With little fanfare, the presiding federal district judge in the GEICO v. Google case issued the muchanticipated and long-awaited written order on Google’s motion for judgment on the pleadings. As previously chronicled, the court, on August 25, 2004, issued an order denying, in part, the motions to dismiss of defendants Google, Inc. and Overture Services, Inc. In refusing to dismiss the federal trademark claims, the court rejected Google’s argument that it does not use GEICO’s trademarks in commerce. With this issue resolved, attentions turned to whether Google’s use of GEICO’s marks in its AdWords campaign created a likelihood of confusion.
This issue was addressed at a hearing in late December 2004, where the judge ruled that there was insufficient evidence of confusion to bar Google from displaying competitors’ advertising when users searched on Google using one of GEICO’s marks. However, the court did find, based on a detailed consumer survey, that there was confusion when the heading or text of the advertisement contained GEICO’s protected marks. At the hearing, the court promised to promptly issue a detailed, written order explaining its oral ruling. Some eight months later, an order—which did little to clarify the oral ruling— finally emerged.
Like the oral ruling, the written order indicates that a Lanham Act violation occurs when a competitor’s mark is used in the heading or text of the advertisement. The order does not, however, indicate whether Google—as opposed to just the advertiser—can be held liable for the violation. The court will not have to resolve this issue because, in September 2005, Google and GEICO announced that the case "has been resolved to the mutual satisfaction of the parties." In the wake of the settlement, GEICO is now pursuing its competitors, sending letters threatening law suits against insurance companies who purchased GEICO’s marks as keywords for search engine advertising.
This article does not constitute legal or other professional advice or services by JORDEN BURT LLP and/or its attorneys.
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