Trademark Insider Q2 2007 - (Page 13) Trademark Insider Report as Adwords now, just as savvy marketers bought up all the domain names featuring their marks at the dawn of the internet marketing era. the courts with mixed results.Those issues are now addressed by a separate portion of the Lanham Act, because then-existing law did not provide adequate guidance or relief. The purchase of a keyword (often a competitor's brand name) can present users of search engines with information regarding a competitor's products, and is understandably attractive to competitors. But while companies can legally use the brand names of competitors in comparative advertising, they cannot do so in a manner that is misleading to the public.The context in which Google's keyword advertising appears could lead some unsuspecting users to click through to webpages not sponsored by or affiliated with the company being searched. The problem many brand owners have is that Google is essentially profiting by the unauthorized, potentially confusing use of their brands in advertising (but then again, so does any media outlet that runs a comparative advertisement). One might expect that trademark law would stand at the ready to provide relief, but keyword advertising does not fit neatly within existing trademark law principles. Traditional trademark claims are grounded in a likelihood of confusion. Though some courts have found that keyword advertising constitutes "use in commerce" under the Lanham Act, proof of a likelihood of confusion is also required for relief. Some courts have focused on a theory of "initial interest confusion" that has not been widely adopted. By contrast, the law of dilution is not concerned with customer confusion - it treats trademarks as property rights and focuses on preserving the distinctiveness and reputation of the brand in the marketplace. But that potentially helpful avenue is a limited one. Federal dilution law (as reformed in October 2006 in the Trademark Dilution Revision Act) extends only to famous brands having nationwide consumer recognition, so this approach would be available to only the most renowned marks. Furthermore, even where a famous mark is at stake, the TDRA exempts from liability "[a]ny fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services, including use in connection with … advertising or promotion that permits consumers to compare goods or services." Though a keyword is not used as a designation of source for the advertiser's own goods or services (and thus could qualify for the exemption), there may be significant debate over whether such keyword use qualifies as a "fair use." Google could be expected to argue that the purpose of keyword advertising is to allow consumers to compare Continued on next page Q2-2007 TRADEMARK INSIDER® REPORT Thomas W. Brooke Holland & Knight LLP www.hklaw.com Thomas W. Brooke handles matters involving trademark, copyright, trade secret and patent litigation, trademark and copyright prosecution, drafting licensing and technology transfer agreements, and all forms of intellectual property counseling. He is a member of the firm's task force on electronic discovery. He has served on the Council of the American Bar Association's Section of Intellectual Property Law (ABA-IPL), and as Chair of the Trademarks Division of the Section. As Chair of the International Trademark Association's U.S. Legislation Committee he played a crucial role in shaping the U.S. Trademark Dilution and Anti-Cybersquatting statutes. Mr. Brooke received his bachelor's degree in government with an English minor from the College of William and Mary and earned his law degree from the Marshall-Wythe School of Law at the College of William and Mary. Scot A. Duvall Middleton Reutlinger This development is likely to only delay a significant ruling on this important issue of keyword purchasing. Unless legislation is enacted specifically targeting this practice, the law in this area is likely to develop slowly and painfully, and only as a result of litigation brought by those having sufficient war chests to pursue litigation. Indeed, the recent settlement appears to have resulted from an imbalance of power rather than any lack of merit in the claims of American Blind & Wallpaper Factory. Though ABWF suggested in the press that pursuing its claims against Google proved too expensive, American Airlines has been waiting in the wings to push the issue through the courts. It is hard to imagine that AA, having recently filed a similar lawsuit against Google in federal court in Texas, would not have the resources necessary to take the case to trial. Keyword advertising need not be viewed as a "reality" of the Internet that cannot be addressed. This is not the first time that the Internet has presented a threat to the trademarks of brand owners. One of the first issues trademark lawyers faced as the Internet became widely accessible was the registration of domain names that corresponded to third-party trademarks ("cybersquatting"). Cases worked their way through Copyright © 2007 Corporation Service Company®. All Rights Reserved. 13 http://www.hklaw.com
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