. Thus, Rescuecom supposedly accomplished most of what it sought in its lawsuit and just dismissed its case.
But was this really a "recent" and pristine victory?
Well, in terms of the "recent" aspect, there have been indications that Google actually stopped using Rescuecom's mark in its Keyword Suggestion Tool as far back as 2005. If so, what is going on, and why did Rescuecom decide now to dismiss its case?
The answer may stem from reports and acknowledgement that Rescuecom currently is engaged in litigation with competitor Best Buy, the owner of the "Geek Squad" mark. In that case, Rescuecom apparently seeks a declaratory judgment that it is entitled to use the term "geek squad" as a keyword for a sponsored link which supposedly suggests comparative advertising.
One certainly can see a potential inconsistency of Rescuecom's postions in its Google and Best Buy cases. The current dismissal of its case against Google allows Rescuecom to proceed with its arguments against Best Buy in a more unfettered way, and ironically, potentially echoing arguments Google would make against Rescuecom if the case against Google continued to proceed. Indeed, it is difficult to be on both sides of the fence if a court determines that a party is taking inconsistent positions.
Eric J. Sinrod is a partner in the San Francisco office of Duane Morris. His focus includes information technology and intellectual-property disputes. This column is prepared and published for informational purposes only, and it should not be construed as legal advice. The views expressed in this column are those of the author and do not necessarily reflect the views of the author's law firm or its individual partners
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