Rosetta Stone sues Google over trademark violation

Software firm claims AdWords policies are misleading potential clients

Rosetta Stone: "Google's search engine is helping third parties mislead consumers"

Software firm Rosetta Stone is suing Google for selling the right to use its trademark to third parties under the search firm's AdWords advertising programme.

The trademark violation suit was filed on Friday and concerns the use of terms such as "global traveller", "dynamic immersion", and "adaptive recall", which the company claims to have registered.

The filing also states that "many of Google's sponsored links draw people away from Rosetta Stone web sites".

"Google's search engine is helping third parties mislead consumers and misappropriate Rosetta Stone trademarks by using them as 'keyword' triggers for paid advertisements and by using them within the text or title of paid advertisements," said Michael Wu, Rosetta Stone's general counsel.

In a similar case in the UK, flower delivery firm Interflora decided to sue Marks & Spencer and online florist Flowers Direct last year, over the use of its brand name and sponsorship of misspelled occurrences of its name on AdWords to lure customers to their web sites.

Commenting on the Interflora row, Alex Weston, a specialist IT and intellectual property lawyer at Langleys Solicitors, said that while trademark owners should be alert to how their brand is being used, prospective keyword buyers should also tread carefully.

“Until the European Court of Justice makes its ruling, trademark owners should regularly monitor use of their trademarks to see if competitors are using their trademarks as sponsored links,” said Weston.

“If trademarks are being used as sponsored links then, in my experience, a solicitor's letter to the competitor will usually result in the sponsored link being removed. It can also be possible, in certain circumstances, to make a complaint to Google or other search engine operators,” he said.

“If you are considering purchasing a competitor's trademarks as a sponsored link then I would advise you to proceed with caution and to ensure that you do not use the registered trademark in the sponsored link – either in the hyperlink or in the text.”