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4th Circuit revives Rosetta Stone’s trademark case against Google

Appeals court is convinced that the sale of sponsored ads diluted Rosetta Stone’s brand

The 4th Circuit on Monday revived a trademark infringement case against Google that had been dead for about two years prior to the decision.

Rosetta Stone, a maker of language learning software, filed suit against Google in 2009, accusing it of selling the software company’s trademarks to advertisers who used them as search keywords. In 2010, a district court in Virginia dismissed the case, saying that the advertisers’ sponsored links were unlikely to confuse customers.

In its 4th Circuit appeal, Rosetta Stone argued that Google’s sponsored ads were leading customers searching for its products to competitors and software counterfeiters, Thomson Reuters reports. It presented the court with the testimony of five consumers who tried to buy fake Rosetta Stone software after Google began selling the company’s trademarks for use in sponsored links.

The appeals court found Rosetta Stone’s argument persuasive enough to revive the company’s trademark infringement and dilution claims against Google.

“The district court had held that Rosetta Stone was required to show that Google was using Rosetta Stone's marks to identify Google's own goods and services,” says Brad Newberg, a partner at Reed Smith and author of an amicus brief on behalf of five companies in support of Rosetta Stone. “While that issue may be related to Google's fair use defense, it certainly is not something a plaintiff needs to prove to win on dilution, and the appeals court made this clear.” 

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