Trademark Insider Q2 2007 - (Page 12) Trademark Insider Report Q&A: The Trademark Professional’s Forum Trademark attorneys respond toquestions about industry topics of interest QUESTION: The debate over the use of trademarks as keywords in paid for placement online advertisements has been going on for years now, with no consensus reached. The much-anticipated November trial of Google Inc. v American Blind & Wallpaper Factory Inc. - which brought the issue front and center again - settled in Google's favor on August 31, 2007. What do you think are the ramifications of this settlement on future litigation? Is the practice of selling trademarks as keywords infringement or just the reality of marketing in the age of the Internet? Roberta Jacobs-Meadway Ballard Spahr Andrews & Ingersoll, LLP I would think that the resolution of the matter will discourage some but not all challenges to Google's policy. The rulings that have come down are sufficiently fragmented that a company that considers itself truly aggrieved may still pursue an action in a forum where the issue has not been resolved at the appeals court level. The practice of selling trademarks as keywords is not a trademark use and so is not an infringement. If Congress chooses, it could make the sale of trademarks as keywords a violation of a new statutory provision, just as a new provision was added to address cyber-squatting. Certainly, a legislative solution that recognizes the nature of the issue would be preferable to distorting trademark law to classify as "use" conduct which clearly falls outside the statutory definition of use. Thomas W. Brooke Holland & Knight LLP Just as the use of registered trademarks as key words to trigger Internet banner advertisements may constitute trademark infringement, see Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004), use of another's trademark to trigger a consumer's interest may also constitute Trademark Infringement. The ultimate question is whether consumers are confused by the appearance of a link to a competitor when searching for a trademark owner via an internet search engine. ABWF had the burden to show a likelihood that consumers employing the Google Search engine and typing in one of ABWF's trademarks would be confused into thinking that the rival companies which paid to use the ABWF marks were somehow associated with, sponsored by or connected with ABWF. Proving likelihood of confusion may have been daunting as most of ABWF marks are descriptive in whole or in part. ABWF's case most likely would have been stronger if it owned and claimed infringement of arbitrary marks. Search engine operators like Google should know that this settlement will most likely not end the debate, especially since other courts have ruled in favor of trademark owners. Sales of famous marks as AdWords by Google or the equivalent by Google's competitors will almost certainly lead to protests by the mark owners. The problem for search engine companies selling sponsored links is making a determination as to whether a term that a party may claim as a trademark is primarily a brand-identifier or a descriptive term free for all to use. The reality of today's electronic marketplace dictates that trademarks deserve as much protection on the Web as they do at the mall. Just as brand owners are well advised to promote their brands as trademarks in order to build recognition and equity on the street, the same holds true with sponsored links. The best defense for companies who fear ending up in the same position as ABWF would be to purchase their own brands Copyright © 2007 Corporation Service Company®. All Rights Reserved. Roberta Jacobs-Meadway Ballard Spahr Andrews & Ingersoll, LLP www.ballardspahr.com Roberta Jacobs-Meadway is a partner in the Litigation Department and a member of the Intellectual Property Group, Franchise and Distribution Group, Life Sciences/ Technology Group, Technology and Emerging Companies Group, and International Group. Ms. JacobsMeadway's practice focuses on trademarks, trade dress, and unfair competition issues and includes litigation in the federal courts and before the Trademark Trial and Appeal Board. She has served as mediator in numerous trademark and copyright disputes. Ms. Jacobs-Meadway is a graduate of Bryn Mawr College (B.A., magna cum laude, 1972) and Rutgers University School of Law (J.D., with honors, 1975) where she was associate editor of the Rutgers Journal of Computers and the Law. 12 Q2-2007 TRADEMARK INSIDER® REPORT http://www.ballardspahr.com
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