Search Engine Keyword Trademark
On May 19, 2004, auto insurance company
Geico sued Google and Overture for allegedly violating its trademarks in
search-related advertisements, in the latest legal salvo against the Internet
The insurer charged the two
companies with infringing on its trademarks when they sold them as keywords to
Geicoís rivals, so that the protected terms could appear in sponsored search
results. According to the suit, that practice causes consumer confusion, in
violation of the Lanham Act, the primary federal law covering trademark
registration and protection.
This isnít the first time
Google, Overture or other PPC search engines get into legal trouble over
keyword trademark infringement issues. This trend is actually expected to
grow, as more and more companies discover the high conversion features of
keywords using major brand names or trademarks.
owners have always been vigilant and continue to engage in all forms of
trademark protection battles. However, with the number of trademark
infringements involving branded keywords steadily increasing at an alarming
rate, search engines have started to respond and take action.
Google and Overture now post on
their websites specific copyright and trademark infringement complaint
procedures, along with detailed instructions on how to go about this growing
problem. Most search engines today will remove competitorsí paid listings of
registered trademark owners who lodge an official infringement complaint.
Remember that itís always the
trademark ownerís responsibility to be vigilant and proactive. It isnít
the search enginesí mandate or their duty to police any of these actions.
So, trademark owners, the time has come to protect your marketable assets.
How to file a complaint with the search
Before taking any step in
complaining to the various search engines, most will strongly encourage
you to contact the offending party directly, letting them know that you are
considering such actions serious and that you will take every step to defend
your companyís rights.
Some search engines even post
standard Cease and Desist Letters on their sites. Print out such a letter and
email it to the infringing party, and then you should send it by regular mail,
preferably using a registered letter. If you will be using such a standard
cease and desist letter, have it sent directly from your lawyers. The
offending party will then know that you are serious about this matter and
should treat it accordingly.
Many attorneys will tell you that about
85% of trademark infringement cases are solved upon receipt of such a cease
and desist letter.
Assuming the offending party has
not responded within a reasonable amount of time, say about 10 days, the
second step you need to take is to gather all the information you can in
preparing your case for the search engines. Simply run a query in Google,
Yahoo, AltaVista and Overture for all your trademarks and brand names. With
it, include your company name, services, products or any slogans your company
uses in any of its advertisements, including all its offline pamphlets or
catalogues. Also be sure to send them a copy of the cease and desist letter
your lawyer sent them.
Before emailing your complaint,
be certain that all your information is included in the report, beginning with
your full contact information, a list of all affected trademarks, service
marks or brand names, plus all registering information, if you have it handy.
You will also need to send them
a description of the trademark violation (s). Also include the way the
infringing party uses your trademark in their ad listings or in their ad copy.
After that, you will need to include a
status of all your communications with the offending party, if any, plus a
complete list of all the affected URLís associated with all their trademark
The above steps are the
essential actions all search engines expect you to take in any trademark or
copyright infringements. Since each search property varies in the exact
procedures to take in such cases, you will need to carefully review their
exact rules and instructions in filing an official complaint.
Where trademark infringement is leading
In August of 2003, French
company and handbag maker Louis Vuitton filed a lawsuit against Google and its
French subsidiary for trademark infringement. Two months later, French firms
Luteciel and Viaticum also sued Google for trademark violation and
collectively won $89,000 in damages. That settlement was viewed by many as
significant and many said it created a legal precedent, even if it happened in
an overseas court.
hoped that new laws governing the use of registered trademarks or service
marks will be enacted soon. Legal observers predict it could take a few years
to determine how comparative advertising, fair use provisions, unfair
competition, the First Amendment Right (free speech), the Lanham Act and other
such issues can be effectively addressed in an orderly fashion.
In the mean time, trademark
owners and companies owning major brand names are strongly encouraged to be
vigilant in this matter.
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