A few years back Rescuecom sued Google federal district court (N.D.N.Y.) for Lanham Act claims of trademark infringement, trademark dilution, and false designation of origin pursuant to 16 U.S.C. §§ 1114 & 1125. Rescuecom’s claim rested on Google’s sale and use in its AdWords program of the Rescuecom mark, Rescuecom arguing that allowing its competitors to trigger views of their own ads in response to searches for Rescuecom violated its rights as a mark owner. The trial court dismissed Rescuecom’s complaint on Google’s 12(b)(6) motion, ruling that Google did not use Rescuecom’s mark in commerce. Rescuecom appealed and in 2009 the Second Circuit ruled that its complaint did state a claim on which relief could be granted, reversed the trial court’s dismissal, and remanded for further proceedings.
Nothing happened in the case until last week when Rescuecom declared victory and dropped its suit. Why it believed the post-Second Circuit status quo represented a victory is unclear. (Sample headline, from Eric Sinrod’s column: Rescuecom Delcares “Victory” Against Google: Oh Really?) Rescuecom explains that Google has changed its AdWord practices regarding use of trademarks and no longer suggests Rescuecom’s mark through its Keyword Suggestion Tool, and that it obtained what it wanted from the suit. Commentators have responded skeptically to Rescuecom’s explanation. Rescuecom is itself a defendant in a lawsuit filed by Best Buy, claiming that Rescuecom’s use of Best Buy’s “geek squad” mark in its keyword advertising violates Best Buy’s rights in the mark. One commentator called Rescuecom’s position in the Best Buy suit as “intrinsically inconsistent” with its claims against Google. Et tu, Rescuecom?