Google's Policy for Keyword Advertising

Hello!

I hope all is well! In my last post I briefly mentioned Google's Policy on their advertisers' use of trademarks as key words in key word searches that produce advertisements.  Specifically, I mentioned that Google has established a policy in which Google will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.  Google will implement this policy when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger.  I do need to clairfy that this policy applies to countries outside of the UK, Ireland, Canada, and the US.  See Google's Policy here.

However, in the UK, Ireland, Canada and US, Google's policy is different.  Google will remove the trademark as a keyword only when the trademark is displayed in the ad title or in the ad text.  But it will not completely disable the use of the trademark as a keyword.  View this policy here. 

Below is an example:

In the U.S, if I have a company that is a competitor of John Deere, I can purchase John Deere, which is a trademark, as a keyword.  A search for John Deere will also pull up advertisements for my company.  My advertisement can be just as prominent or more prominent than John Deere's. Of course this can be frustrating for John Deere.  But as long as John Deere, which is a trademark, does not appear in my ad title or text, Google will not require I stop using John Deere as a keyword.  Google will allow this even if John Deere complains.  But outside of the UK, US, Ireland, and Canada, if John Deere complains about the use of its keyword in my advertising campaign, Google will require that I stop using the keyword and prevent me from using it further.   Even though the trademark, John Deere, does not appear in my ad text or title, Google will prevent me from using it as a keyword.  Why is Google's policy different for the US, Canada, Ireland, and the UK?  Well it mainly comes down to how strong the trademark laws are in a particular country regarding the use of trademarks as keywords.

As I mentioned in my previous post, Google has been sued many times for its policy here in the US.  However, Google has either settled each lawsuit or the lawsuit was dismissed for a variety of reasons.  The second circuit has concluded that the use of keywords in advertising is not a use in commerce and therefore not trademark infringement. Read my synopsis of this case here.  On the other hand, the 11th circuit has said the use of keywords in advertising is a use in commerce and therefore trademark infringement.  Other courts in the US, have not been clear whether using trademarks as keywords is trademark infringement. Ultimately this issue is still up in the air and will have to be decided by a higher court.  

Since the courts are pretty much split regarding this issue, Google is not motivated to do more to stop advertisers from using trademarks as keywords in an advertising campaign. Google's policy here in the U.S. is definitely more advertiser friendly. I still stand by my policy to not use trademarks as keywords if you are an advertiser.  The search engine may not be liable for allowing you to use the trademark has a keyword, but you will as an advertiser. 

In my next post, I will discuss some of the laws established in countries where Google's policy is more trademark owner friendly.

I hope this information was helpful.  As always leave a comment or contact me via email if you have any further questions.

Can Search Engines be Contributorily Liable for Trademark Infringement?

Hello!

Today's topic is contributory liability in regards to trademark infringement, i.e, contributory infringement.  Of course, we are going to discuss this trend as it applies to the Internet. First let me explain what is contributory infringement.

Contributory infringement is a legal concept that is usually applied to copyright infringement. Contributory infringement is when an individual or entity knows that copyright infringement is taking place by another and allows, causes, or assists the infringing activity.  Here is an example:  

A manufacturer unlawfully copies an artist's work and sells it to a major retail chain.  The retail chain sells the works in all of its stores.  The artist notifies the retail chain of the infringement and requests that they stop selling the infringing work.  However, the retailer continues to sell the infringing work.  The retailer would be liable for contributory infringement because they had notice the work in question was infringing and they induced or allowed the manufacturer to commit copyright infringement through selling the work.  

Recently, courts have applied the contributory infringement concept to trademark law.  The current law states that "If a manufacturer or distributor intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit."  Inwood Laboratories, Inc. v. Ives Laboratories, Inc.  Strong language!  

How does this rule apply to search engines?  Specifically, can a search engine be liable for allowing trademarks to be used in keyword searches that result in the advertisement of the trademark by a trademark infringer?  This practice is called key-word linked advertising.  I briefly discussed this concept in my earlier post.  Google has come under fire for this practice.  They have been sued many times.  However the lawsuits were either settled or dismissed.  As a result, Google has established a good policy to avoid contributory trademark infringement liability.  Essentially when Google receives a complaint from a trademark owner that a Google advertiser is using the trademark in the ad text or as a keyword trigger, they will require the advertiser to remove the trademark from the ad text or keyword list and will prevent the advertiser from using the trademark any further.   Thus Google is adhering to the law established in Inwood Laborities...not knowingly contributing to trademark infringement.

