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 today at 866.936.7447.
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. 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.
BRIAN: Thanks a lot, Damien. I appreciate it.
DAMIEN: Well, today we are going to be talking about unauthorized use of one's trademark and online keyword advertisements which is known as keyword infringement. So, let's start off with the basics. What is a trademark?
BRIAN: Well a trademark is a word, sometimes a symbol, phrase, could be a local, an image, whatever it might be and it's used to identify a particular manufacturer or seller's products and really the whole point of a trademark or service mark is to distinguish one manufacturer's products or services from that of another.
DAMIEN: Alright, we've determined that a trademark is the branding and it's owned by a specific person to describe a specific product or service. So, how does this fit in with keywords and what are online keyword advertisements?
BRIAN: Well, we're talking about online keyword advertisements. It's best if we think about an example. Most of us have gone to a search engine before such as Google, Yahoo, and even MSN has them, and there are many others out there but we'll probably talk most about Google today because it's probably the one that most people are familiar with. You go and you visit a search engine and then you can conduct a search by typing in different words, and once those words are searched, the search engine generates search results. For example, if you Google, let's say, Chicago restaurants, you'll see a result listing a bunch of different restaurants in the city of Chicago or offer some sort of Chicago cuisine. Some of these results are what we call natural results, meaning that advertisers did not necessarily pay to have these results shown, but rather they have optimized their web content in such a way that the search engine's algorithm recognizes the relevancy of what the website is offering, so the individual can search for an item and then click on a link and it takes you to that website. But when we're talking about keyword infringement and the unauthorized use of someone else's trademarks in keyword advertisements, we're talking about sponsored link results. And those are the link results that you see, usually on the right hand side of the page or sometimes to the top or the bottom. It's not those natural results. It's the ones that are in a gray box or some other indicator showing that they are sponsored links. Like the natural result, they contain a link to a website, but the difference with these sponsored links is that a person has purchased the ability to show up when the user searched those particular keywords. So, simply put, advertisers bid on keywords and their advertisements appear when those keywords are entered into the search engine.
DAMIEN: Well, isn't there something called fair use of another person's trademark?
BRIAN: There definitely is, all the trademark defenses still apply when we're talking about unauthorized use of trademarks, be it in keywords or otherwise, but if someone is making fair use of the mark or simply using a generic term like apple and it directs them to a website where they sell apples, that's not what we're talking about here. That's not keyword infringement. In fact, the policy right now with a search engine such as Yahoo is to explain that it is not trademark infringement where the advertisement appearing as a sponsored link is that of an authorized reseller even. So, if you're using a generic word or somebody has authorized you to use their trademark as a keyword, that's not keyword infringement. The problem really lies in that people are purchasing keywords that correspond to the trademarks of another and then showing up when internet users search for that trademark. A common example...let's use a well-known trademark. If someone types into the Google search engine "Nike," Nike would probably not want Adidas, Reebok, Converse, whoever it might be, to appear as sponsored links, because what's going to happen is this is going to entice consumers to go to the competitor’s website as opposed to Nike's. This is really the practice that is known as keyword infringement and it's truly what is causing trademark owners to lose business.
DAMIEN: What are the courts saying about keyword infringement right now?
BRIAN: That's a great question, and quite frankly, it's an unresolved issue right now. The state of the law surrounding use of trademark and online keyword advertisements is in flux right now. The latest rulings, at least in the United States, have held that using a trademark of another as a keyword is okay as long as it does not appear in the text of the advertisement. And what this really means is that someone can bid on a keyword and have their advertisement displayed, as long as they do not use that keyword or the trademark of another in the text of the advertisement. So, if you typed in the keyword "Nike" and an advertisement came up, if there's no use of Nike in that sponsored link within the text of that sponsored link's advertisement, some courts have held that this does not violate trademark law. Whereas, if the advertisement comes up and it says Nike shoes or Nike something else, this does violate trademark law and has been held to be an actual trademark infringement.
DAMIEN: But if I type in the word "Nike" and it takes me to a Converse site and there's no Nikes on there whatsoever, isn't that kind of a blind draw? I didn't want to go to Converse, I wanted to go to Nike.
