Rosetta Stone rocks Google with trademark lawsuit Rosetta Stone, maker of language-learning software, is joining a growing crowd of companies suing Google for letting third-parties buy permission to use other people's trademarks on AdWords. Rosetta filed the lawsuit today in US District Court in Virginia, where the company is headquartered. The complaint fingers Google's …
You cannot bar people from using terms that have general interest meanings, like "rosetta stone" or "language library". At issue is whether ALL instances of registered trademarks may be banned for use by ANY advertiser. US trademark law clearly says that a trademark infringement can ONLY come when a trademarked term is used in such a way that is CAUSES CONSUMER CONFUSION regarding the company using the term and the trademark holder. In other words, if I have a baby sitting service trademarked as "The Babysitters", then other baby sitter services cannot advertise themselves as "The Babysitters", or any derivative that might confuse a consumer into giving business to the wrong company. Using AdWords to bid on keywords that are, themselves, trademarks is NOT such a situation. Even using the keywords in the ads that display would not constitute infringement UNLESS the company doing the advertising BOTH was in competition with the trademark holder AND caused consumer confusion. Google was right to lift its ban on bidding on trademarked terms, and Rosetta Stone is within its rights to try and get them to bar it's competition from using it's trademarked terms, however Google is under no legal obligation whatsoever to submit to those demands. It is on Rosetta Stone to take the offending advertisers to court over their infringement, not for Google to be a trademark judge and jury. In the same way, a television network that ran an ad that included the term "Ford Motor Company" but is actually for "Joe's Used Cars" could NOT be compelled to pull the ad, unless a court FIRST ruled that Joe's Used Cars committed trademark infringement.
Is this a case of "I'm mad because their ads say 'Rosetta Stone Sucks! Use our crap instead!'"? Go cry in a corner, deal with it. What is wrong, though, is if the ads said "Get Rosetta Stone Here!" and it led to something else entirely, or worse a spoof-product of the same name.
I just googled "Learn a foreign language" (without quotes), and up popped Rosetta, first link, along with a few ads, none of the other ads mention it. Added the word "Rosetta" to my query, nothing fishy.
"The company says it owns US-registered rights to terms such as "global traveler," "language library," "dynamic immersion," "adaptive recall," and "the fastest way to learn a language guaranteed.""
The better question is how the crap did they pull that off. Lots of individuals are "global traveler"s, and have been longer than Rosetta's been around; while there are non-language libraries, a lot of libraries are language ones. Any web page with PHP/JS can be described as dynamic immersion. Not sure what to make of adaptive recall, and what if I found a faster way to learn a language, for example by hooking myself up to the Matrix (I'd learn the Eastern languages and their martial arts!), where would your guarantee be then?
It's ironic how they respond to their making money off of assisting others to infringe on non-Google trademarks.
Does everyone remember "Google sues Froogles.com" ??????
http://news.cnet.com/Google-sues-Froogles.com/2100-1030_3-5676955.html
Anyone searching for "dynamic immersion" or "adaptive recall" on Google is confused enough already that trademark infringement wouldn't make any difference.
"Hey, I fancy myself some adaptive recall. Let's just fire up the ol' search engine... hmm, that Adword looks promising... wait, this isn't Rosetta Stone, the language library that dynamically immerses more global travellers than any other company! DAMN YOU GOOGLE!"
Now we need Captain of Engineers, Pierre François Xavier Bouchard to come back to life and sue the frak out of Rosetta Stone for capitalizing on the discovery of his stone and impinging his trademark rights to the use of the name - plus unspecified punitive damages. Sue 'em back to the Sixth Dynasty Bouchard, Sixth Dynasty. Sucks I can't say "global traveler" anymore without paying someone...although this is a educational use that falls under "fair use"....er.... no one's trademarked that yet, right?
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...it's pretty much totally meaningless.
Notice:
The Fastest Way to Learn a Language. Guaranteed.™
Also, Rosetta Stone owns the registered trademark RosettaStone®, and the special way of writing it, associated to the special color and special logo will/must all be part of making it ®. The British Museum won't get involved.
@Spleen:
"Hey, I fancy myself some Adaptive Recall™. Let's just fire up the ol' search engine... hmm, that AdWords™ word looks promising... wait, this isn't RosettaStone®, the Language Library™ that Dynamically Immerses™ more Global Travellers™ than any other company! DAMN YOU GOOGLE®!"
That's actually a pretty good ad! People might pay for this idea.
