Written by Geri Haight

Six months after the U.S. Court of Appeals for the Fourth Circuit reversed the district court’s dismissal of Rosetta Stone’s trademark infringement lawsuit against Google, the parties issued a joint statement today announcing that they have settled their legal dispute. The parties stated:  “Rosetta Stone Inc. and Google have agreed to dismiss the three-year-old trademark infringement lawsuit between them and to meaningfully collaborate to combat online ads for counterfeit goods and prevent the misuse and abuse of trademarks on the Internet.” 

Continue Reading Google and Rosetta Stone Settle AdWords Trademark Infringement Suit

On Monday, the Court of Appeals for the Fourth Circuit reversed the district court’s decision ending Rosetta Stone’s trademark infringement case against Google.  Rosetta Stone’s complaint, filed in 2009, alleged that Google infringed Rosetta Stone’s trademark rights by selling its trademarks as keywords to third-party competitors without Rosetta Stone’s permission.  Under Google’s AdWords program, Google offers advertisers the ability to select certain keywords that will trigger a “sponsored link” to the advertiser’s chosen website.  Google displays the “sponsored link” above or next to the organic search results.  The Rosetta Stone trademarks at issue, which Google included as keywords in its AdWords program, included “language library,”  “global traveller” and “Rosetta Stone,” among others.  Rosetta Stone alleged that Google’s sale of its trademarks to unrelated third parties for use in sponsored advertising caused consumers to follow the unaffiliated sponsored link advertisements based on the mistaken belief that the associated links/websites were owned by or affiliated with Rosetta Stone when, in fact, they are not.

In 2010, the district court ruled in Google’s favor,  concluding (among other things) that “no reasonable trier of fact could find that Google’s practice of auctioning Rosetta Stone’s trademarks as keyword triggers to third party advertisers creates a likelihood of confusion as to the source and origin of Rosetta Stone’s products[.]”  In the end, the district court gave Google a total victory, granting its motions for summary judgment on Rosetta Stone’s claims of (1) direct trademark infringement; (2) contributory infringement; (3) vicarious infringement; (4) trademark dilution; and (5) unjust enrichment (under Virginia law).  The Fourth Circuit reversed, at least in part, remanding the issues of direct infringement, contributory infringement, and trademark dilution to the district court.  In so doing, the Fourth Circuit set forth the details of some interesting bits of evidence for the district court to consider on remand.   Continue Reading Fourth Circuit Resurrects Rosetta Stone’s Challenge to Google’s AdWords Program