In the previous blog post by my colleague, Alexander Scalia, we were introduced to Google AdWords, and how they can help you establish branding and commercial use for your trademark. In this post, we’re moving past filing, and into use of your trademark. A registered trademark is at its strongest when the owner enforces their rights in that registration. One common area of possible infringement by others is in Google AdWords. In this post, we’re going to examine what is and is not trademark infringement through Google AdWords, and what steps can be taken to stop possible infringing parties.
Trademark Infringement by Third Parties
Google AdWords are made of two separate pieces: the keywords that are bid on, and the copy, or text, of the ad itself. The keyword isn’t seen by consumers, but instead is the trigger in the Google search that would cause the ad to appear. The copy of the ad is what appears outwardly to consumers, and could possibly create confusion in the marketplace. Both pieces of Google AdWords should be considered before determining infringement and next steps.
Currently, if a competitor were to use your trademark as their keyword, this is not trademark infringement. There are two main parts to a trademark infringement claim: The infringement must be use in commerce, and the infringement must be likely to cause confusion. While using a trademark as a keyword can be considered use in commerce, the courts have held that having a competitor’s trademark as a keyword is unlikely to cause confusion, as consumers do not often realize their search term was the keyword for the competitor’s ad appearing.
Trademark infringement can occur if the copy of the ad uses a competitor’s trademark. Placing the trademark of a competitor in the ad may cause confusion among consumers, especially if the competitor’s trademark is the main portion of the ad. By clicking on that ad, consumers may feel they are purchasing the real product, rather than the competitor product. However, proving trademark infringement is difficult, as courts in the past have required extensive studies and market research conducted to show that there was actual commercial harm caused by the competitor’s use of the trademark in their ad copy.
Trademark Infringement by Google
Some parties have attempted to hold Google liable for trademark infringement, as they review and control the Google AdWords bidding and copy. However, these attempts have been largely unsuccessful. The courts here reason there is no claim for false association or false advertising, since Google is not the competitor nor the advertiser, but rather at most advertising support. When Google may be held liable is if they knew or should have known that infringement could occur due to the copy of the ad.
The courts also determined that Google does not have any vicarious liability. Vicarious liability occurs when a related party, but not the infringing party, is also liable because they should have known about the infringing action. In the case of AdWords, Google does not draft the copy, and does not work with any of the advertising parties to sell or control the goods, so vicarious liability is not at issue in these instances.
What Can You Do
To prevent infringing upon your competitor’s marks, the best practice is to be very careful with how your ads are labeled. You can bid on a competitor’s trademark as your keyword, but be careful that it is done in a way that does not attempt to associate your product or service as theirs, or vice versa. You can reference a competitor’s trademark in the ad, but make sure the ad copy is clear in differentiating you and the competitor.
If others are infringing upon your trademark in their AdWords listings, there are a few avenues you can take to try and resolve these problems. First, Google has their own complaint page where trademark owners can go and ask for take-downs and reviews of infringing content. You can see the FAQ and find the form by clicking here. I recommend taking that step first as it is no cost and may result in a cleaner resolution of the situation. Second, you can contact the infringing party and send a cease and desist letter to stop their use of your mark in their Google AdWords. This step takes more time, but is often an alternative to messy litigation and court battles.
As always, if you feel there is trademark infringement of your brand occurring, or if you are worried about infringing upon others, we recommend you contact an attorney. The attorneys at LegalForce RAPC Worldwide are trademark specialists, and are here to help with your intellectual property and business needs.
Devan Orr is an Associate Trademark Attorney at LegalForce RAPC. She specializes in trademark filing and registration. Outside of work, she loves traveling, reading, and hiking.
Disclaimer – No Legal Advice: The information and content available on this site is offered only for informational purposes and is not intended to be legal advice. Posts are for educational purposes only as to provide general understanding and general information of the law, not provide specific advice. Blog posts should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.