poto

In the recent case T.D.I. International, Inc. v. Golf Preservations, Inc., the U.S. District Court for the Eastern District of Kentucky held that the unauthorized purchase of Internet keyword advertising search terms containing a competitor’s trademark may be considered a “use in commerce” under the Lanham Act. Here, T.D.I. International (T.D.I.) filed a trademark infringement suit against competitor Golf Preservations, Inc. (GPI), alleging that their purchase of Google keywords incorporating T.D.I.’s marks “XGD” and “XGD Systems” was unlawful. GPI moved to dismiss and argued that their purchase of these keyword ads was not a “use in commerce” within the meaning of the Lanham Act.


In their defense, GPI pointed to 1-800 Contacts, Inc. v. WhenU.Com, Inc.[1] where the court held that the use of a trademarked term to trigger online advertising is not a trademark “use in commerce” as defined by the Lanham Act. In opposition, T.D.I. pointed to GEICO v. Google[2] which stands on the proposition that the purchase of a trademarked term as a search engine keyword is a “use in commerce” of the mark that supports a Lanham Act claim.


Although the state of the law was uncertain on this specific issue, the court ultimately sided with T.D.I., holding that GPI’s arguments were not sufficient to dismiss T.D.I.’s claims. The court did not explicitly rule that keyword advertising is a “use in commerce” but they did cite that T.D.I had enough facts to state a claim to relief that is “plausible on its face.” The issue regarding keyword advertising remains undecided on a national level. The stance currently varies state by state and for the most part the lack of federal legislation and search engine policing leaves the marketers walking a fine line.

source: Domain News - Sedo GmbH

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