Live From Search Engine Strategies 2004: Leggo My Trademark

The growth of search engine marketing has uncovered a new breed of trademark cases, said a panel of lawyers at the “Leggo My Trademark” session of Jupitermedia’s Search Engine Strategies conference in New York on Wednesday.

Take the Oceana situation. Recently, Google removed an ad from Oceana.org, a site devoted to protecting the world’s oceans from pollution. Google justified its action by saying that Oceana’s ad criticized the Royal Caribbean Cruise Line and cruise lines in general, according to information on Oceana’s site. Oceana has mounted a protest campaign.

Trademark law is complex, said the panel, and the issues appearing now because of online technology are brand new to the area. A trademark is a word, name, symbol or slogan that indicates the source of goods or services. Infringement is the use of a trademark that is likely to cause consumer confusion. In search, trademark can relate to meta tags, headings, keywords, pop ups, paid advertising and other vehicles.

In January, a dispute over keywords resulted in a lawsuit. Direct marketer American Blind and Wallpaper Factory (ABWF), filed suit against Google claiming that the search engine allows competitors to buy ABWF’s trademarks as keywords, said ABWF’s lawyer David A. Rammelt of Kelley Drye & Warren LLP. And, ABWF alleges, Google actively promotes the full name of the company as a keyword for competitors to use.

There are five keywords in question including “American Wallpaper Factory” and “American Blind Factory.” According to Rammelt, when a competing home design company is looking for keywords to use, Google recommends through its keyword suggestion tool that companies use “American Blind and Wallpaper Factory.”

“We believe Google is trying to profit off my client’s name,” Rammelt said.

Google says that when someone keys in “American Blind Factory,” they are just looking for blinds, not ABWF, according to Rammelt. Google could not be reached by press time.

ABWF filed the suit in the Southern District of New York, demanding that Google stop selling ABWF’s trademarks, and asking for damages of a yet-to-be determined monetary amount.

Google filed suit in California to protect its keyword search process. A hearing will occur April 5 to determine the location of the lawsuit.

Why does ABWF have a right to own the word “America”?

“If someone types in my client’s exact trademark, we don’t want them directed somewhere else,” Rammelt said.

The attorney expects the suit to take a long time. “There’s no clear-cut law,” he said. “We’re trying to draw analogies from 60 years of trademark law.”