Google Sued By Rosetta Stone Over Trademarks

Claims Adwords causing confusion

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WebProNews spoke to Eric Goldman, Associate Professor, Santa Clara University School of Law and Director of the High Tech Law Institute about the latest trademark case brought against Google.

Eric Goldman
Eric Goldman

Goldman said the lawsuit by Rosetta Stone was the ninth keyword trademark suit brought against Google that he was aware of. He said "suing Google has become the new American pastime."

He noted that Google did settle a similar lawsuit brought by American Airlines over keywords that was resolved out of court. Details of the terms of the settlement have not been made public and Goldman says it’s an unusual deal Google made with American.

Goldman does not think Google will settle with Rosetta Stone out of court and that case along with the other eight cases against Google would likely be consolidated into one court.

Goldman believes that we are years away from a definitive resolution to such suits and that the laws are currently too confusing.

Orginal Article

Language-learning firm, Rosetta Stone, filed a lawsuit today in U.S. federal court against Google, claiming that the company is infringing on its trademarks.

In its lawsuit, Rosetta Stone alleges that Google allows third parties including individuals involved in software piracy to purchase the right to use Rosetta Stone trademarks or other terms confusingly similar in Google’s Adwords advertising program.

Michael Wu
Michael Wu

In June 2009, Google changed its policy stating that "advertisers will be allowed to use trademark terms in their ad text even if they do not own that trademark or have explicit approval from the trademark owner to use it."

"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, general counsel, Rosetta Stone.

"Google and its advertisers benefit financially from and trade off the goodwill and reputation of Rosetta Stone without incurring the substantial expense that Rosetta Stone has incurred in building up its popularity, name recognition, and brand loyalty."

With its lawsuit, Rosetta Stone is seeking injunctive relief to stop Google from selling the Rosetta Stone trademarks or other terms confusingly similar for use in Google’s Adwords advertising program.

Google Sued By Rosetta Stone Over Trademarks
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  • Guest

    I think Google will have a better chance to win this.

  • H.M. Wagner

    This is sort of like compaining to the postman that your paycheck wasn’t as large as it was last week! It’s simply the wrong tree!

    I seriously doubt that Google would be considered liable in this case. It’s the copy-cats that should be focused upon for using Rosetta Stone’s trademark. Sure, it will be more difficult to track down each and every unsavory business that chooses to borrow or steal their trademark. But this type of shady business practice has been going on for ages.

    Good luck Rosetta Stone! You’re clearly spending your time and money in the wrong direction.

    • http://dsdm.ca Guest

      Yep, very true. But they are barking because Google is at 1600 Amp. pkwy, and the advertiser is who knows where.

  • http://doneinstyle.com bj

    This is why the laws have to be made much more clear. Trademark law especially, since trademarking a COMMON TERM just makes it stupidly litigious for everyone.

    Anyone who took High School History knows what the real Rosetta Stone was. And though I know why that might make the term attractive to a language learning company, their choice of it as a trademark forces them to defend it. Personally I think this makes it a really BAD choice of trademark, regardless of the evocative meaning of it. And since it can be argued that any use of the term is referring to the original Rosetta Stone, and not the trademark, it makes the term harder to defend.

    • C Malone

      Frankly, all terms, other than those that are invented words or phrases, are historical terms. After all, Google too is not a made up word. Well, technically, it is a derivative of “googol”, which was itself was a made up word that became common in our lexicon. The point is that there was googol before there was Google. Yet, they have trademarked that specific phonemic combination and would most likely defend it aggressively.

      Anyway, I hope Rosetta Stone and the other companies are successful. Sure, Rosetta Stone is a historical term. However, the argument is not that Google is intentionally confusing people by giving results that refer to the historical definition of Rosetta Stone. It is that Google allows its advertisers to use trademarked terms to mislead users and direct users away from what they are seeking to Google and their advertisers’ benefit – to the detriment of companies such as Rosetta Stone.

      There really should be an element of fairness. If one were to call directory assistance and ask for the phone number for Pizza Hut but was given the phone number for Domino’s – intentionally – one would assume Pizza Hut would have a legal grievance – especially if directory assistance was paid to make that redirect. And that’s the case even though both “Pizza” and “Hut” are terms of a historical nature. Now I’m hungry.

      • http://home.earthlink.net/~larrytessari Baddawgg

        When redirecting is done on the Internet, like the Pizza Hut/Dominos example you use, it is called Pharming. AOL runs its own DNS server and Pharms a lot of URL’s to “preferred” websites. I’m not surprised the Justice department doesn’t intervene. Our government is bought off by business interests to a greater degree than most of us could ever imagine.

  • Guest

    All this hubbub will seem even more trivial than it is when Jesus returns.

