Benedict v. Google — Search Results Alone Are Not Commercial Trademark Use

Background

Lance Benedict sued Google after a third party allegedly posted defamatory material about him that appeared in Google’s ordinary search results. Benedict asserted that his name was a trademark and that Google’s display of the third-party material violated federal trademark law, along with state tort law.

The district court dismissed the amended complaint with prejudice. It concluded that the allegations did not show Google had used Benedict’s name as a mark “in commerce”—a required element of federal trademark infringement. On appeal, Benedict shifted his emphasis from ordinary search results to Google’s AdWords advertising program and argued that Google had used his name in sponsored advertising.

The Court’s Holding

The Ninth Circuit affirmed in an unpublished memorandum disposition. The panel explained that trademark law does not prohibit every unauthorized appearance of a name or mark. It reaches unauthorized use connected to a commercial transaction. Benedict’s complaint alleged that Google displayed third-party content in generic search results, but it did not allege facts showing that Google commercially used his name.

The court also held that Benedict abandoned his original search-results theory by failing to defend it in his appellate brief. His newer AdWords theory could not rescue the case because a party generally may not introduce a new legal theory for the first time on appeal or amend a complaint through appellate briefing. Scattered references to AdWords in the complaint did not allege that Google sold Benedict’s name as a keyword, used it in sponsored advertising, or connected it to a commercial transaction.

The panel rejected Benedict’s challenge to diversity jurisdiction as well. His pleadings said he lived in Arizona and did not raise a substantial question about diverse citizenship when Google removed the action. Finally, the court agreed that another opportunity to amend would be futile. Benedict had already received notice of the commercial-use defect and failed to cure it, while his proposed additional details about Google’s general advertising practices still would not allege Google’s commercial use of his name.

Key Takeaways

• Displaying third-party material in ordinary search results does not, without more, plead trademark use connected to a commercial transaction.
• A plaintiff challenging keyword advertising must allege facts tying the asserted mark to an actual advertising or sales use; general references to an ad platform are insufficient.
• A litigant cannot preserve one theory in the complaint, abandon it on appeal, and substitute a materially different theory through appellate briefing.
• Courts may deny further amendment as futile when a plaintiff had a meaningful chance to cure a clearly identified defect but still offers no facts that would satisfy the missing element.

Why It Matters

The decision draws a practical line between search visibility and trademark use. Search engines may display harmful or unwanted third-party material, but that fact alone does not turn the subject’s name into a mark used by the search provider in commerce. A viable advertising-related trademark claim needs concrete allegations about how the platform itself sold, placed, or otherwise commercially exploited the mark.

Although the memorandum is nonprecedential, it offers a useful pleading lesson for disputes involving search results and keyword advertising: plaintiffs must connect the defendant’s conduct to a commercial transaction at the outset, and they should not wait until appeal to articulate the operative theory.