(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, 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.

Microsoft then quickly went forward with "phase two" of the campaign, which includes the "I’m a PC" ads that were obviously a direct response to the Apple’s "I’m a Mac" ads, and you have probably seen on television repeatedly over the last week or so. These new ads went over a lot better with critics, but one company is less than thrilled with the entire campaign, and not because of the plots of the commercials or bad writing. They have a problem with Microsoft’s slogan.

The Microsoft ads say things like "Imagine no walls," and "Life without walls." The problem according to G.ho.st, is that they already have a pending trademark on the tagline "no walls". The company is demanding that Microsoft come up with something new, and G.ho.st CEO Zvi Schreiber has written a letter to Microsoft CEO Steve Ballmer on the matter, which can be read here.

Microsoft does not feel threatened over the matter, however. A Microsoft spokesman told Kara Swisher at All Things Digital:

“We are aware of their concerns and believe their claims have no merit. We are not aware that Ghost has any trademark registrations or other rights that would be infringed by our ‘Life Without Walls’ campaign. To our knowledge, the right they have asserted, namely, a U.S. ‘registered trademark application,’ in the phrase ‘No Walls,’ does not exist.

“To our knowledge, Ghost has no trademark registrations or other rights in the phrase ‘No Walls.’ Even if they did, they cannot prevent others from using the words ‘no walls’ together in a sentence or in a descriptive manner in ad copy. Nor can they claim ownership in word ‘wall’ or the idea of a wall. The tagline for Microsoft’s new ad campaign is ‘Life Without Walls’–a slogan that, taken in its entirety, is not confusingly similar to Ghost’s purported ‘motto.’”

Hmmm, is G.ho.st just making this up? That seems odd. G.ho.st, which stands for "Global Hosted Operating System (the keywords being "operating system") is somewhat a competitor to Microsoft. Given Microsoft’s past reputation of anti-competitiveness, the whole thing smells a little fishy to me. It will be interesting to see if this turns into some major legal trouble for Microsoft, or if G.ho.st will just fall through the cracks as the technology giant’s $300 million campaign rolls on while consumers continue to live their lives having no clue what G.ho.st is.

The company filed with the U.S. Patent and Trademark Office (USPTO) to trademark the term, but its request has ultimately been denied because it has been established as a generic term.

Those in the technology industry are aware of this, but the USPTO only recently discovered how widely the phrase is used. That’s why they let Dell get several steps into the trademarking process before pulling the rug out from under them.

It has come to the USPTO’s proverbial light that many companies and individuals are saying it too. Could the blogosphere have played a role in keeping "cloud computing" generic?

"Probably the examining attorney did not suspect that this was a generic term, so he or she didn’t search for it" a lawyer told E-Commerce Times regarding the USPTO’s reluctance to deny Dell’s request from the start.

Wikipedia offers the following definition for Cloud Computing:

Cloud computing means Internet (‘Cloud’) based development and use of computer technology (‘Computing’). It is a style of computing where IT-related capabilities are provided "as a service", allowing users to access technology-enabled services "in the cloud" without knowledge of, expertise with, or control over the technology infrastructure that supports them.

The entry goes on to name innovators in cloud computing such as Amazon, Google, Yahoo!, Salesforce, HP, IBM, Intel, and Microsoft.

Interestingly enough, Dell is not even mentioned other than a small blurb at the bottom about the aforementioned trademark issue.

The company says that it is still considering it’s next course of action. They still have an opportunity to win the trademark if they can provide a valid argument to the USPTO, but Dell probably shouldn’t hold its breath on this one.

This may come as a relief to people in a lot of industries.  Perhaps some will feel they’ve missed an opportunity, but others will thank their lucky stars they’ve not been pushed out of business.

There are two problems, however.  First, even if only 0.5 percent of trademark-related search traffic altered its path, Hitwise’s data only covers the first month after Google’s permanent change.  Second (although a cause-and-effect link hasn’t been proven), companies only held their ground while spending a lot more money than usual.

"[T]hree of the four major industries that we analyzed have increased their rates of paid brand search," writes Robin Goad.  "Most drastically, the top travel brands in the UK have increased their paid brand search rate from 18.4% to 26.6%, the largest increase of any sector.  The retail industry also saw a significant increase in paid brand search activity from 11.3% to 16.2% . . ."

The situation’s not ideal, then, even if it’s better than expected.

The latest challenge to Google over its competitive keyword bidding practices for AdWords will continue in the court system. American Airlines joined a growing list of companies that resent Google’s business model enough to sue them.

MediaPost cited the brief, two-sentence order by Judge John McBryde in Texas, which simply allows the case to continue forward.

Google tends to do well with these legal challenges. They successfully beat a suit by computer repair firm Rescuecom, and settled others filed by American Blinds and by Geico.

In the case of American Airlines, Google compared its AdWords practices to that of a pharmacy, which places its generic medications alongside branded ones like Advil. It’s just competition in the free market.

The airline thinks it’s more like putting generic ibuprofen in Advil boxes and mixing them in with the boxes containing branded Advil.

It’s enough to give one a headache, but the courts are going to let it go forward. The judge will probably need an Advil himself at some point.

