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November-December, 2010 Vol. 100 No. 6 Back to TMR Main Page
 
Amicus Brief of the International Trademark Association in Rosetta Stone Ltd. v. Google, Inc.
 
 
In this case at the cutting edge of issues surrounding the
sale of trademarks as keywords for search engine advertising,
INTA filed an amicus brief supporting vacatur and remand.
The district court had granted summary judgment to Google
on the grounds that its use of Rosetta Stone's trademarks in
facilitating keyword advertising was functional, that Google
had not itself used Rosetta Stone's trademarks in connection
with Google's own competing language learning software or
on other goods, and that Rosetta Stone could not show any
dilution of its trademark because the renown of Rosetta Stone's marks had increased during the relevant period. Although INTA does not take any position on the ultimate merits of the case, its amicus brief urges the Court of Appeals to reverse three legal errors made by the district court: (1) the district court misapplied the functionality doctrine to find a lack of infringement based on the marks' functional role in Google's search engine, whereas the functionality doctrine is meant to protect a party's ability to use a feature that serves a function in the brand owner's trade dress; (2) the district court misinterpreted the Trademark Dilution Revision Act the "TDRA") when it rejected Rosetta Stone's dilution claim on
the ground that Google had not used Rosetta Stone's marks to identify Google's own goods and services; and (3) the district court misinterpreted the TDRA in ruling that Rosetta Stone's dilution claim was barred by the increasing fame of Rosetta Stone's marks.
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