The U.S. District Court for the District of Minnesota recently issued a substantive ruling on the issue of whether a company commits trademark infringement by purchasing its competitor’s trademarks as key words to generate sponsored listings on Google and Yahoo!.
In that case (Edina Realty v. TheMLSonline.com) the court held that such conduct constitutes “use in commerce” as defined by the Lanham Act, and ordered that the case proceed to trial on the question of likelihood of confusion (which is the sine qua non of trademark infringement).
On March 30, 2006, the U.S. District Court for the Southern District of New York issued a ruling that is contrary to the Edina Realty case. As usual, Professor Eric Goldman has all the details. This later case is called Merck v. Mediplan Health Consulting.
Simply stated, the point on which the Merck case is directly contrary to the Edina Realty case is on the question of whether purchasing a competitor’s trademark as a keyword constitutes use in commerce. While in Edina Realty the court held that this does constitute use in commerce, the court in Merck agreed with the defendants in holding that purchasing [the term] “ZOCOR” as a keyword on Internet search engines does not constitute trademark use.”
Merck v. Mediplan Health Consulting, (Slip Op.) — F.Supp —, 2006 WL 800756 (S.D. N.Y. March 30, 2006).