Search Engines Sued for Accepting Keyword Advertising on “Cheese of the Month Club” Trademark–Pathak v. ICG

By Eric Goldman

Pathak v. ICG America, Inc., 5:11-cv-00055-VAP -OP (C.D. Cal. complaint filed Jan. 6, 2011)

Pathak’s lawsuit is the latest iteration in the litigation deathmatch royale taking place among retailers with “[Food] of the month club” trademarks. See this AP story about related litigation brought by Harry & David against Pathak over “Fruit of the Month Club,” plus Harry & David has sued both Hickory Farms and ICG (one of the defendants in this case). See a recent ruling in favor of Harry & David in the ICG case. Finally, Pathak previously sued the PTO over its granting a trademark in “fruit of the month” (and Pathak sued Google as part of that lawsuit over keyword ad revenues). I suspect I’m missing some other battlefronts in the deathmatch.

What a load of nonsense. The world would be a better place if we just declared the phrase “[food] of the month club” generic so that no one could claim a trademark in it. Even if the phrase once was descriptive and thus capable of secondary meaning, it has become genericized through overuse. In contrast, so long as we recognize trademark rights in watered-down descriptive terms like “[Food] of the month clubs,” we get bogus disputes between companies with crummy trademarks, all of them tearing each other down rather than actually doing a better job for their customers. What a shame.

OK, back to the latest case. Pathak runs a “Cheese of the Month Club” and has a registered trademark in the term. Apparently he learned some tricks from his defense of the Harry & David lawsuit, because now he’s going on the offensive using recycled arguments that apparently were used against him. (Indeed, he apparently cloned-and-revised an anti-cybersquatting claim from his precedent source even though the complaint never discusses domain names). He asserts that some advertisers bought his trademark as keywords and used the term in ad copy. He then pulls the search engines into the lawsuit as well, arguing that they ignored his C&D against selling the trademark as an ad trigger and that makes them culpable. As a pro se going up against some mighty companies, I’d say Pathak’s likelihood of success against the search engines is very, very low.

The roster of pending AdWords cases (I most recently double-checked the pending cases on September 11, 2010):

* Ezzo v. Google

* Rescuecom v. Google

* FPX v. Google

* John Beck Amazing Profits v. Google and the companion Google v. John Beck Amazing Profits

* Stratton Faxon v. Google

* Soaring Helmet v. Bill Me

* Ascentive v. Google

* Jurin v. Google 1.0 (voluntarily dismissed), succeeded by Jurin v. Google 2.0

* Rosetta Stone v. Google [on appeal]

* Flowbee v. Google

* Parts Geek v. US Auto Parts

* Dazzlesmile v. Epic

* Pathak v. ICG