Trademark Issues: What SEMs Should Know

This is one of the SES San Jose 2008 sessions that I covered for AimClear Blog.

Trademark law is scary for some search engine marketers. Many don’t know the rules and their ignorance could potentially land them in a lot of trouble and expose them to liability. This session will helped guide search marketers away from classic trademark pitfalls that can destroy business initiatives.

Moderator Jeffrey Rohrs is Vice-President, agency and search marketing, for email marketing firm ExactTarget. The first speaker, Eric Goldman, is the Assistant Professor & Director of the High Tech Law Institute at the Santa Clara University School of Law and he’s the Internet Law Blogger

Trademark Infringement, elements of a claim:

• Ownership of valid trademark,
• Priority,
• Use in commerce in connection with sale of goods & services.

Search Engine Trademark Policies. Yahoo & MSN: TM owners can block some competitive keyword buys. Google: TM owners can block TM references in ad copy.

The second speaker, April Wurster, is an Attorney for Baker & McKenzie.

Plaintiff perspective:

Strategies:

• Monitor Trademark use;
• Cease and Desist Letters (should talk to attorney prior to doing so—can backfire if defendant sues you first);
• Lawsuit.

Search engines, auction sites and ISPs have complaint procedures to allow trademark holders to address trademark concerns without resorting to litigation. Google Trademark Complaint Procedure: US, UK, Ireland & Canada: Google will not investigate the use of the trademark in keywords but not for ad text. Easy to file, user friendly.

Yahoo Complaint Procedure: Does not advertisers to bid on search terms that are the trademarks of others. Just send them an email. Ebay Verified Rights Owner Program: Highlights of the program include ability to save searches and have the results emailed to you; suspension of repeat offenders. Easy to do.

If self-help doesn’t work, contact an attorney.

Proactive measures: Register your trademarks in order to prevent others from using them as keywords.

Type of Trademarks:

Common Law: (Rights are established through use, limited based on geographical scope, scope of use and goods / services used).

State registration (Cheap and fast; most states do not recognize state trademark rights based on intent to use filings. Must be using your mark in commerce.)

Federal Registration. Advantages:

• Prima facia evidence of ownership of the mark;
• Prima facia evidence of exclusive right to use;
• Prima facia evidence of validity of the mark;
• Constructive priority dates for intent to use applications;
• Constructive nationwide notice of rights,
• Increased damages and attorneys fees;
• Remedy against importation of infringing goods;
• Protection encompasses related rights and services;
• Jurisdiction in federal courts.

Use of the mark: Use proprietary notices; Distinguish the mark in print; Use as an Adjective (Marks should never be used as a noun—this is how they become generic. Marks should never be used as a verb). Never change the mark.

The final speaker, Mark Rosenberg, is Of Counsel for Sills Cummis & Gross P.C.

You can use someone else’s trademarks. Just don’t cause confusion.

Why are you using someone else’s trademark?

Permitted:

• To identify a genuine product service offered on my website;
• To let Internet users know that you are offering a genuine product or service;
• To make a comparison between a product that you offer and another product;
• To let Internet users know that you are selling a generic version of the product;
• If there is no other readily identifiable way of identifying the trademarked product or service—fair use of the trademark.

Bad:

• To get a search engine listing when your website has nothing to do the trademark;
• To get a more prominent organic listing when your website has nothing to do with the product;
• To get more traffic to your website when your website has nothing to do with the trademarked product;
• To divert competitors traffic to your website.

Permitted use:

• Purchase the trademark as a keyword when the website sells a genuine trademarked product;
• Use the trademark in a metatag when the website sells the genuine trademarked product or generic version of trademarked product or when there is a legitimate comparison between the trademarked product and another product.

Trademarks in Domain Names: Usually a bad idea.

Writing articles for purpose of driving traffic to website…probably not permitted.

Todd Mintz is the Director of Internet Marketing & Information Systems for S.R. Clarke Inc., a Real Estate Development and Residential / Commercial Construction Executive Search / Recruiting Firm headquartered in Fairfax, VA with offices nationwide. He is also a Director & Founding Member of SEMpdx: Portland, Oregon’s Search Engine Marketing Association.