In a world where the right to common terms such as "global traveler" can be bought, there is something wrong with the system. That *adult* people use their skills of evading common sense to waist money fighting over non-issues that could easily be debunked by a four year old really saddens me.
The other Ad peddlers steer well clear of this territory for this exact reason. Its dangerous water and probably illegal in most countries.
And Google are muppets if they really believe in their Supermarket quote:
"It's completely normal for a supermarket to stock different brands of cereal on the same shelf or for a magazine to run Ford ads opposite of an article about Toyota, so it doesn't make sense to limit competition online by restricting the number of choices available to users,"
Advertising cereal on the same shelf is fine, and expected and no sane person would find it confusing. But if the shelf / aisle was called Kellogg's and flogged Nestle products, I do not think Kellogg's would be none too impressed. It would also be confusing and inaccurate. This is RS's point (and I am sure others).
RS is correct in this instance, and they have taken the trouble / cost to invest in Brand building trademarks (however rubbish they seem to be), and have the right to expect them to be protected under the law. But we know Google thinks they are above the law and are quite happy to sail as close as they can to breaking it (online books/copyrighted material, privacy concerns with streetsnoop, adwords infringing trademarks...)
Once upon a time Google was a company of innovation and 'did the right thing', but today Google are a money grabbing company that really has no respect for its customers or other businesses.... just make money in the chocolate factory.
" ... for a magazine to run Ford ads opposite of an article about Toyota..."
but clearly not okay to run an ad for a cheap Chinese imitation using the same logos and trademarks. If 'Chinese Search & Ads' were to tout themselves using keywords such as 'Google', I'm pretty sure somebody in Mountain View would have a Googlefit (TM)
How on earth did they get away with trademarking that? How on earth do you prove it?
If I use Rosetta Stone's method to learn French I can't then try learning French by, for example, the Michel Thomas method in order to make a comparison - I already know it. If I try to learn German using Michel Thomas' method and it takes me less time than to learn French what does it prove? It could be that the method is better, or just that (for me) German is easier to learn than French, or that having learned one foreign language learning a second or subsequent one is easier - or any permutation of those possibilities.
Don't even get me started on trademarking everyday English phrases like "global traveler", "language library", etc.
Let's try to remember that this is only for those poor people in America who allowed this law to pass over there.
In this country (UK in case you had any doubts) you can trademark a look of a name. ie its font, colour, etc. and only trademark a name if it is unique - ie.made up.
I remember a sole trader who owned a shop in England getting sued because the idiot used his own name (Mr Dixons) in a logo above his shop in a very similar style to the late Dixons chain of electrical shops a few years ago. He lost not surprisingly.
Rosetta Stone don't own the phrase "global traveller" or any of the others, they own the right to use these names when associated with language learning products in the US. There is a big difference. The restiction that you can't rademark a generic term is limited to trademarking the term when used in reference to the product it names. A tool company can't trademark a spanner as "Spanner", or a pizza shop its products as "Pizza" (preventing others from calling their products spanners or pizzas) but there is nothing stopping you trademarking a brand of cat food "Spanner", or trademarking your spanners as "Cat Food" brand or "Pizza" brand.
Rosetta Stone will liken Google's actions as equivalent to as if you went into your local supermarket to buy some canned soup, and you went to the aisle clearly marked as "Campbells" and where you found shelves filled with the familiar red and white cans. In amongst the Campbells cans you find other red and white cans that are not Campbells, but a competitor. If you were in a hurry or not looking carefully you might even buy some of them. Then you discover that the supermarket owner has been offering the competior the option of placing those cans there, if they pay for the priviledge.
The issue is that Google are arguably colluding with the advertisers in placing misleading adverts. It isn't just that your car magazine runs a Ford ad next to a Toyota articale, but the magazine offered Ford first option of placing the ad whenever a competitor's product was reviewed, and didn't make any effort to ensure that the Ford ad didn't use logos that looked a lot like a bunch of ellipses. In many ways it isn't a lot different than discovering that ICANN were offering typo and url squatting services to competitor companies.
The legal stuff will be deciding how much Google are complicit in any deliberate deception, either by commision or ommision.
Rosetta stone? no prior art there then (OK that's more copywrite but you get the point).
American law, like American culture is all about money, if you have more then you are more, at least many UK 'nobs' have the decency to be posh and completely skint.
Anyone remember the company Mike Roe Soft, the bloke (called Mike Roe) who had a software company, and Microsoft couldn't stop him using the name in the UK? probably get the death sentence in the US.
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