Protecting Your Trademarks: Who’s Job is It?

    August 26, 2004

Concern over trademark protection is growing steadily among online advertisers. Who’s responsibility is it to protect your trademarks? Should the trademark holders be expected to spend ad dollars to buy their own trademarked terms? What kinds of things should/could search engines do to help alleviate the problems?

Discuss this at WebProWorld.

Who should protect your trademark?
Who should protect your trademark?

Catherine Seda, author of the book Search Engine Advertising, suggests one simple remedy to the problem might be to incorporate something into your result that denotes your site as the official site’ for your company/product.

Matt Naeger, VP and General Council for IMPAQT, suggested that affiliate contracts should have specific language written in to preclude your affiliates’ use of marks. While your power over unscrupulous competitors may be limited, you should certainly have some say in how your affiliates use your trademarks. You are, after all, paying them.

Once a problem has been identified, legal recourse might not be your best solution right off the bat. Catherine suggests the search engine should be one of your first options. File a complaint with the search engine based on the lack of relevance or from the perspective of a customer confusion factor.

Give your customers the opportunity to let you know when they have had problems distinguishing your site from others in the search results. Document cases where a consumer was searching for you, but ended up on another page due to a misleading ad/search result. When you approach the search engines and cite customer confusion, be prepared to show the engines these examples you’ve collected. Danny Sullivan seemed to think a good angle to take on the situation was to present it as a relevancy issue. The examples you collected could help you make that argument as well.

Obviously, search engines are well aware of the growing problem these trademark issues represent. In Google’s S-1 filing they list intellectual property rights claims’ in the section outlining potential risk factors for the company (it’s at the bottom of page 9 and top of page 10 of the document. Basically this is to give potential investors a heads up that they are being and probably will be impacted by legal decisions regarding trademarks and intellectual property rights claims.

Whether or not enough is being done on Google’s side to remedy the problem is somewhat debatable. Google will not allow you to purchase a specific trademarked name, but you can still purchase the name in conjunction with another term. For example; Delta would be a no-no, but Delta faucet or Delta vacation would be fine. Many feel like this policy is too lax, but if you consider it from the standpoint of the search engine, what is fair?

One big issue seems to be the broadmatch default for Google’s AdWords specifically. Unless they expressly choose to omit certain terms from their campaigns, advertisers could unwittingly find themselves in a situation where they are being accused of trademark infringement simply because they were broadmatched for resort’ and the next day they’re being contacted by Hilton or Hyatt. Some suggested that enhanced tracking and monitoring tools in the AdWords program could go a long way towards alleviating these kinds of problems.

If the onus for Trademark protection lies solely with the holder, is it reasonable to expect the search engines work on ways to assist the trademark holder in keeping track of how their marks are being used? In the forum at SES, someone suggested that the search engines could easily highlight official sites – something like you see in Overture’s “quick hits” that give the official site a more prominent placement. It was also suggested that engines could use existing technology to set up trademark alerts similar to the news alerts’. The idea being that you would essentially be able to be notified by the search engine whenever your terms came up. These are both good ideas, but at the end of the day is it the search engine’s responsibility to help trademark holders protect their marks?

Mike is a manager at iEntry. He has been with iEntry since 2000.