Deal Over Trademarks in Google Keywords

     (CN) – Rosetta Stone and Google reached a private settlement in the complaint over other language companies using Rosetta’s trademarks as keywords in online advertising.
     Rosetta Stone, a popular computer-based language-learning program based in Arlington, Va., sued Google in 2009 for selling the right to use Rosetta Stone marks or words as keywords that trigger paid advertisements, called sponsored links.
     “Thus, when consumers enter one of the Rosetta Stone Marks into Google’s search engine to search or navigate the World Wide Web, instead of being directed to Rosetta Stone’s website, Google’s ‘Sponsored Links’ may instead misdirect them to: (i) websites of companies that compete with Rosetta Stone; (ii) websites that sell language education not only for Rosetta Stone, but also for a variety of competitors of Rosetta Stone; (iii) websites that sell counterfeit Rosetta Stone products; or (iv) websites that are entirely unrelated to language education,” according to the complaint filed in the Eastern District of Virginia.
     A federal judge dismissed Rosetta Stone’s case, but the 4th Circuit revived its trademark infringement, contributory infringement and dilution claims in April 2012.
     The appellate court found that “a reasonable trier of fact could find that Google intended to cause confusion in that it acted with the knowledge that confusion was very likely to result from its use of the marks.” (Italics in original.)
     It marked the first time a U.S. Court of Appeals established that a company can sue Google for trademark infringement based on keywords linked to advertising, the Washington Post reported.
     In the months since, Google filed an answer to the complaint and the parties agreed on a discovery schedule. They filed a joint stipulation of voluntary dismissal with prejudice on Wednesday.
     The terms of the settlement were not specified.
     In a joint statement , the companies said: “Rosetta Stone 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. … At the end of the day, both companies would rather cooperate than litigate, and we believe this agreement is an important step toward eliminating piracy and trademark abuse on the Internet.”

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