What does this mean for consumers who advertise on the Internet? Don't use established trademark has key words when advertising.  If you sell designer purses, use "designer purses" as a key word  instead of "Louis Vuitton" or "Chanel."  This simple practice will save you a lot of heartache and money. 

Using Third Party Trademarks as Meta-Tags on Blogs

Hello!

I hope all is well! Like most bloggers, I use meta-tags based on the subject of my blog or posts, to make it easier for search engines to find my blog when an internet users enters the search term. However, what happens when you use a trademark as a search term.  Is it trademark infringement or a search engine linking function?  This issue was discussed at PLI's Intellectual Property Law Institute.  There are two critical cases that have recently addressed this issue. However, each ruling is different.  Here is a brief synopsis of the law as it stands today:

1. The use of trademarks in meta-tags is "use in commerce" and therefore trademark infringement. The 11th Circuit came to this inclusion this year in North American Medical Corp. v. Axiom. The court stated that the use of a trademark as a meta-tag was use in commerce. Essentially, the court concluded that the use of the meta-tag, which resulted in the trademark in question being displayed on the search engine, was an advertisement for the sale of goods. Thus it was used in commerce.

2. However, the 2nd circuit decided in 1-800 Contacts, Inc. v. WhenU.Com, Inc. that use of trademarks in meta-tags was not a "use in commerce" because the search engine merely provided the link to the trademark.  The court emphasized that linking a trademark through a search engine was not a use in commerce because the trademark in question was being displayed by a machine and the defendant was not causing the trademark to be physically placed on goods or services, or was physically causing the trademark to be displayed or reproduced.  

What does all of this mean for those of us who use meta-tags? Although the 2nd Circuit and 11th Circuit give different opinions on whether the use of trademarks in meta-tags is trademark infringement, it is better to be safe than sorry.  When using meta-tags be wary of using trademarks.  Make sure that when you purchase key words meta-tags that there are not any trademark in the list.  The last thing you want is to be sued by a huge corporate giant for trademark infringement.

Trademark Issues in Virtual Worlds

Hello!

I hope all is well.  In my previous post we discussed copyright issues when creating avatars using internet service providers, such as virtual worlds or avatar creation services.  Today I will discuss trademark issues that arise in virtual worlds.

This topic was discussed at PLI's Intellectual Property Law Institute.  Stephen Davidson of Davidson PLLC gave a brief presentation on this topic.  Here is a brief outline of his presentation:

1. Most trademarks famous and non-famous are found in Virtual Worlds such as Second Life.

2. Many end users (consumers) of Virtual Worlds use these trademarks without the express permission of the trademark owner.

3. Sometimes owners of famous trademarks will police (prevent) trademark infringers from using their trademarks in Virtual Worlds.

4. Owners of famous marks should particularly police use of their trademarks in Virtual Worlds due to trademark dilution.  A trademark infringer's use can tarnish (create a bad reputation) or blur (diminish the distinctiveness) of a famous mark.

In conclusion, the same rules apply regarding trademark infringement in real life and in cyber life.  

 

Who Owns the Copyright to An Avatar: The Service Provider of the End User?

Hello!

As many of you know, I attended PLI's Intellectual Property Law Institute in San Francisco last week.  Intellectual Property issues in Virtual Worlds was a hot topic.  Stephen J. Davidson founder and principle of Davidson PLLC,  gave a fascinating presentation on this subject.  As a social media enthusist, I was particularly interested in the discussion on who owns the copyright in an Avatar created by the end user (customer) but the tools are provided by the service provider (Second Life, Disney's Toontown).  Here is a brief outline of his presentation below:

1.  Virtual Worlds such as Second Life do not require end users to relinquish their copyright rights.  Plus they allow customers to create avatars and then license them.  Thus, when you create avatars or other objects in these worlds, you are the rightful copyright owner and can sue an infringer for unlawful copying.

2. There are some virtual worlds such as Disney's Virtual Magic Kingdom, that require customers to reliniquish their copyrights when creating avatars and actually require the customer to license the avatar to the internet service provider.

3. Other service providers that provide avatar creation services, such as Logobama o8' and Ameriland Entertainment allow the customer to retain their lawful copyright and grant the service provider a royalty-free license to copy, distribute, use or display the avatars.

I am of the view that although an internet service provider may provide the tools for a customer to create an avatar, that creation is still the original idea and work of authorship of the customer.  Thus a copyright does exist. However, just like in any other case, copyrights can be licensed, retained, and purchased by express written agreement.  So when creating avatars make sure you read the terms of agreement of the service provider.  You may create the avatar but the service provider may own it.

