Six-Year Court Battle Over AdWords Ends With Plaintiff Straddling Both Sides Of The Fence

Ending a six-year court battle, computer repair shop Rescuecom has withdrawn its lawsuit against Google complaining about alleged trademark infringement on AdWords.

The move leaves Google free to continue allowing other companies to use the term Rescuecom to trigger search ads.

Before dropping the case, Rescuecom won a significant court battle last year, when the 2nd Circuit Court of Appeals ruled that arranging for a trademark to trigger an ad was a "use in commerce" of the trademark that could potentially infringe on it. That court remanded the lawsuit to the U.S. district court for the northern district of New York for a determination about whether infringement occurred -- which likely would have turned on whether consumers were confused by the search ads.

While Rescuecom was pursuing its case against Google, the computer repair shop also became embroiled in pending litigation with Best Buy -- but in that case Rescuecom is defending its use of Best Buy's trademarked term "geek squad" to trigger search ads.

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Rescuecom CEO David Milman said that his company's use of geek squad is legitimate because Rescuecom is attempting to compare its repair service to that offered by Best Buy.

"If you actually look at our ads in the Best Buy case, they're very, very clear. We're drawing a distinction," he said. "No reasonable person could ever think that our ad is for that company."

A Google search for "geek squad" conducted Friday morning yielded a results page with a sponsored ad carrying the headline, "Switch to Rescuecom today" and copy stating, "Leave the geeks."

Milman added that the company dropped its case against Google after accomplishing two goals: Google stopped allowing other advertisers to use Rescuecom in the text of their ads, and also dropped Rescuecom from the keyword suggestion tool.

Google actually made both of those changes more than five years ago.

But Milman says he only learned last week that Google had stopped suggesting Rescuecom as a keyword. "Who knows what would have happened if they had told us back in 2005 that they had taken our name out of their keyword tool?" he said.

Google senior litigation counsel Adam Barea says the company was pleased that Rescuecom dismissed its claims. "As we've consistently maintained, Google's trademark policy strikes the proper balance between trademark owners' interests and consumer choice, and now even Rescuecom concedes that it's legally entitled to use a competitor's trademark as a keyword trigger," he said in a statement.

Google is still a defendant in at least nine other lawsuits alleging trademark infringement in AdWords. The only case to proceed to trial, a lawsuit by insurance company Geico against Google, resulted in a victory for Google in 2004. In that case, a federal judge ruled that Geico didn't prove that consumers were confused when they typed "Geico" into a search box and were served with ads for other rivals.

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