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Bidding On Keywords Related To Trademarks

What is infringement?

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Bidding on keywords that are related to brands that are trademarked is a legally murky issue when it comes to infringement.

(Coverage of the SMX Eastconference will continue at WebProNews Videos.  Keep an eye on WebProNews for more notes and videos from the event this week.)

In the session "Trademarks & Paid Search: How Thing Have Changed?" the panel discussed the issue of keywords, trademarks and infringement.

Deborah Wilcox, Baker & Hostetler, LLP
Deborah Wilcox
Baker & Hostetler, LLP

Deborah Wilcox, Partner, Baker & Hostetler, LLP, said, "Trademarks are all about brands." Just because a word is in a dictionary does not mean that the word is free to use.

A generic keyword is not trademarked. Descriptive keywords are not yet strong enough for a trademark.

Establishing trademarks right is usually associated with who is using the mark first.

Infringement occurs when someone is using another’s mark that is likely to cause consumers confusion or to cause a mistake or to deceive as to source.

Is the sale or purchase of a trademarked keyword constitute use in commerce? If the ad that is triggered has the actual keyword in the title or text, then yes.

Trademark law is established to protect consumers from being misled in purchasing decisions.

 Courts apply multi factor test

  •  strength of the trademark.
  •  Similarities in goods and services
  •  wrongful intent to trade off of goodwill
  •  actual consumer confusion

With keyword triggered ads, how might there be confusion?

- Are all the users typing in a search term, looking for the trademark owner’s site?

- Are users able to distinguish among all the different ads they are served within the results, or are they duped into thinking all the sponsored links are official links.

Permitted use of trademark:
- Descriptive fair use of mark in ordinary dictionary sense… (talking about apple the fruit)

- to identify the authorized product (resellers and making things that are compatible with the brand)

- providing information (writing or blogging about a brand)

- comparative advertising (can be very subjective — for example when you compare your product by name to your competitors name/brand) — very tricky and subjective..

Laura Covington, Associate General Counsel, Global Brand and Trademarks, Yahoo, said Yahoo’s trademark policy is premised on fair use. Competitors cannot bid on trademarked terms.

4 ways to raise trademark related questions from yahoo with search marketing:

Trademark complaint
Counterfeit complaint
False and misleading complaint
Copyright DMCA

Microsoft Trademark policy:

Limited range of advertisers that can bid on trademarked terms:
Resellers, information sites and dictionary terms.

Google’s Trademark Policy:

Google will launch a limited investigation. If the investigation fids infringement, they will take the trademark out of the ad, but leave the ad up.
 

WebProNews reporter Mike McDonald contributed to this article from SMX East.

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  • Guest

    Trademarks and keywords are tricky. Interesting…

  • http://www.mostwanteddomains.com michael Berkens

    Don’t know if you saw this, but the highest court in the EU is expected to rule that selling trademarked keywords is fine and dandy.

    http://www.thedomains.com/2009/09/22/the-highest-court-in-the-eu-says-its-ok-for-google-to-sell-trademarked-keywords/

    We write about this issue frequently.

  • http://www.assaralaserhairremoval.com Assara Laser

    Companies that manage search engine advertising should also be aware of two further issues: (1) jurisdictional differences in trademark law, and (2) use of Dynamic Headlines.

    As far as trademark law goes, there are different applicable trademark laws to companies in different federal circuits. In the Second Circuit, for example, merely bidding on a competitor’s name as a keyword, or merely using the competitor’s name in your website meta data, does not constitute a “use” within the meaning of the Lanham Act (the applicable trademark law). (see, http://en.wikipedia.org/wiki/1-800_Contacts, for a summary of the seminal case). In California, however, the very same act would violate the Lanham Act.

    Use of Dynamic Headlines in their Adwords accounts can also cause difficulty, even in the Second Circuit. The dynamic headline function in Adwords permits the Adwords account user to choose an option which makes the search term that was used to generate the ad automatically display as the headline of the ad. So, if you were a watch retailer, and used “Rolex” as a dynamic keyword, then when a searcher typed in Rolex, your ad would appear with the term “Rolex” as the headline, even though the headline directs users to your website.

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