 

What Advertising Agencies Should Know When Creating Ad Campaigns

Hello!

When advertising agencies create advertising campaigns that include slogans, tag lines, and logos for a client, but the client subsequently does not use the campaign, who owns the trademark rights? The client or the advertising agency?

This is a hot issue in the world of advertising.  This issue was decided by the 2nd Circuit in the case, American Express Co. v. Goetz and Gardner Design Group LLC. 

Goetz and Gardner submitted an advertising proposal campaign to several credit card companies that included the slogan, "My Life. My Card."  Two months after submitting the proposal to AMEX, Goetz and Gardner registered the domain name, mylife-mycard, and filed a trademark application with the USPTO.

Subsequently, AMEX did not use Goetz and Gardner's proposal, but used another advertising agency's proposal that also included the slogan, "My Life. My Card."  AMEX immediately registered the domain name, mylifemycard, and filed a trademark application with the USPTO. 

When Goetz and Gardner discovered AMEX's use of the trademark, My Life My Card, they sent a cease and desist letter to American Express to prevent them from using the slogan. This dispute was litigated in court and the courts made two important determinations.  They are:

1. Slogans created by advertising agencies for a client or potential client's advertising campaign cannot be registered as trademarks by the agency. These slogans are created for clients to identify and distinguish the services of the client and not the advertising agency.

2. Simply displaying a trademark or servicemark in advertisement for services that are not yet available does not constitute use of the mark in commerce for trademarking puposes. Essentially, if there is not an exchange of goods or services in the marketplace, a trademark or servicemark right does not exist.  

Advertising agencies should be aware that if they create an advertising campagin for a client or potential client and the client does not use it, the agency cannot assert trademark rights. However, the advertising agency may assert a breach of contract or misappropriation claim for non-payment for creating the campagin.

I hope this information was helpful. Please contact me via email or leave a comment if you have any further questions. 

How Does One Lose Their Trademark Rights: Its all about Brand Management

Hello!

I am finally back from San Francisco! I attended PLI's Intellectual Property Law Institute Conference this past Thursday and Friday.  It was awesome! We discussed intellectual property issues in virtual worlds, social networks, and blogs.  I was in IP Nirvana! It was truly great and over the next week, I am going to share with you the latest and greatest in IP Law.  I know you will enjoy it!

Today,I am going to discuss how an individual or entity loses their trademark rights.  The top three reasons are:

1. Failure to prosecute infringers.  I can not tell you how important it is to prosecute (prevent) trademark infringers from unlawfully using your trademark.  If you do not, your trademark is considered weak.   Furthermore, if you take no action to prevent infringers and their use of your trademark is overwhelming, you can lose your trademark rights.  Essentially, your trademark will lose its uniqueness to your product or service.

2. Abandonment by non use or change in the nature of goods or services sold under the trademark.  For example, you register your trademark to uniquely identify plumbing services.  Subsequently, you stop providing plumbing services and you now provide medical testing services. However, you do not change the trademark.   The trademark originally used to identify plumbing services can not and will not identify medical testing services.  You must apply for and obtain a new trademark to identify medical testing services.  Also if you do not actively use a trademark in commerce for 3 years, it is evidence that you have abandoned the trademark. 

3. Genericization of trademark. This happens when a trademark becomes the common name for the goods or services and ceases to function as a source for the goods.  For example, ASPIRIN  is an example of a trademarks that has become descriptive of goods instead of an indication of a source for a particular good.  So we associate Aspirin with the headache medication instead of a brand like Bayer Aspirin.  Genericization of  a trademark can occur if a commercial campaign or promotion is too successful.  A company must takes steps to make sure that their trademark does not become generic.  For instance XEROX Corporation is an example of a company that has prevented its mark from becoming generic.  XEROX used an extensive advertising campaign which informed consumers to "photo-copy" documents with XEROX machines.  Also XEROX constantly used XEROX "Brand" to identify its products.  

Remember its all about brand management.  As a trademark owner, you have to manage your brand to ensure your product is identified correctly, your brand is conveying the correct message, and to prosecute trademark infringers. I hope this information was helpful.  Please leave a comment or email me if you have any further questions.

 

Likelihood of Confusion: What Is It?

Hello!

Today I am going to discuss the second requirement to prove trademark infringement: likelihood of confusion.  

