Hey, that's my mark! – use of another's TM as a paid keyword

For those who have not caught up on the cases or the technology, one of the most controversial topics in IP at the moment is the invisible use of another’s brand to attract hits on an unrelated site.  As the Trademark blog recently reported, the Eastern District of New York for example, has consistenly held that this is not trade mark infringement. Managing Intellectual Property Magazine also ran a feature article on the topic in the April 2007 issue.

The problem is that use of the brand in such a way, which is invisible to people, is not deemed by some courts to be ‘use in commerce’, or put another way, it is not ‘use as a trade mark’, notwithstanding that a commercial benefit is derived.  The issue is that use of a trade mark is currently tied to a person recognizing it (whether visually, by scent, shape, etc) and reacting to that recognition.  With keyword ads etc, the computer undertakes the recognition step and presents the results to the consumer who may assume that those results are associated with the brand.

And the strategic response?

For brand owners on the receiving end of such strategies, you should consider gathering evidence of actual deception of customers using the search engine and, depending on the jurisdiction, you may wish to add anti-trust / anti-competition law suits as part of your response.  For very valuable brands, you should consider going to the trouble of approaching major search engines and paying for the keywords which closely match your brand so that they are redirected to your site instead.  (Potentially needless expense, but likely to be revenue generating nonethless.) 

If you’re currently using metatags or paid keywords which are another company’s brand to attract traffic to your site, then beware – I don’t think this is going to be tolerated for too much longer.  There’s something inherently wrong with trading off another’s brand, whether the current law disallows it or not.

5 Comments on “Hey, that's my mark! – use of another's TM as a paid keyword

  1. Two quick thoughts
    1) Don’t you think there’s a distinction between passing off product A for product B(TM) with packaging, advertising etc. and leveraging the generic-ness of a trademark to help people search.
    For example – if I were looking for power cleansers I’d type Ajax. Not becasue I necessarily want the product called Ajax – but because it represents a groups of products that you can use to clean the kitchen sink.

    2) How is this different to going into retailer and asking to see an LG fridge – but also being directed by the salesperson to fridges by GE, Philips and hoover?
    Thanks for listening!

  2. Here are my thoughts:The trade mark owner in your example has an even more fundamental problem if they have let the mark become generic. If they have done their job and it is not generic, then this seems to only reinforce the mis-use of the mark as there is no excuse for swapping it for someone else’s goods or services.
    With keyword ads which are someone else’s trade mark, you don’t necessarily get to see the one you asked for. So it’s like walking into the shop, asking for an LG and being shown the GE on the assumption that its the LG. (Apologies for the tech issue!)

  3. Maybe…
    But I’ve often gone into a store asking for a brand and been shown other brands instead. (Ever tried looking for Garmont Flash hiking shoes?)
    Also – search is a hit and miss experience. You can search for something (trademark or not) and not necessarily find it. Does this mean there is an implied obligation of a search engine to direct you to the website of a trademark owner if you search for that term? I wouldn’t have thought so.
    Isn’t it more like me asking a mate about the new Holden Commodore and him saying “Buy a Ford”.
    For me – I want options. Choices. The power of making the decision.
    In my laymans mind the it’s not about passing off – it’s about helping me convince myself that your [tm’d] product is the best. And if it doesn’t suit my needs you [tm owner] wouldn’t want to sell it to me would you?

  4. Victor – thanks, I see what you mean.The difference with paid keywords which are someone else’s brand is that it’s in commerce – they’re not your mate.The respondent, (your mate) has been asked to say ‘buy a Ford’ without disclosing to you that he’d been paid to do that.I agree about having choices is important – and I think they should be informed choices.  If the alternative product which is offered is better, then why do they need to go to the trouble of paying someone else to redirect you in response to a request for their competitor?

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