Trademarks as Search Terms for Pay Per Click Advertising

Google’s advertising policy has created some trademark issues. When an internet user enters a term into Google’s search engine, results are returned that include both a “natural” or “organic” list of websites calculated to be relevant to the search term key words and a list of sponsored links through Google’s Adwords.

The controversy centers on the sponsored links where people can “purchase” key words so their website is placed at the top of the search results or in the right side bar when those key words are entered as search terms. The key words available for purchase include trademarks, and these are even suggested to Google Adwords clients as search terms to purchase.

Google also allows the use of trademarks in advertising it deems “legitimate.” Under Google policy, legitimate users of protected trademarks include resellers, component or part suppliers, compatible or auxiliary product suppliers, and when the sponsor provided information about a trademarked product.

The problem is that counterfeiters have been selling their infringing products with the purchase of the trademark as a keyword search term.

One federal appellate court found that Google’s use of the trademarks as a search term was only referential or nominative, and therefore, not infringing of the trademarks.

Google did its own studies on the use of trademarks in advertisement titles or bodies and found that customers were often confused. Having this knowledge, one court inferred an intent to confuse could be found by a jury.

As you can readily appreciate, these cases are very fact intensive. There are 9 factors that will be weighed in determining whether there is trademark infringement for use of a trademark as a keyword for pay per click advertising:

  1. The strength or distinctiveness of the mark as actually used in the marketplace;
  2. The similarity of the two marks to consumers;
  3. The similarity of the goods or services that the marks identify;
  4. The similarity of the facilities used by the markholders;
  5. The similarity of advertising used by the markholders;
  6. The defendant’s intent;
  7. Actual confusion;
  8. The quality of the defendant’s product; and
  9. The sophistication of the consuming public.

These cases will no doubt be the subject of much litigation in 2013. If you find yourself facing similar circumstances, contact an experienced trademark attorney to discuss your situation and available remedies.