• by Kate Kaye , March 6, 2004

As if search marketing weren't confusing enough, now the lawyers are involved. In this case, the top banana, Google, is bearing most of the brunt.

A growing list of trademark infringement lawsuits filed against search firms including Google has heightened awareness of vulnerability among trademark holders when it comes to search keyword bids. A case involving Netscape's alleged violation of Playboy's trademark was recently settled. Louis Vuitton has filed suit in a French court against Google for allowing bids on terms related to its trademarks. And last year, Mark Nutritionals filed suits against AltaVista, FindWhat.com, Kanoodle.com, and Overture Services, claiming trademark infringement related to the Body Solutions trademark.

One suit that's getting plenty of attention from legal and search pundits was filed against Google in January by American Blind and Wallpaper Factory to prevent bidding on five trademarked terms by its competitors. AdWords distributors America Online, AskJeeves, Compuserve, EarthLink, and Netscape were also named as defendants. Although Google has agreed to halt competitive AdWords bidding for three of the trademarks in dispute (American Blind and Wallpaper Factory, American Blind Factory, and Decorate Today), the search engine has not prohibited bids on similar terms including American Blind and American Blinds.

Google filed a complaint in a U.S. District Court in California in November, requesting a ruling on whether its policy is legal. The company's trademark policy states: "We encourage trademark owners to resolve their disputes directly with our advertisers.... When we receive a complaint from a trademark owner, our review is limited to ensuring that the advertisements at issue are not using the trademarked term as a keyword trigger."

"When people type in 'American Blind,' they're looking for our company specifically," contended David Rammalt at last week's Search Engine Strategies Conference. Rammalt, partner at Kelley Drye and Warren and counsel for American Blind and Wallpaper Factory, sat on the conference panel "Leggo My Trademark: A Search Engine Legal Update."

Google has allowed competitors such as The Blind Factory and The Wallpaper Source to bid on "American Blind" through the AdWords program. According to Rammalt, American Blind and Wallpaper Factory believes that suing Google is more effective than suing a host of competitors. During the conference session, he argued: "Google is trafficking in our trademarks. They're trying to profit off of our name."

Simply put, trademark infringement is determined based on whether or not the use of the trademark is likely to cause consumer confusion or deception. The presumption made by American Blind and Wallpaper Factory is that all those who are searching on its trademarked terms are looking to buy its products, as opposed to searching for competitive offers or information on blind people in America.

Google's filters automatically remove bids on certain words that are predetermined as unacceptable, such as some trademarks or vulgar language. However, the search engine automatically defaults to approval of keyword bids that get by those initial filters. Eventually, every ad is subject to Google's review process. Other pay-per-click search companies such as Kanoodle.com and Searchfeed.com put search term bids through strict review processes to ensure that they meet standards before approval.

Google's broad matching default, which automatically pairs keywords with other relevant words, is another point of contention. For example, if an advertiser bids on "blinds," Google not only runs the ad with results from a search for "blinds," but also with results from a search for "Hunter Douglas blinds." Although it offers broad matching, Overture defaults to exact matching, meaning that if an advertiser bids on "blinds," that ad will run with results from a search for that exact term only. The same goes for Kanoodle.com, which requires advertisers to bid on exact terms.

Through its keyword suggestion tool for bidders, Google recommends that keyword bidders "consider replacing your general keywords with any relevant, more specific suggestions you see here." In many cases, those suggestions include trademarks. A search for "jeans," for instance, prompts a long list of suggested terms, including "Seven jeans," "Diesel jeans," and "Levi's jeans."

Despite years of trademark lawsuit rulings, the Internet has created an entirely new playground for trademark disputes. "This is only the beginning," assured panelist Felix Hofer, partner, Hofer Losch Torricelli, at the Search Engine Strategies Conference session. "There are a number of key players lining up in order to nail Google."