In the ongoing battle surrounding the use of trademarks as keywords for online searching, trademark owners scored a victory. In a recent decision, the Central District of California ruled that a law firm's purchase of a competitor's trademark as a Google AdWord was "use in commerce" and likely to cause confusion. The Court awarded damages for willful infringement and found the case was exceptional, entitling the plaintiff to seek attorney fees and costs. Binder v. Disability Group Inc. C.D. Cal., No. 2:07-cv-02760 (1/25/11).

Plaintiff Binder & Binder, a law firm specializing in Social Security benefit claims, owns three federal trademark registrations in its name and logo. Disability Group of Santa Monica, a law firm that also handles Social Security benefit claims, purchased the keyed term "Binder and Binder" through Google AdWords. Binder & Binder sued for trademark infringement, false advertising and California unfair competition.

The Court ruled that the defendant's purchase of "Binder & Binder" as an AdWord, and the resulting Google advertising keyed to the mark, constituted "use in commerce," a requirement to finding a violation under the Lanham Act. The Court found the similarity of the trademark and AdWord, the similarity of the services offered, the intent of Disability Group and the overlap in market channels all weighed in favor of finding a likelihood of confusion. In addition, the Court found evidence of actual confusion.

The Court ruled that the Disability Group "used Plaintiffs' mark in their advertising campaign through Google to market their business in a manner that was likely to confuse potential clients into thinking that they were being led to Plaintiffs' website."

In a 2008 case, a Massachusetts District Court also found that purchasing a keyword met the "use in commerce" requirement, but, in that case, the Court ruled there was no likelihood of confusion because the content of the Defendant's advertising clearly distinguished itself from the trademark holder's services. Boston Duck Tours, L.P. v. Super Duck Tours, LLC, Civ. A. No. 07-11222 (D. Mass. Dec. 5, 2007).

Clients should consider the Binder Court's award of lost profits, enhanced damages and the possible recovery of attorney fees and costs when they assess the risks posed by purchasing another company’s name or trademark for keyword-triggered advertising. If you believe your trademark is being improperly used as a keyword, Google AdWords and others have procedures for restricting such use.