After six years of battling with Google in the courtroom over Google's sale of Rescuecom's trademarked adwords, Rescuecom has dropped its trademark infringement lawsuit.
As we previously wrote
, in April 2009, the Second Circuit Court of Appeals held that Google's sale of trademarked adwords constituted "use in commerce."
This holding was a major victory for Rescuecom as some courts had previously been readily dismissing adwords cases on this issue at the very early stages of litigation. The case was remanded to district court where Rescuecom next had to prove that the sale of trademarked adwords also constituted "likelihood of confusion," the second prong of a trademark infringement action. The case has been closely followed by both the business and legal communities since the issue of whether use of trademarked adwords can constitute trademark infringement is largely unsettled.
So why would Rescuecom simply drop its important case after years of litigation?
Apparently Rescuecom found itself on both sides of the adwords action. Rescuecom purchased the Google adwords "geek squad" to optimize its own search engine ranking. In October 2009, Best Buy demanded that Rescuecom stop using "geek squad" as an adword. Rescuecom then quietly brought a declaratory judgment action in the Northern District of New York claiming that its use of the "geek squad" adwords was legitimate. Best Buy counterclaimed, alleging trademark infringement and substantially the same allegations Rescuecom had asserted in its Google case. That case is still pending. It appears, however, that Rescuecom found it difficult to argue both sides of the issue. Unfortunately, this means the Rescuecom case will not result in the precedent many were waiting for.
Interestingly, however, this issue is still percolating internationally. In September 2009, the European Court of Justice's Advocate General issued an advisory opinion
which held that use of trademarked keywords by Google or third-party users through Google's AdWords program did not constitute trademark infringement. Instead, the Advocate General found that Google was providing information society services. The advisory opinion, however, is not binding and several cases are still pending in European courts, including the heated adwords lawsuit between Louis Vuitton and Google.