by Lori Weiman
Brand keywords and phrases usually produce very high quality traffic. For this reason, advertisers other than the brand holder may advertise on your brand name or use your brand in ad copy text. Advertisers who engage in this practice include authorized resellers, unauthorized resellers, competitors, affiliate marketers, parked domains, spyware/malware/phishing sites, made-for-ads sites, shopping sites, editorial sites, and coupon sites.
Is it legal to sponsor a trademark or use it in ad copy text? What are your risks if you are doing it? What are your options if someone is doing it to you?
Trademark Law in the U.S.
Learning the basics of U.S. trademark laws will help you understand:
- The reasoning behind the policies of Google, Yahoo, and Bing.
- How to weigh risk if you're sponsoring or using someone else's marks.
- Your legal rights and likelihood of success against those using your marks.
To simplify the law: Trademarks exist to make it easier and faster for consumers to determine the origin of a good or service. Trademark rights begin when you first use the mark in commerce -- for example, the date you start to market your product.
If you believe your rights are being trampled, you have to prove three things to get a court to listen: (1) the infringing use is in commerce, meaning associated with a good being sold; (2) the use has or is likely to confuse typical consumers; and (3) the use is not protected by any defenses that include nominative uses (e.g. product comparisons), descriptive, generic uses, or resale (first use doctrine).
When deciding a case, judges will apply the law and will reference prior case law to explain decisions. Since Internet advertising is fairly new, there's not a lot of case law on trademark use in search engine advertising. Courts seem to be ruling as follows: (1) keyword sponsorship is a use in commerce, but is not likely to cause consumer confusion without more; and (2) use in ad copy is a use in commerce, but the context of how it is used will be evaluated to determine if the use is defensible or if it caused confusion. Basically, merely using the trademark does not mean you will win against another advertiser.
Policies of Major Search Providers
Google, Yahoo, and Bing all have trademark policies that govern acceptable and unacceptable practices on their search properties, specifically in the following areas:
Keyword sponsorship: In general, advertisers are allowed to sponsor trademarks on each of the three providers. Google allows without restriction; Yahoo and Bing allow it if the advertiser is permitted or the use is nominative or generic. Yahoo prefers that the trademark also appear in ad copy text and on the landing page.
Ad copy text: Advertisers are sometimes allowed to use trademarks in ad copy text, as long as it's permitted, descriptive, generic, or nominative. An advertiser can say things like, "click here to view a comparison of us vs. them," but it's often required to repeat the use on the landing page.
Destination URL:Arguably, use in the destination URL dupes consumers into thinking that the brand owner has sanctioned the ad. Despite the potential for confusion, the destination URL is often not addressed in the trademark policies. Editorial guidelines will govern use here.
Risks of Bidding on Trademarks
If you sponsor another advertiser's trademark or use it in ad copy text, make sure your use is defensible. Contractual arrangements, resale, descriptive, generic, or nominative uses are good defenses. Outside of those:
Under the search provider policies: If you're an affiliate, reseller, or informational website, you can sponsor trademarks. If you are a parked domain or made-for-ads site, or you're a competitor (and are not showing a product comparison), you will be allowed to sponsor trademark words on Google but not on Yahoo. Use in ad copy is different and will be evaluated based on the use itself.
Under the law: The test is consumer confusion. If you're causing confusion about the origin of the goods you offer or where consumers will land when they click on your ad, you're putting yourself at risk. Things like mimicking sites, colors, logos, slogans, unique promotions, or URLs -- and play on brand words -- will get you in trouble.
How to Combat Use of Your Brands
If others are using your brand in a way that you don't approve of, here are your options:
Maintain strong registered trademarks. Your name should be strong and not merely descriptive. The stronger the mark, the more defensible your argument will be. If your mark is a generic description of any product in your vertical, it will be difficult to get the search engines to help you and even more difficult to get relief in the court system.
Deploy a brand-focused marketing strategy. Maintain a top position in both paid and organic search results for your brand words, including phrases, typos, and keywords that include your URL. Use messaging to convince consumers to click on you and not your competitors, and ensure that your ads are being served close to 100 percent of the time. Finally, control direct-linking affiliates so that proper messaging is used in their ad copy.
Own the SERP. Try to get more of your ads on the search results page:
- Co-market with your affiliates.
- Develop micro-sites with different URLs.
- Use local search to get on the map.
- Advertise on the comparison shopping engine provided by the search engine.
- Use images/video for SEO advantages.
Eliminate competitive threats. Force competitors to stop using your brand. The options below range from cheap and easy to more difficult and costly:
- Enforcement of contractual commitments with affiliates, resellers, and CSEs
- Enforcement by the search provider of trademark policy or editorial policy
- Reporting to public agencies like the FTC or state attorney general
- Cease and desist letters
Editor's note: This article first appeared in the August issue of SES Magazine.
Lori Weiman is CEO of The Search Monitor, whose software automates the monitoring of search results and social media websites to provide marketers with insight on competitors, keywords, ad copy, market share, trademark abuse, brand buzz, and affiliates. Previously, Lori held executive level positions at several early-stage ventures, including Click Forensics, Webquarters, and Food.com.
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