Can Key Words be Trademark Infringement?

Google Adwords threw trademark owners into new territory, and not a welcome one for the most part.  Website owners could now purchase key words from Google Adwords that included brand names of competitors. Inc. purchased, through third party marketing affiliates, key words that were closely associated with its competitor 1-800 Contacts, Inc.:

            1-800 contact lenses

1 800 contact lenses

800 contact lenses

After a court battle over trademark infringement, the following lessons were learned by the industry:

  1. Purchase of search engine keywords can amount to use in commerce but mere purchase of key words will not be enough for trademark liability.
  2. If Adwords data reveal that users only click on sponsored ads a small percentage of the time (in the 1-800 contacts case, 1.5% of clicks), a trademark owner will not be able to establish likelihood of confusion or that customers were lured away from the trademark owner’s website.
  3. If a company knows that its marketing affiliates (outsourced contractors) are publishing internet ads using a competitor’s marks and take no action to stop the practice, it can be liable for contributory infringement.

Internet marketing can be dangerous waters.  If you outsource your website and social media you need to be aware of what these companies are doing for you since you can be responsible for their actions.  But there is another aspect to be wary about:  receiving cease and desist letters from competitors for activities that may not be wrongful or actionable under trademark law.  If you find yourself in this situation, consulting with an experienced trademark attorney can help you decide the best course of action.  You may have more options than you think!