• April 7, 2004

A federal judge in New York has denied requests from Google and Yahoo!'s Overture Services to toss out a lawsuit claiming that the two search companies unlawfully used a pet store owner's registered trademark in selling advertising.

U.S. District Judge Denis Hurley is allowing a lawsuit filed by the former owner of PetsWarehouse.com to proceed, despite requests for dismissal by the two search giants. Kanoodle, a smaller search player, is also listed as a defendant.

Robert Novak, owner of Pets Warehouse, a pet store, is claiming in the suit that he owned the trademark to the term "Pets Warehouse" and that Google, Kanoodle and Yahoo!'s Overture illegally sold advertising using that phrase, which the search companies claim is generic. The judge isn't so sure, saying he could not, "conclude as a matter of law that the registered mark is generic."

Trademarks remain a gray are when it comes to search advertising. Google was fined last year in a French court for selling ads based on two travel-related phrases that were trademarked. Conversely, another court stopped Playboy from denying sites the right to sell the term "playboy." Novak, who has since lost the rights to the PetsWarehouse.com domain, which he is trying to reclaim, now runs Pets-Warehouse.com.

It remains to be seen what happens next in this case. The judge did provide Google a minor victory; rejecting Novak's charge that Google was guilty of "tortious interference with prospective business relations," which he labeled as nonsense.