BRIAN: Well from Nike's perspective, they're still saying that there's most likely initial interest confusion there. You typed in Nike into the Google search engine or some other search engine, looking for Nike shoes. You weren't looking for Converse shoes, so if Converse came up and they had some sort of reference to Nike, then courts were saying that's problematic. Now if Converse is using Nike keywords, but not using it in the text of the advertisement, other courts have said that that's not keyword infringement. But nevertheless, courts are recognizing the problem and have even gone as far as to enjoin some third parties from purchasing the keywords that correspond to another's trademark, and some courts have even said that they need to negative keyword certain trademarks to avoid infringement. What negative keywording means is that you need to select a particular trademark to ensure that the third party's advertisements do not appear when the trademark gets searched. So regardless of whether or not the courts are saying this is trademark infringement or not, there are still companies out there who are not approving of competitors ads coming up regardless of whether or not the trademark itself appears in the text of the advertisement.
DAMIEN: Well this has become the hot issue. I imagine it's happening more often than not.
DAMIEN: What should I do if I'm the victim of keyword infringement?
BRIAN: Really you need to look at the two parties that could have liability here and, like I said, the courts have come down and held that it's not necessarily the search engine's fault if they're taking affirmative steps to try and prevent this, but there have been decisions that have held liability and cases have been settled and what not, so once again, it's an area in flux right now, but the two parties that you're looking at is first the advertiser who bids on the keyword and is presumably displaying those trademarks of yours in an advertisement. And the second is the search engine whose engine who enables such behavior. What you want to do is you need to identify who those parties are. And you need to be sure who is the search engine providing it, and also who is the registrant of the domain name that comes up as part of that keyword advertisement that you want to put on notice by way of a trademark cease and desist threat letter or do something further to stop the trademark infringement on your keywords.
DAMIEN: Do you have any closing thoughts on this matter, Brian?
BRIAN: Yeah, the most important thing to keep in mind is when consumers are likely to be confused, there's no doubt that you can be losing business to competitors. So, what you want to do if you're the victim of keyword infringement, is you need to get cease and desist letters in play that puts the search engine or the infringer themselves, on notice that you have colorable claims against them. If we look at the search engines, some of them have complaint procedures now that you need to follow. So, simply sending a threat letter to Google might not get the job done. Google, for example, has a procedure to follow when your trademark is being used in an advertiser's online ad, but they also have a different procedure for when your trademark is being used in a parked domain name, so you need to be aware of what those procedures are and, quite frankly, that's where an experienced trademark, domain name, internet law attorney can come into play. When you're looking at notifying those infringers, there are things that need to be included in a threat letter to those people who are using your trademark as part of their keyword in online advertisement, so you would want to identify the following:
1. What is your trademark;
2. You'd want to be able to say, here's the infringing ad that I’m talking about, show them what they are, snag a screen capture of them and send them as an attachment to the trademark cease and desist threat letter. You'd also want to be able to note what the current law is and where it favors your position; and
3. You want to make demands. You want to say, I want you to stop using my trademark in any way, including as part of a keyword, and things along those lines.
So, there's really a process out there that can be followed, and sending a letter is without a doubt the first step, but it's definitely not the last. There's other ways of re-dressing and remedying the issues that these people are facing and a code of law is definitely one of them, and it's something that needs to be explored and considered. So, in closing, with the internet becoming the main means by which consumers find you and your products, a person failing to protect his or her trademarks and online property can be absolutely devastating for the business. So, it's undoubtedly critical that these business owners understand the limits between effective and legal marketing and the difference between keyword infringement.
DAMIEN: Wow, just so much going on now with the technology sweeping up and turning to the internet more for information and to locate products, just so many changes and so many new little niches for people to get into. A huge issue, and we really appreciate you spending your time and telling us about it today, Brian.
BRIAN: Thanks a lot, Damien. I appreciate you giving me the opportunity to be on here.
DAMIEN: No problem. We've been speaking with Brian Hall of 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. I'm Damien Allen. Have a great afternoon.