Sunday, June 14, 2009

Keyword Trademark Infringement Continues to Generate Controversy

Trademark infringement is a rampant problem throughout the Internet space. Third parties are using established trademark s and domain names, affiliate programs and on websites without permission of the trademark holder. One area of internet-related trademark rights continues to draw attention. The use of third party trademarks as keywords in advertising on the Google, Yahoo, MSN and other advertising networks remains controversial. The use of those marks in the text of advertisements triggered by keywords is similarly controversial.

What is keyword trademark infringement? Trademark law precludes third party uses of an established trademark (either a common law mark or a registered trademark) when such third party use would tend to cause confusion among consumers about the source, origin, sponsorship or affiliation between the trademark holder and the third party using the mark. Keyword infringement lawsuits have been filed against the companies using the trademark s, as well as companies such as Google who offer software platforms to serve up those advertisements.

When a company bids on the trademarks of its direct competitor, infringement threat letters are typically sent. From the trademark holder's point of view, bidding on their trademarks as keywords in order to serve up competing advertisements is simply another way to divert their customers t o a competitor by trading off their good will. From the competitor's point of view, their ability to bid on established trademarks and display advertisements for their competing services simply provides consumers with more choices about goods and services. The issue boils down to whether such keyword advertising is a deceptive business or effective marketing which is good for consumers.

Only a handful of courts have addressed the issue of keyword infringement directly. The cases all agree that these fact-specific issues which defy general rules. The ultimate test is whether or not such use is would result in a likelihood of confusion among consumers. A more controversial issue deals with the concept of "initial interest confusion" which acknowledges that most consumers would not likely be confused once they arrived at the competing website but will allow for a trademark infringement claim if the consumer would reasonably have been deceived initially prior to clicking on the ad.

Keyword infringement also becomes more likely if the text for the ad suggests an affiliation, sponsorship or other relationship between the trademark holder and the third party. For instance, if the advertising text for an Adidas advertisement said "buy Nike ads here" and was triggered by the keyword "Nike", the deceptive nature of the advertising text would certainly work against Adidas.

Another competing issue relates to "fair use" of trademarks by third parties who want to offer products and services related to the trademark holder in some way. If you had a website which provided consumer information about how to best bid on eBay items, using "eBay" as a keyword trigger and advertising text which noted your service offering using the "eBay" would be challenging indeed.

Our trademark attorneys provide advice to both trademark holders and third parties using trademarks in keywords by analyzing the specific facts of the case and identifying risks and rewards. If you do choose to use trademarks as keyword triggers and in the advertising text of keyword advertising programs, you need to be extremely careful about how you proceed in order to avoid litigation.

Enrico Schaefer is a seasoned trial attorney and partner of Traverse Legal, PLC, , a law firm specializing in keyword advertising trademark infringement. If you wish to speak with one of our trademark infringement attorneys, please feel free to contact Traverse Legal for a free consultation.

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