Language Software Firm Says Rival Is Misusing 'Rosetta Stone' Mark

The company that markets a popular software that helps users learn foreign languages has filed a California federal court lawsuit alleging a rival is misusing the "Rosetta Stone" trademark.

Defendant Rocket Languages Ltd. and several affiliates infringed the trademark in promoting their products with online advertising programs from Google and Yahoo, according to the complaint.

Rosetta Stone Ltd. filed suit in the U.S. District Court for the Central District of California against Matthew Weidner, Ishmael Lopez, and New Zealand-based companies Rocket Languages and Libros Media Ltd.

The suit says Rocket, with help from Libros Media, promotes its products through an online affiliate network. Weidner and Lopez operate Web sites that are part of the network and earn commissions on each sale of Rocket's products through their sites, according to the complaint.

The defendants purchased from Google and Yahoo the ability to have ads for Rocket's products appear when users search for the trademarked term "Rosetta Stone" and several variations, the complaint says.

The defendants also use variants such as "Rosetta Spanish" or "Rosetta German" in the ads, which falsely leads people to believe that the ads are for Rosetta products, the complaint alleges.

The affiliate Web sites operated by Weidner and Lopez post purported reviews of the competing companies' products, which invariably favor Rocket over Rosetta Stone, without disclosing that the reviewers are paid to market Rocket products, the complaint says.

The sites also falsely claim that Rosetta Stone does not offer free trials of its software, even though free-trial versions are available on the plaintiff's Web site, according to the complaint.

The suit alleges trademark infringement, trademark dilution and unfair competition under the Lanham Act; unfair competition and false advertising; and contributory and vicarious trademark infringement.

Rosetta Stone seeks injunctive relief and compensatory damages, including treble damages.

Mark Ling, a director and 50 percent co-owner of Rocket, said the company prohibits its marketing affiliates from using competitors' search terms in keyword advertising and that it has tried to stop them from doing so but has not always been successful.

"It is against our terms and conditions of our affiliate program for them to bid on competitors trademarked search phrases," Ling said in an e-mail.

He said Google has a method by which owners of trademarked terms can stop competitors from buying those terms as keywords, but Rosetta has refused to use that procedure.

Ling also pointed out that Internet users who search for "Rocket Languages" and related terms see ads for Rosetta's products because Rosetta marketing affiliates bid on Rocket's trademarks in the same way that some Rocket affiliates bid on Rosetta's marks.

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Rosetta Stone is represented by Benjamin Chapman of Cooley Godward Kronish in San Diego and Peter J. Willsey, Nishan Kottahachchi and Brendan J. Hughes of the firm's Washington office.