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
Abstract
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 Screening
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.
Suspect Advertisements
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.
Conclusion
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.
There are other issues to the automated process as well. Vendors and affiliates will want to bid on brand related terms to drive traffic and match the customer up with the product or company they are looking for.
So if I am searching for an epson printer, there might be hundreds of vendors who are authorized to sell epson products. How could the search engines make a distinction between trademarks which can be used to sell products and trademarks which can never be used? After the fact of a lawsuit or legal notice they might be able to, but there are so many cases like you point out where the use and context of the word matters to the trademark.
In my experience the only words we have run into trouble or really had to get exceptions for were ads possibly related to prescription drugs, which I imagine is related more to government regulation than to trademark issues.
Michael @ SEOG
Hi Michael,
Good points.
I’m not sure that the process that they are describing really adds anything new to how they might treat trademarks as much as it provides an automated way to process more ads more quickly.
I’ve seen a few campaigns where we were working as an authorized agent for trademark holders, and our campaigns were put on hold for verification for much longer than we really wanted while that process took place. These were in areas other than prescription drugs.
If automating approval for many ads can mean faster review times for ads that there may be questions about, then I see that as a positive.
Michael @ SEOG makes a great point. I am employed in the travel industry and offer hotels that are specifically tied to trademarked names. I have had some specific dealings with corporations that have threatened to sue over having ads come upon on Google, Yahoo and MSN when a user submits a query for their trademarked name. Even though I have a contract with one of their properties. They haven’t gone as far as saying that I am not allowed to show up in organic results (thankfully), however, what gives them the right to limit the ability to market their products and/or services.
Specifically, why would they enter into a contract with me if they did not want me to sell their product?
This seems to be run by the same mentality of legal representation as in Belgium!
Thanks for the insight and look into what Google is trying to do with this problem. It just seems that the rules are too ambiguous.
Hi Bill,
If the way that Google is trying to handle use of trademarks in adwords seems ambiguous, it’s probably because this is an ambiguous area, and the law is unsettled around it. I expect that it will remain that way for a while.
Steve,
I’ve seen that, too. I guess the only solution that may keep the threat of litigation away in that instance is to try to get something in writing from the companies that you have a contract with that explicitly covers the use of adwords.
They are good points to consider. I imagine if that became the scenario, Google would face a substantial loss of revenue on many fronts.
How would a retail business promote their Ipod’s? or Absolut Vodka?
It is a grey area, and I would hate to be the one defining a policy on it.
Hi Steve,
Good questions. I think I would hate to be the one defining a policy, too.
One risk of using a trademark online in adwords, even if you are an authorized dealer, is that if the manufacturer also sells their product online, people may be tempted to try to purchase directly from the manufacturer.
Yet it probably should be possible to bid on those if authorized to do so, and if we do a search for something like “ipod,” a number of sites that aren’t Apple do show up in the paid results.
It is helpful for a retail shop to try to do some brand building of their own, independent of the products that they sell. But advertising based upon which products you carry is something that stores have been doiing for years in print, radio, and TV.
Hey Bill,
Can Google ever let go of TM bidding? Personally, i see it as too much of a revenue hit to ever disallow TM bidding as Yahoo did earlier this year. Aside from TM bidding holding a significant % of search share, the CTR on branded or TM terms also tend to be 3 to 4 times higher on sponsored listings. Obviously, i’m speaking only to the U.S. market.
Technology aside, do you see Google moving to disallow TM bidding before a federal court changes their mind on future claims?
Hi
Tough questions.
From a legal stance, there have been a number of rulings that seem to be somewhat contradictory.
The last two have seemingly opposing results, yet one of them was against the search engine (Rescue.com) and the other was against an advertiser (Buying for the Home). That may be a difference that makes a difference.
The legal rulings are also limited in scope and in jurisdiction. It’s not unusual to see different results covering certain legal issues with contradictory rulings come from different district courts.
Both the Rescue.com and Buying for the Home cases were decided at the lowest level of the district courts, one in New Jersey, and the other in the Northern District of New York. They both are a couple of levels away from an appeal to the US Supreme Court, if the Court would even decide to hear them.
Sometimes when there are contradictory opinions on a legal issues, the Supreme Court will take a case like that one. That could be a few years away.
If Google doesn’t police trademarks and intellectual property carefully, they may find themselves a target of more and more litigation. Chances are that at some point, those cases may advance far enough along to have the Supreme Court make a ruling on this issue.
They might find themselves settling cases rather than let them get that far along.
How many lawyers and economists are conducting cost/benefit analyses at Google these days concerning risk of litigation over their trademark policies? Hard to say. Imagine some of that is going on though.
Thanks for your response, Bill. It seems as if we’ll just have to wait.
You’re welcome.
There are other issues involved, too. Such as the fact that a broad match approach may end up meaning that trademarked terms are being bid upon, even though the advertiser may not mean to use the term.
Hi enjoyed reading your post.
Have just set up my first niche site. Have had some success in ranking it. My problem with googles advertising seems to be. Sometimes it has totally relevant ads on my site then all of a sudden they will change and have no relevance at all why is this?
Thanks again very informative post
Hi Lee,
I’ve seen some variations in the ads shown in Adsense too. They are supposed to be relevant to the content found on the pages they are seen upon, but I’ve also seen ads that are more targeted at me specifically based upon pages I’ve visited as well. Google will also sometimes show public service announcement ads when they don’t have any relevant ads for the content of a page or that might ideally be targeted at a visitor.
I have noticed that after a substantial change to my website content, google will show irrelevant ads for a period of time until it had a chance to properly crawl my new content. At least I am assuming thatis what’s going on
Hi Alex,
It is quite possible that Google is reassessing the content of your pages, and trying to match appropriate advertisements to it when you do make changes. It is interesting seeing what ads Google might show on some of the pages that I create where I use adsense, and sometimes it takes a few days for them to come close to showing relevant advertisements for new posts.
Hi I posted a comment a little while ago about the ads I was getting on my site. Since then I have noticed Adsense go up and down which some of it is quite natural. But I have noticed it also varies with which specific ads google puts on. So this seems very important to have the right ones on there.
Thanks lee