Here’s November’s Scene Magazine Article:
The Google Adword TM Trap
By now almost everyone has conducted an Internet key word search using the Google engine. You’ve noticed those “sponsored links” at the top of the results page. If you’re in business and a savvy marketer, you’ve probably thought, “heck, I should probably buy those spots for all my goods and services.” The next step in that logic is to think, “heck, I should probably buy those spots for all my competitors’ goods and services!” “BRILLIANT,” you exclaim as you tally up the keywords in your AdWord buy. What could go wrong?
I wouldn’t be writing a column on the topic if nothing could go wrong – I guess I’m getting predictable. In just the last three weeks I’ve gotten involved in three cases of at least arguable trademark infringement cases involving Company A purchasing the brand name of Company B’s leading product as a key word in Company A’s Google Adword buy. In two of the cases, I’ve been hired by Company B to smack Company A. In the other case, Company A hired me to help them respond to the smack from Company B.
Tough to follow? How about a hypothetical example?
Say I’m our neighbor down the road, Crocs. Say you’re the new guy on the block trying to get a little of that action. You call your product “Snakes” because they make you feel like you’re gliding right down the sidewalk and yet have a nice bite for traction. You decide to get tricky and buy a sponsored link on the search term “crocs.” Are you in trouble?
Not yet, it’s a bit more complicated. First you need to understand that the federal trademark laws are in place to prevent consumers from being confused as to the source of a good or service and by preventing consumer confusion, protect the investment of brand owners in their company’s reputation, goodwill, and marketing dollars. There’s a concept in trademark law called “initial interest confusion” which is when one company unfairly diverts the potential consumer’s attention away from the brand they were looking for over to the competing product at the moment of initial interest, even if there is no confusion at the point of actual purchase. One of my clients said it more understandably, “I feel like he’s fishing off of my hook!”
Now, back to our example; has Snakes violated trademark law by purchasing the Google Adword for “crocs?” Answer: not yet.
The current, but evolving, opinion in the different Federal District Courts around the country is that the simple purchase of the AdWord is legal. To be more precise, the courts have really been addressing the issue of whether or not the SALE of the trademark term is an infringement. The cases have focused on Google (think VERY deep pockets) for contributing to trademark infringement by even allowing competitors to make AdWord buys using trademark terms.
Logically then, it comes down to the advertisement you create on the response page for the key word search you purchased. Google allows a headline of up to 25 characters, two 35 character description or body copy lines, one display Web address of up to 35 characters that is linked to the destination Web page. So, in our example you could place the following text ad.
Headline: Get your Crocs Here
Body Copy: We’re your best source for Crocs
Display URL: www.crocs-r-us.com
The ad would be linked to your “snakes.com” Web site in such a way that the person searching the keyword “crocs” doesn’t know you’re not the real Crocs until they end up on your site. Does that seam fair? Do you think it would cause “consumer confusion as to the source of the good or service?” I sure do, and I’m betting a judge or jury would too. This seems like a clear-cut example of how using the “crocs” name as your keyword buy on Google AdWords would get you into deep trademark trouble.
On the other hand, if you purchase the keyword “crocs” but set up the response ad in a way that clearly does not confuse consumers, then you are arguably using the “crocs” term fairly, at least under current case law. For example, the following ad would be far less likely to confuse consumers.
Headline: Like Crocs? Try Snakes!
Body Copy: Snakes are the best things since Crocs!
Different company, great shoes.
Display URL: www.snakes.com
As I said before, this is evolving law and as such will probably not be settled for a while. Before using a competitor’s brand name in your Google AdWord purchase, be sure to discuss the details of your specific situation with a trademark lawyer familiar with these issues.
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Kevin E. Houchin is a copyright, trademark, arts & entertainment, and business development attorney located in Fort Collins, Colorado working with creative people and businesses all across the United States. To contact Kevin Houchin, call 970-214-6808 or email him at kevin.houchin@houchinlaw.com.