Handling Trademark Challenges in an Online World

Get the latest information on trademark issues implicated in the launching of online advertising campaigns, including the purchase of keywords, buying display ads, developing and protecting taglines, and acquiring associated domain names.

Moderator:

• Russell Pangborn, Microsoft Corporation (United States)

Speakers:

• Nicholas Bolter, Howrey LLP (United Kingdom)
• Fabricio Vayra, Time Warner Inc.
  
• Suzanne V. Wilson, Arnold & Porter LLP (United States)

What do you do when you launch a new brand in cyberspace?

Laughter when panelist suggests he is not too worried because the "advertising company" has cleared the trademarks. Of course, we all know that advertising and marketing companies are no t the entity to 'clear' your marks.   More laughter since the brand name chosen still has not been registered as a domain name.

You need to understand the scope and nature of the campaign: keywords, social networks, banner ads What countries will be targeted.

Register defensively and defensively other extensions and productnamesucks.com.  [this is really basic stuff. could trademark attorneys not know this stuff already].  Courts still look at meta tags on issues of intent. So be careful. The meta tags won't help you in search results anyway. 

Keyword advertising is a hot issue.  Panel shows audience what a Google advertisement looks like [again, hard ot believe that trademark attorneys would not know this stuff]. Use of keywords by competitors is still very new law.  Current state of US law is that the sale and use of a keyword is "use in commerce."  Second Circuit had previously held that it was not 'use in commerce' but Rescuecom changed that.  Focus is now on whether purchase of keyword and text result in trademark infringement. Focus is on the text of the advertisements.  Initial interest confusion is a key part of the focus.In the EU, it is still up in the air.  However, identical use need not prove confusion.

Banner Ads:  What keywords trigger the banner?  What trade dress issues might arise. What does the banner ad link to?  There is a lot of activity in the comparative advertising space. Beware of banner ads which are fraudulent or display your ad in a place which dilutes your mark. There are also instances where the display page is coded to engage in bad activity. Don't delegate where your ads are appearing.  You need to control and know what is happening with your ads.

Affiliate Programs:  You need to have control of your brand.  Can't simply hand it off.  Need to know who the thrid party is, where the brands will be used and what will be said.  Must control your affiliates. They may try to register domain names with your brand in it.You also need to control keyword advertisements. You offer bounties to affiliates for every person you bring to door or subscription. 

Viral Marketing:  Consider consumer reaction and rules.  You can't always predict the reaction.

Social Networking:  Consider underlying rules and ramifications. Again, there are fewer controls in place and things can go wrong quickly.

Community Sites / Blogging / Micro Blogging -  Twitter and other tools are great but again your brand is being published in places you may not fully appreciate.  You need guidelines and a point person who is responsible for this.If thrid parties register your brands as twitter accounts, you may have a problem convincing twitter to help you. Facebook users may want to start fan sites which suggest that they are authorized to speak for you.  Consider developing guidelines and crating a community of fan brand.

Employee Blogging:  This is a challenging area. You need to make sure employees whoa re not authorized to speak for the company don't misrepresent their authority.  Also, you need to make sure no one monetizes your brands.

Too often, your legal department makes arguments and you find out you are doing the same thing.

Licensing of domain names:  We try an ensure registrant info remains with the trademark holder.  Typically, we do not grant those rights. Control your brand.

Comments

[UDRPtalk]

I agree with you, except I think companies should not take their "sucks" version of their domain because it would signal that they lack self-confidence in their product/brand offering.

Overall, I consider it an immature way to silence free speech.