10 Jan Beware of trademark poachers in search-engine ads
When it comes to online advertising, one of the tools your competitor has may be your company’s name, trademark or service mark.
Google and Overture allow advertisers to purchase company and product names and federally registered marks as keywords in pay-per-click campaigns. This allows companies to poach potential customers from their competition by having their ads appear whenever a consumer searches for a competitor by name.
The practice also saves competitors money because a competitor’s name can be less expensive and better targeted than campaigns that use general terms. For example, I recently priced the cost of “Home Insurance” as a keyword at $9.85 per click. By contrast, “American Family Insurance” was $9 per click. The name of my local insurance agent’s company was $0.05 per click.
Trademark owners have begun to challenge Google and Overture with the legality of selling their brand names to its competitors. In 2004, Geico auto insurance challenged Google and Overture for the practice with mixed results. Overture settled with Geico out of court. When the case against Google was heard, district court judge Leonie Brinkema in Alexandria, Va., granted Google’s motion to dismiss the complaint, saying there wasn’t enough evidence of trademark infringement by ads triggered by keywords where the ads do not contain the Geico mark.
Marjory Stewart, a Milwaukee-based intellectual property and business law attorney, said the Geico/Google case is one that will involve deft discernment of trademark law.
“What looks like a victory for Google after the early part of the decision of the court, may include liability on the finer points of trademark law.” She said. “A company can be held vicariously liable for trademark infringement if it has the right to control someone else downstream ,or does control them, and that party infringes on another’s mark. Some of the results in the Geico case involved sites that used the Gico mark without Geico’s permisission. That’s a problem.”
She said that it is possible for companies like Google and Overture to be held liable for “contributory infringement” if they intentionally induced another company to engage in infringing conduct. Or, if they fail to take reasonable precautions against another company’s infringement if it can be reasonable anticipated.
It’s even more likely, she said, that advertisers using the practice may be held responsible. The district court held that where competitors’ ads come up on the Google results page as a result of such keyword links, and these result pages do display the Geico trademarks in a manner which is likely to cause confusion, that it can constitute trademark infringement on the part of the advertiser.
Businesses need to be wary of using a competitor’s name to promote their own business and aware of how competitors may be infringing on their brands and trademarks.
Get federal registration for your trade and service marks
One of the most important reasons to register your marks is to ensure that you’re the definitive owner and to deter others who may consider adopting them for their own uses. The cost of registration is easily paid for on this basis alone. The U.S. Patent and Trademark Office will refuse to register any confusingly similar marks. Your mark will appear on trademark searches when businesses contemplate adopting a mark that is similar to yours. And, in the event of a dispute, you won’t have to begin by proving that an unregistered mark is valid.
Monitor your brands
It’s relatively simple to monitor whether competitors may be misusing your brands. You can enter your company’s name in Google, Yahoo, MSN.com and other search engines and evaluate the advertisements that appear with your results. Additionally, you can open accounts with Overture and Google Adwords to determine whether other companies are bidding on your company name, or its marks.
Force competitors to stop
Companies that do not actively protect their trademarks risk losing them. When abuse occurs (intentional or not) your company should send the other company a ‘cease and desist’ letter that includes the company’s name, trademark, and registration numbers.
Remember the goodwill
You grow a mark and a brand to establish equity in a strong mark that has a reputation for being associated with a provider of excellent goods or services. If you use your mark widely as a keyword, and send consumers on a pinball route through the internet when they attempt a search, they may come to associate your mark with nuisance and frustration. End of goodwill, end of equity in the mark.
Finally, remember that the Geico v. Google decision is not yet complete, and that others like it are in the courts. It is too early to assume that programs such as Google’s Adwords, if used with federally registered trademarks, leave the search engine completely without liability. We appreciate the benefits of excellent and broad searching, and good reasons exist for the limited use of competitors’ marks in the search systems, but the courts have not yet interpreted trademark law to delineate the an outer boundary for such use.
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.