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August 21, 2008

Trademark Issues: What SEMs Should Know

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Moderator Jeff Rohrs (ExactTarget) are back in the Inside Intelligence track with a new set of panelists. Mark J Rosenberg, Esq. (Sills Cummis & Gross P.C.), April Wurster (Baker & McKenzie) and Eric Goldman (Santa Clara University School of Law).

Why do I keep recapping the legal sessions? I never understand a word! Also, it’s cold in here. The next time I decide to wear anything cooler than a parka to a conference, someone hit me. These and other complaints brought to you by the fact that it’s the last day of the conference and I’m tired.

Jeff starts us off by telling us that he’s a recovering attorney and that’s why he has to moderate the legal sessions.

Eric Goldman is going first. He’s going to start with trademark infringement.

To establish a claim in court:

  • Ownership of valid trademark
  • Priority of usage — first one to use it.
  • Use in commerce in connection with the sale of goods or services
    • –TM in ad copy = use in commerce
    • –TM as a trigger for ads = court split

The courts are split on whether or not buying the keyword but not using it in the copy counts. He shows a slide that details decisions by the court on either side. New York tends to think No.

Likelyhood of consumer confusion
–Untested in trial
–JG Wentworth and Designer Skin: Summary Judgement for defense
–Storus: SJ for plaintiff

Again, courts are split on the issue.

Even if all the of above are met there are plenty of defenses still.

  • Nominative use “My products are cheap than Trademark owner” — Tiffany vs eBay
  • Descriptive fair use
  • Printer…something. He changed the slide.

Other regulations to know:
States have passed anti-keyword law (some question if states can even do that.)
– Utah Spyware Control Act
– Alaska SB 140

Neither have ever been tested in court.

– Utah SB 236 [Tried to ban keyword advertising. Was repealed]

Search Engine Trademark Policies — not laws, just policies.
Yahoo and MSN, TM owners can block keywords from buys
Google, TM owners can block references in ad copy.

April Wurster is next. She’s going to tell us what we need to know from the plaintiffs perspective.

Things to know:
Monitor trademark use
Cease and Desist Letters — talk to your attorney first. You need a plan. If it’s too strong, you could find yourself the defendant if they seek a declaratory judgment in their favored court.
Lawsuit
Search engines, auction sites and ISPs have complaint procedures to allow trademark holder to address trademark concerns without resorting to litigation. — Cheap, inexpensive and fast ways to stop infringement.

Google policies vary depending on the country. US, UK, CA and Ireland = keywords in copy only. Outside = keywords in copy and buys.

Yahoo has an email for complaints: trademarkconcern-ysm@yahoo.com

eBay: Verified Rights Owner Program — there’s an online complaint form.

If you can’t get the problem solved through the engines, you might have to file a lawsuit. Take proactive measures. Register with federal registration.

Common law marks = free, you get what you pay for.
State registration = fairly cheap and fast, most states including California do not recognize state trademarks based on intent to use. You have to be using the mark in commerce to file.

Federal registration on the principle register = strongest and most expensive. Nationwide, can get damages, can get court costs, if you use your mark for five years it can become “incontestable”.

How do you use the mark:

  • Use proprietary notices — trademark notice on your materials
  • Distinguish the mark in print
  • Use as an Adjective
    • -Marks should never be used as a Noun — this is how they become generic
    • -Marks should never be used as a verb “Xerox your documents” or “Google this search”
  • Never change the mark. (Morton Salt girl changes over time but not enough. If she put on pants, that would be a new mark.)

Mark Rosenberg is going to take the other side now. He’s got bad news for trademark owners — marketers can use your trademarks. With limits.

What’s the limit? Just don’t cause confusion. If someone could be confused that you are the trademark owner or you’re linked to the trademark owner, that’s not permitted.

Ask yourself: Why am I using someone else’s trademark?
Permitted:

  • To identify a Genuine product or service
  • To let internet users know you’re offering a genuine product or service
  • To make a comparison between a product you offer and another product.
  • To let Internet users know that you’re selling a generic version of a trademarked product

Permitted: Nominative fair use: There is not other readily identifiable way of indentifying the trademarked product or service.

