In trademark cases involving keyword advertising, the nominative use defense is often a powerful tool that leads to early success on summary judgment. We recently had a case where we represented a payment processor review site. At issue was whether or not a review site is able to advertise by purchasing trademarked terms on Google Adwords. In this post, we will run through the analysis and ultimate answer.
Where a trademark claim arises from the use of a trademark as a reference to mark owner’s goods or services such as a review site, the case is among a “class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one” and the plaintiff’s claims fall to the doctrine of “nominative use.” New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992).