Will the Latest Trademark Infringement Lawsuit Determine Whether the Use of Keywords Trademarked by Another Is Legal?

The battle over whether search engines can allow third parties to bid on and use keywords incorporating the trademarks of third parties has heated up once again, as blogged about at the Technology & Marketing Law Blog here.  American Airlines has filed a trademark infringement lawsuit against Yahoo and Overture d/b/a Yahoo! Search Marketing over its handling of keywords.  The counts include Lanham Act claims of trademark infringement, contributory trademark infringement, vicarious trademark infringement, false representation, dilution, equivalent Texas state law claims, and tortuous interference with contract.

USPTO’s New Initiative Aims at Consistent Treatment of Federal Trademark Applications

The United States Patent and Trademark Office (USPTO) has issued a Consistency Initiative.  The goal of the Initiative is to avoid the inconsistent handling of an applicant’s recently registered and pending trademarks or service marks.  During this one-year pilot, applicants may submit a Request for Consistency Review when a substantive or procedural issue has been addressed differently by examining attorneys within the USPTO.  Four requirements must be met to file such a request, including: 

Brands (Trademarks) are the Way to Distinguish Yourself and the Quality of Your Goods or Services on the Internet

We have said it time and time again: trademarks are increasingly important in today’s digital age.  Eric Schmidt, CEO of Google, appears to echo our urgings when, as reported, he said: “Brands are the solution, not the problem, . . . Brands are how you sort out the cesspool.”  He went on to state:  “The fundamental way to increase your rank is to increase your relevance. . ."

While Mr. Schmidt is talking about the need for quality content in order to appear relevant within the Google search engine, he also appears to be stressing the need for a reputable brand that consumers will recognize and trust.

Keyword Trademark Infringement: The Unauthorized Use of Trademarks as Keywords for Online Advertisements

Trademark attorney Brian Hall discusses the issue of the unauthorized use of trademarks in online keyword advertisements on Google Adwords and Yahoo! Search marketing. As keyword advertising continues to grow, the debate around the use of competitor and thrid party trademarks as keyword triggers and in advertising text heats up. Mr Hall represents trademark interests around the world and regularly advises clients regarding on-line trademark issues.  If you are wondering how to trademark your brand, monitor third party trademark infringement or want more information about enforcing your mark, contact one of our trademark attorneys for a free consultation or call 866.936.7447.

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Today’s program is brought to you by the attorneys at Traverse Legal, PLC, a global law firm specializing in Internet law, Trademark infringement, Copyright Infringement, Cybersquatting, On-Line Defamation, Non-Compete & Trade Secret Law and Complex litigation. If you have a legal matter arising on the web, contact one of Traverse Legal’s internet lawyers today.

DAMIEN: Welcome to the Traverse Legal Radio. Good morning and welcome to the VTalk Radio Tech Spotlight. I'm Damien Allen in the studio and on the phone we have Brian Hall. Brian Hall is an attorney with Traverse Legal, PLC. Brian's practice focuses on trademark matters including trademark clearances and registrations, opposition and cancellation proceedings in front of the TTAB, licensing issues, and federal court litigation. Brian also regularly handles domain dispute resolutions, internet law matters, and related business representation matters. Good afternoon and welcome to the program, Brian.