Despite the tremendous growth in paid search advertising revenue, uncertainty in recent court developments has discouraged some search engine marketers from purchasing keywords that are trademarked by others. The fear is if they purchase these trademarked keywords, they could be found liable.
To delve into these issues, eM+C chatted with Mark J. Rosenberg, an intellectual property attorney with Sills Cummis & Gross P.C.'s Intellectual Property Practice group.
eM+C: Please explain how some recent court developments involving trademarks may discourage search engine marketers?
Mark J. Rosenberg: Most courts have taken the position that search marketers can purchase third-party trademarks as keywords if the search marketers are offering genuine versions of the trademarked products.
Courts, however, have not been consistent when marketers purchase trademarks as keywords and are only selling generic versions of trademarked products or comparing products sold on their Web sites with the trademarked products. Some courts have said this is permissible, others have not and still others have said it depends on how the trademark is being used on the Web site. In other words, it’s a matter of context.
eM+C: What are some proactive measures marketers can take to make sure they're not tripped up by trademark issues that can lead to their worst nightmare, such as launching a new product or marketing campaign and receiving a cease and desist letter, or even worse, a lawsuit for trademark infringement a short time later?
MJR: Marketers should conduct trademark searches. At a minimum, they should search the Internet database of the U.S. Patent and Trademark Office to make sure no one else has registered or applied to register the trademark or a similar trademark.
It’s also helpful to use Google to see if there are any common law uses of the trademark, which is a trademark use where the owner has not registered the trademark. The rights of the owner of a common law trademark can be just as strong as the rights of the owner of a registered trademark. If the trademark is very important to the business owner, the owner should have an attorney conduct a full search of the records of the USPTO and a variety of common law databases for the trademark and confusingly similar variations of the trademark.
eM+C: What are some legal ways marketers can use other marketers’ trademarks to enhance their visibility on the Web?
MJR: Search marketers can use other marketers’ trademarks as keywords or in Web site content to identify products or services on their Web sites. They can also use them in Web site content, articles or videos to identify generic versions of trademarked products or make legitimate comparisons to trademarked products.
However, trademarks can only be used to identify trademarked products or services. They can’t be unnecessarily repeated or used in a more prominent size or font than the surrounding text.
For more information, reach Mark at firstname.lastname@example.org.
To learn more about this topic, attend Rosenberg’s session at the Search Engine Strategies 2009 Conference & Expo at the New York Hilton, March 23-27. Rosenberg’s session, "Privacy, Intellectual Property & Trademark Issues: What You Must Know,” will take place on March 26.