Trademark Infringement Issues For Pay-Per-Click (PPC) Advertisers

Yahoo has just announced they will no longer allowborne by my client there is only one solution and that is
PPC advertisers to advertise or bid on trademarkedto stop all advertisers from bidding on the terms. In my
terms.opinion, it is simply not right that a business owner has
Could this be a trend of things to come from the otherto spend $500,000+ to buy their own branded term
major search players?that has already cost them millions of dollars to build.
MSN's new adCenter (still in beta) states you are notThis is $500,000+ in revenue for Google which is being
allowed to infringe trademarks within their editorialgenerated by a policy that is beyond elementary
guidelines (see policy below).business terms. Yahoo and MSN have recognized the
However, Google still maintains a strong stance ininjustice of this policy and have taken steps to change
allowing advertisers to bid on trademarked searchit.
terms as long as the trademarked term is not usedIf we cannot treat this policy on a case by case basis,
within the advertiser's ad-copy.then I have no alternative than to advise my client that
Numbers to Considerwe cannot help them any further and their only option
Next to click fraud, trademark violations are theis to resort to legal action against Google.
second largest concern to Pay-Per-Click (PPC)Google also advises that you take the matter up with
advertising. Out of the total number of searches online,individual advertisers which in many cases are
20% are trademark searches. Meaning, companyimpossible with private registrations and foreign
owned trademarks such as "Pontiac", account forcompanies. You could add to your high costs
20% of all search traffic. While 1 in 5 searches fordramatically to have to send cease desists to all
trademark terms may seem high, most conversions doinfringers. Many will ignore you.
not originate from trademarked terms. A study byThe classic bait and switch does not seem to apply to
comScore and Yahoo Search Marketing (Overture)the Internet. Many companies are okay with their
found most buyers do not search by manufacturer orterms being bought for comparison shopping and by
product name. Rather, buyers use broad search termsre-sellers. The solution here is for those companies to
that do not include a manufacturer's name. Broadgive permission to Google to allow their re-sellers to
search terms account for 70% of total searches andpurchase the name. With the strength and
60% of total conversions.sophistication of Google's technology how difficult can
Search Engine's Policy on PPC Trademark Biddingthis be? I doubt it is any more cumbersome than
Yahoo on Trademarks:filtering search results for China.
"On March 1, 2006, Yahoo! Search Marketing willYour Defense Against Trademark Violations
modify its editorialguidelines regarding the use ofWebsite companies where the majority of their
keywords containing trademarks.revenue is generated through online sales depend
Previously, we allowed competitive advertising byheavily on search engines to generate traffic to their
allowing advertisersto bid on third-party trademarks ifwebsite. In order to defend against trademark
those advertisers offered detailedcomparativeinfringements you will need to conduct search audits at
information about the trademark owners' productsleast once every month. You not only need to look
orservices in comparison to the competitive productsover organic search results, but also paid search
and servicesthat were offered or promoted on theresults or PPC contextual ads. You should look through
advertisers' site.the top 30 results of the search listings.
In order to more easily deliver quality user experiencesFor organic search engine results you should look at
whenusers search on terms that are trademarks,both the questionable result and the site displayed in
Yahoo! Search Marketinghas determined that we willthe result. When looking over the possible violator's site,
no longer allow bidding on keywordscontainingdon't just look over the visible content on the site; look
competitor trademarks."over the code as well to uncover hidden text, image
MSN AdCenter on Trademarksalt tags and keyword meta tags that may include your
"Microsoft requires all advertisers to agree that theytrademarked names.
will not bid on keywords, or use in the text of theirThen document your findings. For search engine
advertisements, any word whose use would infringeresults and PPC results use a "screen capture" of the
the trademark of any third party or would otherwisepage displaying the mark infringement. For mark
be unlawful or in violation of the rights of any thirdinfringements that are visible on a website, save the
party".entire page's code as a .txt file.
Google Adwords on Trademarks:What about if you are you seeing an infringement in
"Google takes allegations of trademark infringementorganic search results, but when you click on the page,
very seriously and, as a courtesy, we're happy tothere is no infringement? They may be using a cloaked
investigate matters raised by trademark owners. Also,page which includes your trademark. To check this out
our Terms and Conditions with advertisers prohibityou will need to view the search engine's cached page
intellectual property infringement by advertisers andon file. Make sure to save a copy of this code as well.
make it clear that advertisers are responsible for theYou will need to document your findings properly by
keywords they choose to generate advertisementsdating the violation as well as the site owner's
and the text that they choose to use in thosecomplete contact information. Use to get the whois
advertisements."information for the site. Once you have all of this
Solution or More Problemsdocumented you will need to send your findings to the
With all Engines moving toward a TM standard, itappropriate search engine.
would have many benefits to both advertisers andYou may also want to take the legal route, in which
searchers. This standard would be good for marketerscase you should keep a record of all your
who would have to be more creative in their copydocumentation to present to your legal counsel.
creation creating increased demand for qualifiedThe best way to gather evidence is to hire a third
marketers which would translate into higher fees.party to collect evidence against the infringer of your
Search Engines hosting the ads would maintaintrademark or copyrighted material. Recently at Search
revenue levels, but online public relations firms may loseEngine Strategies in New York City during February of
as they would not be required to police search engines2006, Deborah Wilcox, Partner of Baker &
for their clients with trademarks. Lastly, the markHostetler LLP who specializes in trademark and
owner would continue to be protected and usercopyright areas of law said, "Use a third party to make
experience would not be affected.print outs and audit the search results. If the case goes
Case Study:to court you will need hard evidence for the judge."
I'm currently working with an AdWords client in aContact the Search Engines
circumstance where their competitors are bidding onYou can also contact the search engines directly if
their trademarked search terms. Aside from theyou believe an advertiser is infringing on your
constant policing and reporting for trademark violationstrademark. The respective search engine contact
used in the ads themselves, adspend to secure topinformation is below.
positions for their ads has skyrocketed from an initialGoogle
$2.00 per click to $15.00 per click. Additionally, monthlyGoogle Inc.
spend has increased from $1,200 to nearly $30,000.Attn: Google AdWords, Trademark Complaints
I have to go back to my client with an estimated2400 Bayshore Parkway
budget of $500,000 for the rest of this year to controlMountain View, CA 94043
the space for their own branded trademarked term. IYahoo! Search Marketing
am reluctant to do that as it doesn't make sense withFormerly: Overture Services, Inc.
the announcement from Yahoo on their newAttn: Business & Legal Affairs - Trademarks
trademark policy. Given the level of aggression by the74 N. Pasadena Ave.
competitors and the extortionate cost now been