• by Matt Naeger , December 21, 2004

In mid-December I participated in a panel discussion at the Search Engine Strategies Conference in Chicago to debate the legality of utilizing trademarked keywords in search advertising. One day later, a North Carolina judge ruled on the very same issue in Geico's lawsuit against Google, disputing the engine's policy of permitting competitors to bid on advertising space related to competing companies' trademarks. The outcome: a summary judgment in favor of Google that may or may not effect how you manage your brand via search.

Although you may have read a great deal about this ruling over the past several days, I caution that it in no way provides free reign to purchase other companies' trademarked keywords in your online marketing campaigns. Yes, the court did rule that Google's utilization of these trademarked terms to trigger ad placement within search results did not create a substantial likelihood of confusion among potential consumers. In plain English, that means that the existing policy does not violate current U.S. trademark law. In my estimation, this ruling should be taken with a hefty grain of salt.

Simply put, although one judge determined that this practice didn't infringe upon the trademark of Geico, there is no guarantee that another judge won't rule differently in the future. Because judges on comparable levels of the legal system do not have to follow each other's rulings, the only restrictions that they must adhere to are those of prior precedence from higher courts in their jurisdiction.

In other words, if a higher court says that a law should be interpreted in a particular way, then all lower courts must regard that law in that same light. However, if a court in District One hears a case and decides that the ruling should be X, a court in District Nine can still hear an identical case and decide that the ruling should be Y.

"This is not a sweeping declaration that they (Google) are entitled to sell trademarked terms in the manner that they have," said David Rammelt of Kelley Drye & Warren LLP (litigation counsel for the American Blind and Wallpaper Factory launching a similar case against Google).

David, a fellow panelist at SES, additionally felt; "this was a very narrow ruling that applied specifically to the GEICO lawsuit and the information that they provided in their case." In other words, Geico did not present enough information to the judge to convince her that consumers were being confused by Google's ad policy.

So what does this mean to the average search engine marketer? First and foremost, you need to understand what constitutes trademark infringement. Companies are permitted to utilize trademarked terms within comparative advertisements such as, "My product is better than Sally's." However, they cannot utilize a competitor's trademark in an unfair or deceptive fashion.

The final measure defining what constitutes trademark infringement remains in the consumer's mind - in how a regular person would view the ad. If someone typically would be confused into thinking that one product is actually another, then that would be an infringement. If it's clear that the ad is indeed a different product offering an alternative, then you shouldn't have a problem.

So, be wary of purchasing competitors' trademarked terms and incorporating them within your SEM campaigns. Additionally, continue policing your trademark rights in your own brand to identify potential infringement among your competition. It is critical that online marketers be aware of online competitor activity to ensure that they are not misusing or devaluing your good name through their marketing efforts.

Finally, what can one do if they feel they have been a victim of trademark infringement? My first recommendation to anyone that has seen a site they feel is infringing upon their trademark is to contact that Web site owner directly and request that they remove their ad based on your perceived violation. Typically, people aren't even aware that they're purchasing these terms due to expanded match type options available at the engines.

Secondly, advise the site owner that you are notifying the corresponding engine of the violation, along with proof of your ownership of the trademark. These two steps will ensure that you have preserved your legal rights and will likely have some effect on the status of the advertising. If not, you will at least know that the advertiser and the engine are intentionally placing the ad on your trademark and you can then proceed with proper legal recourse to protect your rights.