Moderator:

• Jeffrey K. Rohrs, VP, Agency & Search Marketing, ExactTarget

Speakers:

• Clarke Douglas Walton, Attorney-at-Law, Walton Law Firm
• Mary Berk, Director, adCenter Marketplace Quality, Microsoft Corp.
• Eric Goldman, Assistant Professor of Law, Director, High Tech Law Institute, Santa Clara University School of Law
• Deborah A. Wilcox, Partner, Baker Hostetler
• Eve Chaurand-Fraser, Online Compliance Officer, IAC Search & Media

First to begin the session is Clarke Douglas Walton an Attorney-at-Law from Walton Law Firm who gives an overview of the DMCA (Digital millennium copyright act). A DMCA includes:

• owner of the copyright material
• the ISP, and
• the user (infringer).

This DMCA works well as for copyright owners it is easy and inexpensive to file whereas the ISP likes it because it has immunity.

Minimum requirements to file a DMCA:

• ID of the copyrighted work
• ID of infringing material
• information about the copyright owner or agents.
• Statement a good faith belief of infringement
• Statement that filer is authorized
• A signature

Where to file a DMCA?

• Online Service Providers
• Host
• Search Engines
• Organic
• Paid Search
• AdSense
• Any user generated site
• YouTube
• Discussion forums
• List of online service providers at copyright.gov/onlinesp/list/index.html

What can I complain about?

• Copyright is original work of authorship in a tangle form

After showing examples of the DMCA take downs he also explained the demerits of this act which are:

• US Geographic limitations
• The act does not help in cases of trademarks, domain name and defamation
• The infringer does not really suffer a real penalty.

DMCA Tips:

• Be sure you own the copyright
• Be sure it is an infringement
• Be sure all six elements are included
• Make it easy on the service provider

Next up was Eve Chaurand-Fraser from IAC Search & Media to speak on behalf of the ISP.

Eve said that they mostly try to make both parties handle the case but this does not really result in anything. Apparently, Ask.com has a copyright policy, which includes the DMCA part.

What Not To Do:

• Don’t be vague
• Don’t be argumentative
• Don’t threaten

Ask.com even provides a DMCA form.

In the case of Trademark issues:

• They can be used as a keyword to display the ad
• It can also be uses in their ad copy.

On an interesting note, Eve informs that Ask.com receives around 10 of these DMCA requests weekly. While 1/3rd are copyright issues, around 1/3rd are trademark issues and the rest are not even legal issues.

Microsoft’s Mary Berkl is here to discuss trademark policy.

Mary says that eve though they have updated their trademark enforcement practices their policies remain unchanged.

Why are the policies changing?

• Manage all agreements between affiliates and trademark holders and advertisers is difficult.
• Frustrating to legitimate advertisers to go through a verification process
• They want to keep relevance for the end user
• It is good for everyone to have common practices, and these are inline with common practices.

Benefits:

• Advertisers will have faster approval process
• Rules are clear cut
• Add relevance for end user

Challenges:

To classify direct competitors in countless industries

What and when to expect new changes?

• Late August to early September , adCenter reps will speak with trademark owners
• Sept 10th they will implement this policy

Submitting a TM concern form can be done via snail mail, email or web form.

• Web Form asks for name, contact info, basic information and what trademark is at issue

Then Microsoft will review your claim and take action. But Microsoft needs your help with this.

Deborah A. Wilcox, Partner, Baker Hostetler says that technology serves speedy results than going to court.

Gathering Evidence:

• Identify the real parties involved including competitors, search engines and other distributors.
• Make sure your IP rights are in order. IF you own your trademark, copyrights and domain names. Register them at uspto.gov and copyright.gov
• Take screen shots
• Determine the hard that is being caused to the business, be specific

Types of Legal Action:

• C&D letter (cease and desist) is longer but effective
• UDRP actions
• Lawsuit

Emergency Relief

• Ask for temporary restraining order
• Preliminary injunction within a couple of months

What to Seek through Litigation

• Profit details
• Details on scope and extend of problem
• Promise is cease infringing
• Corrective advertising
• Recall
• Judgement "on the books"
• Monetary recovery
• Attorney fees
• Infringers profits
• Damages
• Statutory damages if infringement of register copyright, cyberquatting or counterfeiting of registered trademark (it is much easier if you are registered)

Last to discuss is Eric Goldman an assistant Professor of Law & Director of High Tech Law Institute at Santa Clara University School of Law.

Eric begins by saying the panel is "pro plaintiff".

Every company is both a consumer and producer of copyright and trademarks.

(1) Don’t be duplicitous.. Don’t feel you can enforce your rights if you engage in the same practices. Such as if you are using robots to gather third party content from web sites, then it is not right to complain if someone is doing it to you. He has a client like this. So he is adding a robots exclusion to not be duplicitous, plus offer an API to give people a way to get their content. Another example is if you don’t like other companies buying your trademark in search ads, then don’t buy trademarks for your search ads yourself. This happens all the time, he said.

(2) Invest your dollars in IP protection and enforcement wisely. What this means is… If you see someone is infringing on your IP, just don’t freak out. He doesn’t mind when a splog steals his content, it is not worth his time to go after them (agreed). Invest your money in more marketing instead. He explains that some of these lawsuits can cost you big time. He gave some funny examples.

If you want cash, you need to register. Be careful with the creative commons license.

Source: Search Engine Round Table

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