NJ Court Allows Trademark Claims Based on Purchasing a Competitor's Unregistered Trademark as a Keyword for Internet Advertising

Case: Buying for the Home v. Humble Abode, D.N.J. 3:03-cv-02783-JAP-TJB (10/20/06)

The One Sentence Summary: Noting a split in courts ruling on the issue, a New Jersey district court judge ruled that trademark infringement claims under section 43(a) of the Lanham Act should be allowed to go to trial based upon allegations of purchasing the plaintiff's unregistered mark as a keyword for Internet advertising on Google.


New Jersey District Court Holdings:

• The question of whether the unregistered mark TOTAL BEDROOM was descriptive and unprotectable without secondary meaning was a question of fact that could not be resolved on summary judgment.
• The appearance of defendant's advertisement on Google when a user searched for the keywords "total bedroom" allowed an inference that defendant had purchased the phrase as a search term, and this inference was sufficient to defeat summary judgment.
• After observing that court decisions have been split on the issue, the district court concluded that the alleged acts of purchasing advertisements based upon plaintiff's trademark was a trademark use in commerce actionable under section 43(a) of the Lanham Act, 15 U.S.C. §1125(a). The court noted that plaintiff would still be required to prove the other elements of its claim at trial, including likelihood of confusion.
• The court granted the motion to strike an attorneys' fee demand under section 35(a) of the Lanham Act, noting that the unresolved questions of trademark law precluded a finding that this was an exceptional case allowing an award of attorneys' fees.