Ok, so lets say that I run a busy operation out of Washington State, and I want to advertise on Google using the word “apple” in my advertisement. If I were selling computers, I might have some problems (Apple Computers, Inc.). If I were considering selling music, I might also run into some issues (Apple Records). If I were selling produce, I’d probably be fine. At least I hope I would.
The state of the law concerning the liability of a search engine that allows advertisers to use others’ trademarks as keywords is uncertain at best, even with a recent ruling in Google’s favor (see Eric Goldman’s post Google Wins Keyword Lawsuit–Rescuecom v. Google). Added 5:00 pm, 10/20/2006 – Courts Can’t Figure Out if Buying Keywords Constitutes Trademark Use–Buying for the Home v. Humble Abode, in which the Federal District Court in the District of New Jersey decides that “keyword advertising is a use in commerce.”
Trademarks, Adwords, and Google Patent Filings
Earlier this summer, I wrote a blog post titled Automated Search Ad Approval Process, looking at an automated adwords review process from a Google patent application. It determined whether to accept ads, reject them, or require human oversight because of violations of Google policies, including possible unauthorized use of trademarked words or phrases.
Last October, another patent filing from Google looked at the jurisdictions where ads might be served, and the state of trademark laws in those areas, to determine whether or not it would serve an ad in those locations which included terms that might be protected by trademarks. It also considered showing legal disclaimers in some jurisdictions along with some ads. If you want to dig through it, the document is Selectively delivering advertisements based at least in part on trademark issues. It’s a fairly complex system, that does provide an automated solution to the problem, but might require a large team of attorney’s to keep up to date.
Google takes another look at the use of an automated system involving the acceptance or rejection of ads using trademarked terms in a patent application that came out last week:
Automated screening of content based on intellectual property rights
Invented by Rose Anne Hagan, Kulpreet Singh Rana
US Patent Application 20060230457
Published October 12, 2006
Filed: March 31, 2005
Systems and methods automatically scan content, such as advertisements, for a list of terms and/or phrases that may not be allowed in the content. In one implementation, the terms and/or phrases include trademarks. In this implementation, incoming advertisements may be automatically scanned for the presence of trademarks.
IP in the title to this section refers to “Intellectual Property” and not “Internet Protocol.” Keep that in mind if you decide to read the patent application. It isn’t a long one, and the process described isn’t that complex.
It provides a technique for automated screening of content before ads are shown to consumers, which may involve comparing the text of advertisements to a watchlist of “known trademarked terms/phrases” to determine if there is a potential infringement of those phrases.
It may also look at other criteria, such as:
- Past problem ads submitted by the same advertiser over a certain period of time,
- An external database which might contain trademark information,
- A list of questionable advertisers or internet protocol addresses, and;
- Other potential signs of violations.
Getting past the watchlist would likely mean that the advertisement would be accepted. But, the terms being used might be on the watchlist, and could be accepted with some conditions being met, or rejected. For instance:
- An advertiser may have permission to use the terms.
- An advertiser may be the owner or an agent of the owner of the trademarked term.
In any of those cases, an assurance may have to be made that the advertiser is the owner or agent, or has permission. or futher proof may need to be provided.
If the advertiser doesn’t have permission to use the term, they may be asked to change the ad. If they don’t want to do so, they could ask for further review. One option available at that point, to the advertiser, might be “a representation of some sort that they believe the usage is permitted by law or otherwise legal or authorized.”
Verification on the part of the search engine might include contacting the owner of the trademarked term.
Other Reasons for Suspect Terms to be Accepted
The use of the term might be outside the scope of the trademark. The apple example I mention at the top of this post is one which the patent application uses. A fruit vendor selling apples should be able to use the word “apple” in their ad.
Different legal standards may also apply in different places, so the use of a trademarked term in an advertisement may be acceptable in some places and not others.
This process doesn’t seem all that novel or nonobvious, which might make it difficult to become a granted patent. The idea of trying to automate the process makes sense from the perspective of the search engine, because it could make it easier to filter through acceptable ads to find ones that might potentially cause problems.
What makes it a little more difficult is that there is no one central repository for trademarks, and that even people who hold common law trademarks may have rights to protect those trademarks.