## Facts

- Rescuecom Corp. operated a national computer services franchising business and owned a federally registered “Rescuecom” trademark.
- Google Inc. operated a search engine and sold keyword-triggered advertising through its AdWords program.
- Through AdWords, advertisers bid on keywords so their sponsored links would appear when users searched those terms.
- Google also provided a Keyword Suggestion Tool that recommended terms (including competitors’ marks) to advertisers.
- Rescuecom alleged Google recommended and sold the “Rescuecom” mark to Rescuecom’s competitors as a keyword, causing competitors’ ads to appear when users searched “Rescuecom.”
- Rescuecom alleged the placement and presentation of competitor ads were likely to confuse consumers.
- Rescuecom asserted Lanham Act claims for trademark infringement, false designation of origin, and dilution, along with related state-law claims.

## Issues

1. Whether the complaint plausibly alleged that Google made a “use in commerce” of the “Rescuecom” mark under the Lanham Act by recommending and selling it as an advertising keyword.
2. Whether the district court properly dismissed the Lanham Act claims under Rule 12(b)(6) on the ground that Google’s conduct was not a statutory “use in commerce.”

## Decision

- The Second Circuit vacated the dismissal and remanded.
- The court held the complaint adequately alleged Google’s “use in commerce” of the Rescuecom mark.
- The court rejected the district court’s reading of prior circuit precedent as establishing a categorical rule that keyword-triggered advertising cannot satisfy the “use in commerce” requirement.
- The court stated it expressed no view on whether Rescuecom would ultimately prove a Lanham Act violation; the ruling addressed pleading sufficiency on the statutory use element.

## Legal Principles

- A Lanham Act plaintiff must plausibly allege a defendant’s “use in commerce” of the mark as a threshold element for infringement and related claims.
- Recommending and selling another’s trademark to advertisers as a keyword that triggers ads can constitute “use in commerce” when the mark is employed in connection with the sale or advertising of services.
- Conduct that is purely internal and not offered or exposed through commercial transactions may be treated differently from transactional, revenue-generating uses in which the mark itself is sold or marketed as part of an advertising product.
- At the motion-to-dismiss stage, courts accept the complaint’s factual allegations as true and do not resolve likelihood of confusion on an undeveloped record when the pleadings plausibly allege consumer confusion.

## Conclusion

The Second Circuit held that Rescuecom plausibly alleged Google used the Rescuecom trademark “in commerce” by recommending and selling it as an advertising keyword to trigger competitors’ sponsored links, requiring vacatur of the Rule 12(b)(6) dismissal and remand for further proceedings on the remaining Lanham Act elements.


Rescuecom Corp. v. Google Inc., 562 F.3d 123 (2d Cir. 2009)