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Trademark Monitoring: Google Adwords – Friend or Foe?
© Cheryl Hodgson 2009 | Posted on April 24, 2009
The trademark and Internet worlds have been all in a twitter [no pun intended] regarding the use of federal trademarks in the Google AdWords program. Most people don’t realize that Google sells words to website owners so they can in turn use them as keywords, to maximize exposure on search engines. Unfortunately, many of these words sold are federal trademarks. You the trademark owner may well find you are bidding against competitors, and paying Google a higher price to purchase your own trademarks for sponsored search engine adverstising. This topic is covered in our new BRANDITO Watch Internet Enforcement Manual. Receive a free excerpt at http://www.brand-aide.com/freereport.htm
Smart clients do monitor use of a federally registered trademark by competitors as AdWords. Many angry clients contact us about other parties using their trademarks to get a higher listing in Google. While the law is clear it is illegal for the competitor to purchase the term, Google has not been held liable for contributory infringement for selling them in the first place (except in certain European countries, France being one of them). Google has successfully stalled cases prcoedurally claiming the “use in commerce” defense, namely that trademarks as Adwords are not really “trademark use,” and thus not subject to Trademark Law. The refrain is “we sell bill board space.” (To the highest bidder we woud add). Well my friends, the Second Circuit in New York recently breathed new life into an earlier filed case. S ee Rescuecom Corp. v. Google, Inc., 2009 WL 875447 (2d Cir. April 3, 2009).
The Second Circuit reversed the lower courts decision to allow Google’s motion for Summary Judgement. This has important implications because it raises the precarious nature of Google’s “use in commerce” argument, and could also jeopardize rulings that held metatags and use of trademarks in Metadata were not trademarks being used in commerce. This is heavy duty stuff people! Finally trademark owners may have standing to argue that their registrations should not be bought and sold openly to the highest bidder in an “Internet Market!”
Sadly even American Airlines settled with Google in its much publicized case filed in 2007. It will be interesting to see what District Court in New York does and whether this plaintiff will be able to take the case to a decision on the merits, in the face of the millions Google pours into legal costs to fight these cases to avoid an adverse ruling that their practice is a form of cyber crime.
Meanwhile, trademark owners are forced to develop their own strategy to monitor trademarks as AdWords, and contact infringing competitors directly.
Technorati Tags: Ad Words, AdWords, brand management, brand protection, Branding, brands, Google, infringement, Intellectual Property, Mark Monitor, Marketing, metatags, police your mark, Rescuecom, Second Circuit, trademark monitoring, trademark registration, Trademarks
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