Court denies motion to dismiss AdWords trademark infringement case

FragranceNet.com, Inc. v. Les Parfums, Inc., — F.Supp.2d —, 2009 WL 4609268 (E.D.N.Y. December 8, 2009)

FragranceNet.com sells perfume online. It sued several of its competitors, claiming trademark infringement and other causes of action like unfair competition and unjust enrichment, over the defendants’ alleged purchase of variations of the term “fragrancenet” to trigger sponsored links on Google results pages. These sponsored links allegedly drove traffic to defendants’ websites.

The defendants moved to dismiss the complaint. Had this case been filed a year ago, the defendants may have argued that the case should be dismissed because the purchase of keywords to trigger sponsored links was not “use” of the marks. But in light of the Rescuecom decision from this past spring, defendants were constrained to argue differently.

They claimed that the case should be dismissed because the purchased keywords are generic terms and therefore not protectible as trademarks. The court rejected this argument, holding that it was inappropriate to determine whether the marks are generic at the motion to dismiss stage because plaintiff had adequately stated plausible trademark claims in its complaint. The question of genericness is better considered with some actual facts.

Photo courtesy Flickr user hslo under this Creative Commons license.

4 thoughts on “Court denies motion to dismiss AdWords trademark infringement case

  1. Joe

    You cannot start claiming trademark protection for every word in the English language. If you do, the court cases will never end.

  2. Max

    I believe that the court made in this case is correct. “FragranceNet” doesn’t in fact sound enough like a generic term to warrant dismissal before the presentation of evidence.

    In fact, I don’t believe all that much evidence will be needed to prove the plantiff’s case. If you consider typical consumer search strings, most don’t use the boolean logic of yore. Most consumers will either enter a single term, a well known phrase, or a plain english question. Entering of the term “FragranceNet” in this light signifies a desire on the part of the user to visit the plantiff’s website. AdWords logic that drives traffic to other sites, for remuneration to Google by other said sites, because of confusion on the part of the consumer is a clear case of trademark infringement.

  3. Austrotrabant

    I liked Goldman’s comment on this case, highlighting that taking your competitor to court always creates the ‘non-trivial’ risk for the plaintiff that the court will declare the trademark invalid and thus will leave the plaintiff with fewer assets than it thought when initiating the ‘legal farcas’.

    About “Max” … well yes, but don’t you think that the online word should not be more policed than the “brick and mortar” off-line world. [sic!] I’d highly recommend you reading Goldman’s work about brand spillovers and explain how e.g. department stores are regularly exploiting the goodwill of brand products for selling their home brands.

    And boiling it all down: Is the Internet a motorway (which just one exit every 5k), or a shopping mall (where one shop is placed right next to its competitor)?

    Best!

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