Much to the dismay of brand holders, there's no current law making it illegal to bid on another company's trademark terms on the search engines. That's why advertisers must waste precious time filing infringement complaints,
, and occasionally even lawsuits against violators or search engines. New laws are needed to prevent future occurrences where reasonably possible.
In February 2002, Mark Nutritionals filed lawsuits for alleged trademark infringement and unfair competition against AltaVista, FindWhat.com, Kanoodle, and Overture (
Mark Nutritionals v. Overture
). The company's weight loss product "Body Solutions" web site listing was positioned below competing sites that also bid on this keyword phrase. Unfortunately, later that year Mark Nutritionals filed for bankruptcy, and the Federal Trade Commission ordered an injunction against the company's product for false claims. Where does that leave trademark
? In legal limbo. At least there's limited relief through the aforementioned actions.
The reason I wrote "limited relief" is because there are a few other ways in which
can bid on your trademarks.
The Keyword-Matching Technology
One problem is the keyword-matching technology of search engines like Google, and now Overture. Both allow you to appear in results for only your specified keyword phrase ("exact match"), phrases with words that are added before or after your exact phrase ("phrase match"), or phrases with words that are added
within your exact phrase, even often reversing the order of your words ("broad match"). Here's an example:
used cars, Ford used cars, used cars Ford
used cars, cars used, Ford used cars, new and used cars, new and used Ford cars
are set to broad match as the default (see Figure 22.2). Overture's are set to exact match, which they call
. Whether an advertiser on either search engine chooses their matching option or it's
by default, phrase and broad match could include trademark terms.
Figure 22.2. Google's default keyword-matching option is broad match, which may include trademarks. Notice the brand
that are included if "used cars" is purchased.
In this example, you see how broad match pairs trademark and generic terms automatically. The keyword tools of the search engines using this technology even suggest that these phrases be purchased. This could spell legal trouble for search engines. But for now, it gives them the ability to sidestep an infringement complaint for phrases that include both kinds of keywords. "The technology does it, we can't do anything" is
their answer. This is the response I received from Google for one of my client accounts. Interestingly enough, in July 2003 eBay moved to block Google advertisers from using phrases that included their trademark: eBay selling, eBay power seller, and eBay management software, for instance. Did eBay have the clout to elicit a different response from Google?
Although the details of eBay's letter weren't disclosed, when I wrote this section I couldn't find ad listings on Google AdWords for these phrases that openly promoted an eBay-
product or service. If Google removed these ads when they claimed they couldn't for my client, then this
another problem that I've
and had confirmed by a couple of trademark owners:
inconsistent policy enforcement
. This isn't just a Google problem; others are guilty of playing favorites as well.
Although only a couple of search engines offer a broad-match feature, inconsistent policy enforcement is often exercised in the treatment of comparison pages.
If a competitor bids on your trademarks and builds a landing page that
your products or services to his, occasionally search engines let this slide under their editorial guidelines. A comparison page used in this way appears to be legal under current
advertising laws, so long as the comparison is
and the use of the competitor's trademarks does not create a
of consumer confusion as to source or sponsorship. So according to Overture, comparison advertising (as well as fair use and free speech) support their policy, which allows bidding on competitors' trademarks if comparison landing pages are used:
"In cases in which an advertiser has bid on a term that may be the trademark of another, Overture allows the bids only if the advertiser
content on its web site that (a) refers to the trademark or its owner or related product in a permissible nominative manner without creating a likelihood of consumer confusion (for example, comparative advertising, sale of a product
the trademark, or
about the trademark owner or its product) or (b) uses the
in a generic or merely descriptive manner. In addition, the advertiser's listing should disclose the nature of the relevant content."
Based on Overture's language, in your trademark infringement complaint letter to Overture you would need to point out how your competitor's landing page is
not editorially relevant
to the keyword or ad listing. If you
how this ad listing
is an attempt to confuse consumers
, Overture (and other search engines) will
consider this compelling argument. As attorney Deborah Wilcox points out, that's because the definition of infringement is "use of another's mark that is likely to cause confusion, or to cause mistake, or to deceive as to source,
, sponsorship, origin, or approval. If the comparative advertisement is untruthful or crosses the line by
a likelihood of consumer confusion, the fair use defense might not apply." Work that definition to your protection.
The URLs of the major search engines that address trademark and copyright infringement can be found at www.searchenginesales.com