October 2, 2006 | Posted By : David Snead at 8:48 AM PERMALINK | Blog Comments (5)

Trademarks as search terms

Most people know about the dispute between Google and various trademark owners over whether Google can sell trademarks as search terms. Its pretty clear that courts are coming down on the side of Google and holding that Google can sell trademarks as search terms. What hasn't received much press are the claims made by trademark owners against purchasers of search terms. So the issue the courts have to review is whether you infringe a trademark owner's rights by purchasing their mark from a search engine. Putting aside the impact this issue may have on search engine revenue, its likely to have a big impact on hosts, who seem to have made a science out of purchasing the names of their competitors. Suits like these are likely to increase. Indeed several uberhosts have begun sending out cease and desist letters when they discover their trademarks have been purchased. The bottom line here: trademarks as search terms may become a thing of the past.

Google suit: http://news.com.com/Judge+sides+with+Google+in+dispute+over+keywords/2100-1030_3-6121483.html

Yahoo suit: http://www.freepint.com/gary/legal/amended_yahoo_1.pdf

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Hey David - I was just reading <a href="http://techdirt.com/articles/20060929/172437.shtml...">this post on Techdirt.com</a> on the same issue. It seems to say that I can buy "GoDaddy" (for example) as a keyword and use it in advertising - as long as my intent isn't to create confusion between my company and GoDaddy? So an ad that says "pick us instead of GoDaddy" would be ok, whereas one that says "get web hosting here" might be considered a trademark infringement? If my understanding is correct, I guess that would make sense. There are endless claims of Product X being bigger/better/cheaper on TV ads, billboards, supermarket displays, etc.

# Posted By Isabel Wang | 10/2/06 12:35 PM

This sparked a question in me regarding legalities within a site's natural rank. I recall a few lawsuits by companies whose trademarks were bringing up other SE results ahead of their own suing those sites that ranked higher. I don't know what came of those suits. I found this page - http://searchenginewatch.com/showPage.html?page=21... - with some related legal cases, but not quite the same.

To build on Isabel's comment, let's say I'm a domain registration company competing with GoDaddy, and my home page content listed 100 ways I was better than GoDaddy. If my site came up #1 in Google for the term GoDaddy, could I be sued for this? Could Google?

Bad question - you can be sued for anything :) Better question - would GoDaddy have a case? I wish the "Excessive Use Of Competitor's Mark On Website Is Not Fair Use" link was still active...

# Posted By Paul Hirsch | 10/2/06 1:22 PM

Well there are a couple of interrelated issues here. The most important issue is that it seems that search engines aren't infringing trademarks by selling them as search terms. However the jury's still out on whether the purchaser of the trademark from the search engine may be liable. Both Isabel and Paul make an important point - the issue of why the trademark was used. If its simply to say "my product is better than X" its likely not to be infringement. However if you endlessly post X's name on your website, or, say, in meta tags, you're moving down the path to infringement. Isabel's point about purchasing a trademark as a search term to highlight how your product is better than the trademark is something I haven't heard of. As is often the case in these issues, it would depend on how it was used.

# Posted By David Snead | 10/2/06 1:37 PM

Good to see what's going on here, VERY cool - keep it up!

So one of the things we do to promote our show is, of course text ads. (Yea, he may as well go copy this one too...what's left to replicate?) We'll promote an exhibitor or speaker alongside the show based on a specific keyword group ex. "See theWhir Live at ISPCON in booth 208". Well, a while back we had one ad for Jeff Pulver with his name to come "See Jeff speak" on voip among other keywords, etc. since he was in fact part of the faculty at the time.

So into the next cycle of shows, we picked up the core of the campaign and before we noticed the keyword in our updated campaign, I had already received a c&d letter from Jeff's attorney. Jeff's a good guy (at least he can come original) and our SEM firm was actually at fault for not yanking the keywords, so it was a quick decisino. I've been known to do the trademark litigation dance myself because it's only as strong as it's last defense but this has to be a TON of work to monitor and refute in addition to all the other Internet-based (and non-) possiblities. Is it realistic for anyone to monitor this or finance this kind of IP/TM defense?

# Posted By Jon Price | 10/3/06 3:25 AM

Most firms with registered trademarks have to monitor these things to avoid an allegation that they are not enforcing their rights - a defense that typically comes up in trademark infringement cases. In some cases, I don't see the utility of monitoring these things. Honestly, I'm simply amazed at the amount of time spent on niggling disputes based on internet content. But that's a different soap box.

# Posted By David Snead | 10/3/06 10:13 AM

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