Per my previous post, to prove trademark infringement one must show 1) priority of the trademark's use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public.

The courts have established an 8 part test to prove likelihood of confusion.  The court balances these 8 factors to determine if the use of two similar trademarks in commerce is causing confusion among the relevant consuming public. I will explain each factor below:

1. The strength of the mark.  Basically, how strong or distinctive is the trademark to the consuming public? The strongest marks are those that are arbitrary and fanciful.  This means that the mark does not merely suggest or describe the product or service. For example, Kodak is the trademark for a line of cameras and film.  Kodak does not suggest or describe the products: cameras and film.  However, we have come to associate Kodak as a producer of quality cameras and film.  

2. The similarity of the marks in sight, sound and meaning. For example, Victora's Secret is the trademark associated with premium lingerie.  However, another company comes along and its trademark is Vickey's Secret and this company also sells premimum lingerie.  These two trademarks are similar in sight, sound, and meaning

3. The similarity of the goods or services sold under the trademarks.  I will go back to my Victoria's Secret example.  The goods and servies sold under the trademarks, Victoria's Secret and Vickey's Secret, are so similar they are identical.

4. The similarity of the distribution channels and customers for the goods or services at issue.  Are the products being distributed by the same entities? Are the products sold in the same markets? Are both products being sold through the same channels, i.e., online, in-store, or catalog?

5. The sophistication of purchasers and the expense of the product or service at issue.  For example, frequent buyers of Ralph Lauren Purple Label would be less likely to confuse RLA Purple Label with Ralph Lauren.  The rationale is that sophisticated purchasers exercise more care when purchasing expensive items.

6. The similarity of means and methods of advertising and promoting the goods or services at issue.  Essentially, do both companies promote the trademarks through the same channels, i.e, both advertise on television, the web, or print campaigns.

7. Was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark? Per my Victoria's Secret example, clearly Vickey's Secret was adopted with the intent to imitate the established trademark Victoria's Secret.

8. Whether there is evidence of actual confusion of consumers or other relevant groups.  Actual evidence of confusion can be established by customer surveys; diverted internet traffic; and lost sales.

Alliance Metals, Inc. v. Hinley Indust. Inc.

It is important to note that if you discover that another trademark is infringing on your priority trademark right, it is in your best interest to action.  If you do not take action, you can suffer dilution of your brand, lost profits, and lose your trademark rights.  Yes you can lose your trademarks rights.  

In my next post, I will discuss how one loses their trademark rights.  I hope this information was helpful.  If you have any further questions, please leave a comment or contact me via email.

Trademark Infringement: Priority of Use and Likliehood of Confusion

Hello!

Today I am going to explain the requirements to prove trademark infringement.  Believe it or not, there are tons of trademarks that infringe on another trademark's rights whether intentionally or unintentionally.  As I have discussed previously, it is important to protect your trademark to avoid dilution of your brand and to protect licensing rights and royalty income.  

In order to prevail on a trademark infringement action, an individual or company must show (1) priority of its trademarks use in commerce and (2) the use of similiar trademarks in commerce is likely to cause confusion among the relevant consuming public. Cumulus Media Inc. vs. Clear Channel Communications.

In this post, I will explain what the law means when it states a mark must have "priority of use in commerce."  In my next post, I will explain the concept of "likliehood of confusion."

Priority of Use in Commerce

A trademark will have priority rights over another similar trademark if the trademark was used first in commerce.  The definition of use in commerce is the bona fide (actual) use of the trademark in the ordinary course of trade, and not made merely to reserve a right in the trademark. The Lanham Act sec. 45.  More specifically, it comprises the trading of something of economic value such as goods, services, information or money between two or more entities. 

A few examples of Use in Commerce are: 

1. selling a product or service online.

2. publishing (print and online)

3. distribution of products

Use of Commerce is not:

1. Using a trademark as a key word to trigger the display of sponsored links online is not use of the mark in a trademark sense.  (Merck vs. Mediplan)

2. Simply registering a domain name. (Brookfield Communications Inc. vs. West Coast Ent.)

3. Simply incorporating a business without customers.

Priority of Use in Commerce can be established by:

1. The trademark owner was first to use the trademark in its region.

2. The trademark owner was first to file an application with the USPTO based on use in commerce.

3. The trademark owner was the first to file an application with the USPTO based on intent to use, however, the trademark owner MUST show actual use within 6 months of an intent to file.

I hope this information was helpful.  Please leave a comment or contact me via email if you have any further questions.