  • http://affiliatesmania.com Affiliates Mania

    i doubt if Rosettla could win against google

    • Guest

      I wonder then, if justice is really justice or the law would always be on the side of who has more money… I know, I know… stupid question…

  • http://webovator.com/blog Webovator

    What about when Pepsi ads say they taste better than Coke? Is that illegal?

    So if another language software advertiser uses a phrase like Cheaper Than Rosetta Stone, is that illegal?

    Or even if you use Rosetta Stone as a keyword in the ad, I think that is just SMART advertising.

    No one is profiting off of Rosetta Stone’s good name. It’s not like they are selling other software under the Rosetta Stone moniker. Anyone who would click through to one of those landing pages would immediately see that it was a competitor of Rosetta Stone; if they like the offer, they buy.

    This is not brand loyalty being damaged. This is someone saying, if you like Rosetta Stone but want something cheaper and better, check out our offer.

    Remember the Accord commercials where people said they were glad they got a Honda Accord instead of a Toyota Camry? It’s the same thing, IMHO.

    • Guest

      I’m better and cheaper than Webovator… why overpay and buy that junk, when you can buy mine for less!

      The above is an obvious example… how does it feel to have someone say such a thing about all of the hard work you put in to developing your company and branding yourself, meanwhile taking customers from you all while using YOUR NAME to do it?

      It’s called ETHICS people.

      That silly word most greedy people have deleted from their dictionary… who gives a damn about someone’s rights to steal my brand, people should care about doing what’s RIGHT.

      I have no clue how lazy, unimaginative, dishonest people make it in this world, when all they put any effort towards is stealing from someone else’s brilliant ideas.

      Yes, google would scream bloody murder if it was THEIR name being used, but they seem to think it’s okay to hand the keys to SOMEBODY ELSE’S kingdom over to low life scum, all in the name of MONEY and GREED.

      I hate what this country is becoming, all due to greed. Disgusting.

      • Guest

        USA is among the very very few countries in the world allowing negative advertising. There should be a law forbidding companies to use its competitors name in their ads. A thing like “Pepsi is better than Coke” would not be allowed and this would also solve the issue we are analyzing here. Oh, by the way, USA is also among the very few countries allowing for medication advertising directly to consumers. Sooo stupid and dangerous (but money making for pharmaceutical companies)… Its obvious advertising laws must change.

    • George

      What about when Pepsi ads say they taste better than Coke? Is that illegal?

      My answer is YES!
      Pepsi can be sued for this. They take the risk of being sued.
      You can say: Pepsi is the best cola taste soda. However the phrase ” Pepsi ads say they taste better than Coke” has more impact in consumers.

  • Guest

    Just offer the complainant a settlement that bans all of its trademarks from Google SERP’s, including organic and paid listings of the complainant. Take them off Google completely. Problem solved.

  • Jimmy

    “What about when Pepsi ads say they taste better than Coke? Is that illegal?”

    Coca Cola is a brand that sells Coke. Therefore, no, it is not illegal.

    • Guest

      Pepsi mentioning Coke never was “illegal.” The whole issue is not whether the action is “against the law,” but whether the action intrudes on the private property of another without permission, i.e., trespassing.

      The Pepsi/Coke ads were just as good for Coke as for Pepsi, so there was no lawsuit. Many other ads are the same. Lever Bros. owned a score of brand names for laundry detergent, and regularly played them off against each other in advertising — proving that when the names are mentioned, everybody wins.

      Trade mark is the subject of labeling. Using another’s trade mark to deceitfully divert traffic to one’s own business violates the principle of trade mark law. You may say that a clothing store advertising “Safeway” does not deceive because as soon as a customer enters, he sees it is not a grocery store. But neither Safeway nor the courts would agree with you.

      The courts may rule that “Rosetta Stone” is a generic term already in use for language translation. Or they may rule that this is an invitation to trade mark infringement. The may be just, and it may not. The problem with these “tough cases” is that they make “bad law,” establishing precedents that may be further extended to the ridiculous in later cases.

  • dr dre headphones

    Just offer the complainant a settlement that bans all of its trademarks from Google SERP’s, including organic and paid listings of the complainant. Take them off Google completely. Problem solved.

  • http://WebProNews Anonymous

    Someone should take a close look at Michael Wu of Rosetta Stone and do a criminal background check on his extended family particularly about a petty larceny incident involving his mother.

  • http://WebProNews Anonymous

    Theft is theft whether it is piracy or simple shoplifting. Isn’t it the case Mr. Wu when your mother was arrested at a Safeway store in Mclean last year? It was feattured in THE McLEAN EAR “McLean Residents Arrested for Week Ending Sept. 30

  • http://WebProNews Kenneth Stubbs

    Google should conduct their own investigation if this allegation was true then demand an answer from Rosetta Stone. Stealing is a serious crime!!!

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