Rescuecom Corp. v. Google Inc.

Quick Summary

Rescuecom owns the mark “RESCUECOM.” Google’s ad system suggested and sold that mark as a keyword to Rescuecom’s rivals. The Second Circuit said this can be a “use in commerce” under the Lanham Act. The suit could go forward; Rescuecom still had to prove likely confusion.

Issues

• Is it infringement when a search engine sells a trademark to competitors to trigger ads?
• Does selling/recommending a mark as a keyword amount to “use in commerce” even if the mark isn’t shown to users?

Rules

• A trademark owner can sue if the search engine recommends/sells the mark to trigger ads likely to confuse users.
• Use in commerce: Selecting, storing, recommending, and selling the mark to advertisers can qualify, subject to proof of confusion.
• 1-800 Contacts v. WhenU is different: there the defendant did not use or sell the mark.

Arguments

Judgment (Second Circuit)

• Selling/recommending the trademark to advertisers can be use in commerce.
• WhenU distinguished: there was no sale or use of the mark there.
• Neutral shelf placement analogy rejected; ad-triggering sales may mislead.
• Case reinstated; Rescuecom must still prove likelihood of confusion.

Citation: 562 F.3d 123 (2d Cir. 2009).

Ratio (Core Principle)

A search engine that recommends and sells a trademark as a keyword to competitors engages in trademark use in commerce; liability depends on confusion evidence.

Why It Matters

• Sets ground rules for online advertising and trademark use.
• Guides platforms on keyword tools and brand bidding.
• Clarifies the scope of Lanham Act in digital markets.

Key Takeaways

1. Selling a competitor’s mark as a keyword can be trademark use.
2. WhenU doesn’t shield conduct that uses and sells the mark.
3. Confusion analysis remains essential to ultimate liability.

Mnemonic + 3-Step Hook

Mnemonic: “SELL = USE” — If you sell the mark for ads, you likely use it in commerce.

• Suggesting the mark counts.
• Exchange of value = commercial use.
• LL—look for likelihood of confusion to decide liability.

IRAC Outline

Glossary

Use in Commerce

Commercial use of a mark covered by the Lanham Act; may include selling the mark as a keyword.

Keyword Advertising

Ads triggered by search terms purchased by advertisers.

Likelihood of Confusion

Legal test to judge if consumers are likely misled about source/sponsorship.

WhenU Case

Prior Second Circuit case where the defendant did not use or sell the trademark.

FAQs