Not permitted:

  • To get attention (search engine listing, to increase ranking, to get more traffic) when your site has nothing to do with the mark
  • To get your competitor’s traffic to your site.

Limits: The trademark is used on to the extent necessary to identify the product and can’t imply connection to the trademark.

CAN NOT: Use the trademark more than necessary, a more prominent way that necessary. Can’t overly disclaim the trademark. Can’t cause confusion. Can’t use the logo instead of the word.

Don’t use someone else’s trademark in your domain name, including typos.

He’s been seeing people writing articles on a trademark in order to drive traffic to a commercial Web site and he thinks that’s probably not cool though there’s no case law on that.

Eric: Someone published a press release exactly like Mark’s saying and there was a case on it. The courts saw right through that. He doesn’t like putting trademarks in Meta tags. There’s so much case law that treats it as verboten. He thinks that it’s better not to risk it.

Mark: Disagrees and says as long as it’s genuine, it’s okay.

And now they’re quoting case law. Oh heavens.

Jeff: How well versed are judges on search engine law, let alone technology?

Mark: They’re not. That’s where the split comes from.

Eric: Generally they’re not. The real problem is the lawyers who don’t do a good job of educating the judges. If you are in a fracas, make sure your lawyer understands the industry and educates the court.

April: It depends on jurisdiction. In NY it’s different than CA.

Q&A

What’s your feeling on indirect or broad match keyword buys?

Mark: Always follow up on a Cease and Desist. If you’re dealing with six million keywords it’s probably not worth fighting about. If you’re not using it for the same purpose, you’re also okay. Lots of trademarks have non-trademark uses.

Eric: there have been three or four cases on broad match. Those have been pretty well educated and so far it’s been pretty good. So far it doesn’t require negative matching in advance. You might want to do it after the C&D. Again make sure your lawyer is up to speed. One decision did require negative matching going forward. If you’re buying a term that you know is going to cause problems, consider negative matching.

Jeff: If you’re broad matching you’re probably running on trademarks and Google won’t tell you about it.

If they’re an unauthorized dealer with a genuine project, what can I do as recourse?

Eric: They might still be allowed.

Mark: it’s like used goods, you can’t make them stop.

April: Look at other forms of copyright infringement. Ad copy or images infringement.

Eric: Even in that case, you might not be able to do it. Make sure you’re registered with your copyrights. If your business model is based on suing people who sell your products, you’re going to be attacks.

International or foreign marks

Mark: It’s a problem.

April’; You have to register your trademark wherever you want to do business. If you’re manufacturing in China, register there.

Foreign marks don’t help you in the US.

Cease and desists can give the potential infringer a heads-up and they can do an end-run.

What is the law on typo-squatting

Mark: If people are confused, it’s infringement whether it’s spelled correctly or not. It’s a case by case thing.

Eric: In some cases it just confirms that you’re trying to steal their customers. It’s evidence of bad intent.

An audience member says meta tags and useless and never put trademarks in them. Can you take a state mark to the engines or do they only want federal marks?

April: They don’t care, they just want to know what your rights are. It’s not clear what Google’s policies are.

Mark: If you’re not registered in the state where the infringement is taking place you’re out of luck.

Eric: I would absolutely filed with Google based on a common law mark.

[I'm skipping a very specific question and a question that was asked and answered already.]

Blogs and fansites that use trademarks in a domain name, is it still problematic if they’re not a commercial site?

Eric: Make sure it’s truthful and not designed to be confusing. Make it clear that it’s a third party commentary and NOT the trademark holder. But it depends on the court and it’s a grey area.

Mark: it might not even be intentional. You might think it’s not confusing but it might be considered confusing anyway.

April: Even if you think you’re okay and your lawyer thinks you’re okay, the trademark owner might not. You might still get sued anyway and if you’re a smaller company, you might have to just give up.





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