Merck sued online pharmaceutical retailers that were selling Merck's cholesterol lowering drug "Zocor" and a generic version of the drug "Zocor" on their websites. Merck alleged that the online pharmaceutical retailers were engaging in trademark infringement by using the mark "Zocor" to describe a generic version of the drug with terms such as "Zocor generic" and "generic Zocor." Merck further alleged that the retailers engaged in trademark infringement by using "Zocor" as a keyword to trigger advertisements on online search engines.
In analyzing the retailers' motion to dismiss, the Court held that the use of the terms "Zocor generic" and "generic Zocor" did not constitute a "fair use" of the "Zocor" trademarks since there remained some question as to whether "Zocor generic" or "generic Zocor" constituted a descriptive use of the trademark. The Court further concluded that the retailers' use of the keyword "Zocor" to trigger advertisements on online search engines did not constitute trademark infringement since the use of the "Zocor" trademark as a keyword did not cause the trademark to be used in commerce. Thus, the Court granted the prong of the retailers' motion to dismiss relating to the use of "Zocor" as a keyword but denied the retailers' motion to dismiss as it related to the infringement claim based on the use of the terms "generic Zocor" and "Zocor generic."
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