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98 Trademark Rep. 873 (2008)
Virtual Trademark Use - The Parallel World of Keyword Ads

handle is hein.journals/thetmr98 and id is 907 raw text is: Vol. 98 TMR VIRTUAL TRADEMARK USE - THE PARALLEL WORLD OF KEYWORD ADS* By Jonathan Moskin* I. INTRODUCTION Justice, we are told, should be blind. Yet it need not be administered with eyes averted. Despite considerable consternation concerning the question when or if keyword ads might infringe the trademarks to which they are keyed, there has been virtually no meaningful examination by the courts of the actual risks, if any, such ads present to consumers or brand owners, or why or under what circumstances keyword ads might actually lead to mistaken purchasing decisions. Recent precedent presents pale cause for optimism that a bright new outlook or insight is just beyond the horizon.1 At one extreme, courts in the U.S. Second Circuit, for seemingly doubtful reasons explored below, have turned a blind eye to the issue, concluding, as a matter of law, that selling ads keyed to brand names does not constitute use in commerce of the branded terms. Without such use in commerce, even if there were confusion, there could be no actionable infringement. At the other end of the spectrum (and, coincidentally, to a considerable extent on the opposite end of the continent), some U.S. courts have adopted a blindered (if not to say blinded) view of the risks presented by keyword ads, all but compelling a conclusion that keywords cause confusion, based both on a narrow interpretation of the traditional likelihood of confusion analysis and a reliance on the theory of so-called initial interest confusion that easily elides any relevant facts outside a very closely cabined conception of Internet usage. In the middle of this continental divide, many of the reported decisions have simply addressed procedural or threshold questions (often as to which of the two types of tests to apply), without resolving substantive issues concerning keywords and confusion. Keyword ads are, of course, paid links provided or keyed to given search terms (including, but not limited to, trademarks) by * © 2008 Jonathan Moskin. ** Partner, White & Case, New York, NY; Associate Member, International Trademark Association. 1. However, it must be noted that as this article is going to press, the Court of Appeals for the Second Circuit, having heard argument on April 3, 2008, will likely soon issue its decision in the appeal from Rescuecom Corp. v. Google, Inc., 456 F. Supp. 2d 393 (N.D.N.Y. 2006). 873

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