While many clients come to attorney Marc P. Misthal after trademark infringement already has taken place, he has plenty of advice on how marketers can avoid needing his services. The partner at the law firm of Gottlieb, Rackman & Reisman, P.C., a New York-based intellectual property law firm, says all they need to do is use common sense.
"It seems pretty obvious," he says, "but you don't want to use somebody's trademark—Nike, Coca-Cola, Disney—as a keyword if you don't have permission from them."
He provides some proactive measures marketers can take:
Ask questions: "A lot of trademark owners are pretty savvy about these issues," Misthal says. "And, usually in their agreements with parties that they authorize to use the marks, they will put in provisions." But if it's still unclear whether trademarks can be used as keywords, ask.
Try on the trademark owner's shoes: "For example, if you were to use the keyword, 'Nike' in some fashion to attract people to your Web site, but you didn't sell Nike products at all, you [sell] Reebok, I think you could understand why Nike would be a little bit unhappy," he says. "Because people who were looking for Nike might get drawn to the site for something they maybe weren't looking for."
Don't mislead: Stepping off of the Nike foundation, Misthal says some marketers go a bit further. "If you buy a sponsored ad on Google and the ad is triggered by somebody doing a search for Coca-Cola … [because it] says, 'Oh, you like Coca-Cola? Try our product,' but you sell Pepsi, that's misleading," he says. He's worked on behalf of clients who've complained to Google about such misleading advertisements, which Google then takes down.
Review any written agreements: Affiliate marketers, for instance, should know based on their agreements with trademark owners whether they're permitted to buy trademarked keywords or use the words as meta tags. But if agreements are silent on the matter, Misthal says it's best to talk with the trademark owner. "It may be best to ask the question up front rather than doing it and letting the trademark owner find out and be unhappy," he says.