On August 8, 2005, Judge Leonie M. Brinkema, of the U.S. District Court for the Eastern District of Virginia, issued an opinion confirming her mid-trial bench ruling of December 15 of last year in this important trademark case.

The ruling was widely seen as a victory for Google, although it did deliver a limited victory to the insurance company GEICO in its lawsuit over the use of GEICO’s trademarks in keyword-triggered “Sponsored Link” advertising.

Specifically, Judge Brinkema reiterated that GEICO had (1) failed to establish a likelihood of confusion stemming from Google’s use of GEICO’s trademarks merely as a keyword to trigger paid advertisements, and (2) failed to produce sufficient evidence to proceed on the question of whether the paid advertisements that do not reference GEICO’s marks in their headings or text cause confusion in violation of federal or state law.

On the other hand, Judge Brinkema ruled that GEICO had established a likelihood of confusion, and therefore a Lanham Act violation, “solely with regard to those Sponsored Links that use GEICO’s trademarks in their headings or text.”

Notably, the court explained that Google may be liable for trademark infringement for ads that appeared during the period before Google began blocking such usage, as well as ads that “slipped or continue to slip through Google’s system for blocking the appearance of GEICO’s mark in Sponsored Links.”

Judge Brinkema’s opinion does not address several remaining issues in the case, including whether Google itself is liable for the Lanham Act violations resulting from its advertisers’ use of GEICO’s trademarks in the headings and text of their Sponsored Links.

According to Judge Brinkema, this very significant issue will need to be resolved through an agreement of the parties or by a continuation of the trial. The parties were given until September 7 to advise the court whether the trial will continue.

In preliminary rulings in both this case and the recent American Blind case in the Northern District of California, the courts held that keyword-triggered advertising can be deemed commercial trademark use by the search engines (in contrast to the recent ruling by the Second Circuit on trademark use regarding pop-up ads in the 1-800 Contacts case).

This new opinion contains a detailed discussion of GEICO’s survey evidence, and highlights problems of proof in these cases when one gets to the next stage. Ultimately, Judge Brinkema held that GEICO’s survey evidence failed to establish a likelihood of confusion (and hence infringement) when the keyword-triggered ads did not feature GEICO’s trademarks in their headings.

On the other hand, the survey was acceptable to prove likelihood of confusion when the ads did feature GEICO’s marks.

Arent Fox is closely monitoring developments in this case and other pending cases involving keyword-triggered advertising.

For more information, contact:

Sheldon H. Klein
202-857-6404
klein.sheldon@arentfox.com

Jason J. Mazur
202-715-8409
mazur.jason@arentfox.com

David S. Modzeleski
202-857-6073
modzeleski.david@arentfox.com