Trademark Infringement in Keyword Advertising on Yahoo and Google
Protecting trademarks in cyberspace is always a challenge. One hot area is the issue of “keyword infringement” when third parties use trademarks that don’t belong to them as keyword triggers or in the advertising text of ads placed on Google, Yahoo, and MSN. These are always fact specific issues. Where someone uses a third party trademark with a specific intent of causing confusion as to source and origin of goods, that use likely qualifies as trademark infringement. However, there are a lot of gray area cases in the keyword infringement arena.
Here is Yahoo’s response to a keyword infringement complaint, including a link to their policy concerning keyword infringement:
“Thank you for your correspondence. This email will serve as our response. You will not receive further notification from us.
Yahoo! Search Marketing does not approve of or condone websites that infringe trademarks. However, we generally have no control over the content presented by the advertisers who list their websites on our search engine. Yahoo! Search Marketing does require that each website be relevant under our guidelines. To summarize, we allow advertisers to bid on a search term that may be the trademark of another party so long as their ad meets one of the following conditions:
1. Reseller: The advertiser’s site must sell (or clearly facilitate the sale of) the product or service bearing the trademark (for example, an online shoe store that sells Nike shoes on their landing page would be allowed to bid on the search term “nike”).
2. Information Site, Not Competitive: The primary purpose of the advertiser’s site is to provide substantial information about the trademark owner or products or services bearing the trademark, AND the advertiser’s site does not sell or promote a product or service that competes with the trademark owner’s products or services (for example, a site that provides product reviews may bid on the brand names of the products being reviewed, and a site that provides news information about a company may bid on the company name as a search term).
3. Generic Use (Non-Trademark Related): The advertiser is using the term in a generic or merely descriptive manner unrelated to the trademark owner’s goods or services (for example, we would allow an advertiser that sells apples to bid on the search term “apple,” whereas an advertiser in the computer software/hardware industry bidding on the term “apple” would be required to have relevant content regarding the Apple Computer, Inc. brand of computer products and comply with our policy as described above).
While we are not in a position to arbitrate trademark or other intellectual property disputes between third parties, if a trademark owner brings a website to our attention that it believes does not contain relevant content, we will review the website for compliance with our guidelines. Therefore, we will review the search results returned through Yahoo! Search Marketing’s search services on the search term(s) in question, and the corresponding websites, and will take appropriate action.
Please note that Yahoo! Search Marketing does not remove keywords from the title or description of an ad in response to a trademark complaint. Rather, if an ad is in violation of our trademark policy, Yahoo! Search Marketing will remove the non-compliant ad. If an ad is in compliance with our trademark policy, then the ad will be retained and no changes will be made.
Also, please note that any ads that are removed as a result of our review may be subsequently resubmitted by the advertiser, and included in our search results, if changes are made to the title or description of the ads, or the content of the website, to bring the ads into compliance with our guidelines.
If you are going to complain to Google, this is the type of response you will receive:
“As a provider of space for advertisements, please note that Google is not in a position to arbitrate trademark disputes between the advertisers and trademark owners. As stated in our Terms and Conditions, the advertisers themselves are responsible for the keywords and ad content that they choose to use. Accordingly, we encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar advertisements on other sites.
As a courtesy to trademark owners, however, we are willing to perform a limited investigation of reasonable complaints.
Please note: The following procedure applies only to the use of terms that may be trademarks in advertisements, which are clearly marked as sponsored links on our results pages. We do not take action on objections to the use of trademarks in sites that appear in our search results, i.e., the left-side of a results page. For any such objections, please contact the site owner directly.
Please see below if you are concerned with:
* Advertisers using your trademark in AdWords advertisement.
o Trademark Complaint Procedure Page
* Authorizing a 3rd party advertiser to use your trademark in AdWords advertisements.
Please note that we will only authorize accounts to use terms for which we have received trademark complaints.
o Trademark Authorization Process”