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.