Wednesday, February 9, 2011

Law firm liable for trademark infringement when it purchased competing firm's name as a Google search term

There's been a lot of litigation over the past few years, mostly directed at Google itself, for selling trademarked search terms as part of Google's AdWords campaign.  A California federal district court just held that a law firm specializing in disability law was liable under the Lanham Act for purchasing the law firm name "Binder & Binder" as a Google search term in order to drive traffic to its website.  The case is Binder v. Disability Group Inc., C.D. Cal., No. 07-2760, (1/25/11).  From the BNA E-Commerce Law newsletter (password required):

The purchase of a competitor's registered trademark through Google Inc.'s AdWords program for sponsored keyword advertising on the search engine website constitutes use in commerce under the Lanham Act

The court went on to find likelihood of consumer confusion (a necessary element to the plaintiff's trademark infringement claim).

Having concluded that Binder & Binder held valid trademark registrations, the court applied the eight-factor test for likelihood of confusion as set forth in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 204 USPQ 808 (9th Cir. 1979). The court found that the factors addressing similarity of the marks, the strength of the plaintiff's marks, the similarity of services, the intent of the defendant, and marketing channels all weighed in favor of likelihood of confusion.

The court also found actual confusion, based on the results of a survey, witness testimony, and other evidence.

The court awarded Binder & Binder $292,000.00 in lost profits and enhanced damages for willful infringement by the competing law firm.

The lesson?  Don't try to enhance your law firm's business by purchasing a trademarked competitor's name through Google AdWords - at least not within the 9th Circuit.


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