Internet Trademark Case Summaries

T.D.I. Int’l, Inc. v. Golf Preservations, Inc.

208 U.S. Dist. LEXIS 7427 (E.D. Ky. Jan. 31, 2008)

Plaintiffs installed drainage systems for golf courses under the federally registered mark XGD.  Defendant was a company founded by an ex-employee of plaintiffs that offered the same services under the mark GOLF PRESERVATIONS.  Plaintiffs sued for trademark infringement, unfair competition, and various other claims relating to defendant's purchase of plaintiffs' mark as a Internet search engine keyword.  Defendant filed a motion to dismiss all of plaintiffs' claims for failure to state a claim.  Regarding plaintiffs' Lanham Act claims based on defendant's keyword purchase of its XGD mark, defendant argued that plaintiffs failed to plead that defendants used the XGD mark in commerce.  In support of its motion, defendant cited the Sixth Circuit's Interactive Products case and the Second Circuit's WhenU.com case and its progeny for the proposition that a keyword purchase was not a trademark use.  However, the court noted that Interactive Products addressed the use of a plaintiff's marks in the post-domain path of a URL and the WhenU.com cases dealt with pop-up advertisements generated by WhenU.com's software.  Plaintiffs in turn relied on various other cases (but none from the Sixth Circuit) holding that a keyword purchase was a trademark use that violated the Lanham Act.  The court, after considering both arguments, ultimately held that, "[i]n light of the uncertain state of the law on the [keyword purchase] issue presented in this case," defendant's arguments were not sufficient to warrant dismissal of plaintiffs' claims.  Plaintiffs thus alleged sufficient facts to state a claim for relief that was "plausible on its face" (emphasis in original) and the court accordingly denied defendant's motion to dismiss.