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That’s my trademark®

“American.” We all know what it means — someone or something from the U.S.A. But the term is also a brand name or “trademark” emblazoned on 777 jets. Signs in D.C. announce American University. American is well known for selling wallpaper and blinds. Given that there are millions of trademarks in the U.S., it is not uncommon for a single word to be used as a trademark by a variety of businesses in different industries.

“American” is also a keyword in today’s e-commerce market and is at the center of a dispute between Google and American Blinds & Wallpaper. Keyword-triggered advertising is a hot topic. Not only does it draw new and better Internet traffic to sites, but it results in millions of dollars in advertising revenue for search engines.

Google sells the keywords “American blinds” through its AdWords program to anyone desiring to trigger an advertisement as a “sponsored link” on Google’s search results pages. American Blinds has accused Google and others of trademark infringement — arguing that Google users searching for “American Blinds” will likely be confused when they see advertisers listed as “sponsored links” on the results pages.

Geico has also sued Google and others over the sale of the “Geico” mark as a keyword and, on September 6, 2004, Rescuecom sued Google for selling “Rescuecom” to other advertisers. The main issue in the lawsuits is whether the sale of keywords — which also serve as trademarks — violates trademark and advertising laws or is free and fair competition.

Confusion or no confusion?


The courts have been asked to address whether the more or less invisible use of trademarks that occurs in keyword-triggered advertising constitutes trademark infringement. Central to the debate is the question: Are consumers really likely to be confused by marketing techniques such as sponsored links?

The plaintiffs argue that a consumer who goes to a search engine and types in a trademark as a search term must be looking for the trademark owner’s Web site or the trademark owner’s goods or services. When the consumer sees sponsored ads or links on the search engine results page, he or she will be confused into believing that the trademark owner sponsored those ads.
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The search engines argue that just because a search-engine user types in a search request that happens to also be a trademark, that does not mean that the user is a consumer or someone looking solely for the trademark owner’s website or the trademark owner’s particular goods and services. They further argue that the sponsored links are readily identifiable as separate from the “organic” search results, and are clearly labeled with the name of the actual source of the ad, so that users are not likely to believe that the trademark owner is the source of the ad.

It is likely that the parties to these lawsuits will engage survey experts to attempt to replicate the search engine user experience and measure whether confusion is occurring. A survey was conducted in a 2004 case involving the somewhat similar technique of keyword-triggered banner advertising in Playboy Enterprises, Inc. v. Netscape Comm. Corp.. In that case, Playboy hired a consumer confusion expert. The expert surveyed potential web consumers with respect to whether banner ads triggered by terms such as “playboy” and “playmate” confused users into believing that the source of the banner ads was Playboy, when in fact the ads were bought by another adult entertainment company.

Playboy’s expert measured the confusion at 51 percent when study participants were shown search results for the term “playboy,” and 31 percent when shown the results for “playmate.” Through the survey, the expert found that 29 percent of those participants viewing “playboy” searches and 22 percent of those viewing “playmate” searches were specifically confused because of the targeting of the banner advertisements. The individuals were not confused by random, untargeted ads.

The 9th U.S. Circuit Court of Appeals looked at the survey results, and while the defendants disputed the methodology and conclusions drawn from the survey, the court found that there was enough evidence that people were likely to be confused by the banner ads. The court ruled that Playboy’s case could continue. However, how a jury would react to this evidence will not be known, because the parties settled shortly after the court’s ruling.

Best practices


While these keyword-triggered advertising cases wind their way through the justice system, advertisers may be well-advised to take a conservative approach and avoid the purchase of keywords that are the trademarks of others (especially marks of competitors), unless those trademarks have some relevancy to the content on the advertiser’s site.

Advertisers should understand how their ads will be triggered. Google’s AdWords program defaults to the “broad match” form. The broad match will pull up the advertisement for anyone searching for the purchased keyword, even if the searcher has added in a competitor’s trademark as a search term (for example, a search for “Nike shoes” will trigger an ad where the keyword purchased was simply “shoes.”)

On the other hand, Overture’s default is set to an exact match, called “standard match,” so that the ad is triggered when only the keyword purchased is searched. Overture also maintains a policy that it is impermissible to buy a keyword if it is irrelevant to your content. If you send a complaint to Overture, it will investigate the use.

Google, however, recently announced that it will not police the mere purchase of keywords that may be the trademarks of another, at least for complainants in the U.S. and Canada. So, for the most part, trademark owners will need to resort to self-help through the legal system to police the market against arguably unfair practices.

Conclusion


Trademarks are seen everywhere — Milano Pepperidge Farm cookies in the last episode of Frazier, Mickey Mouse on virtually any product you can think of, and even made-up marks made appearances in Tarantino’s Kill Bill movies.

These marks (the real ones, at least) symbolize the goodwill of the providers of goods and services. Trademarks are also being “used” in unseen ways for targeted advertising such as through keyword-triggered sponsored links. Courts (and juries) have yet to weigh all the evidence on the legality of these techniques. The facts in each case must be closely examined with the aid of experts to measure consumer confusion through surveys.

By following a conservative approach, advertisers can minimize the risk of legal disputes in this new virtual world.

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Deborah A. Wilcox is a lawyer and co-chair of intellectual property litigation at Baker and Hostetler, LLP, in Cleveland. She is a graduate of the University of Wisconsin-Madison Law School and regularly handles copyright, trademark and e-commerce litigation. She can be reached at dwilcox@bakerlaw.com.

Portions of this article were previously published in Ballyhoo, Quarter 3 2004.

The opinions expressed herein or statements made in the above column are solely those of the author, & do not necessarily reflect the views of Wisconsin Technology Network, LLC. (WTN). WTN, LLC accepts no legal liability or responsibility for any claims made or opinions expressed herein.

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