The Search Marketing Advisor Newsletter Article: May 2004, Volume 3, Issue 1
The Google Trademark Controversy Actionable Advice
by Heather Molina, Algorithmic Search Analyst, iProspect
Google, the most popular search engine on the Internet, has just added one more item to your online marketing “To-Do” list: police the use of your trademarked terms within their AdWords program yourself.
In April 2004, Google notified almost 150,000 advertisers by e-mail that their policy on selling keyword phrases that contained trademarked terms had changed. The new policy allows advertisers in the United States and Canada, including your competitors, to buy your trademarked terms via the Google AdWords program that will result in the display of text ads within the search results of Google and its many affiliate sites.
“This is an effort on the part of (Google) to get out of the trademark policing business,” said John B. Kaiser, outside legal counsel for iProspect. “Clearly, an internal business decision has been made to attempt to transfer infringement monitoring responsibility to the owners of a given trademark.”
In the end, however, Mr. Kaiser forecasts, “large organizations, in the process of bringing litigation against an infringer, may bring Google into an action based upon their facilitating, allowing, or otherwise permitting an infringer to commercially exploit a company’s federally protected mark within their results database.”
What to Do
iProspect suggests that companies keep a close eye on a current case Google has with AXA, an insurance company, in the French courts. The dispute is over Adwords and AXA’s claims that the use of their trademarked terms infringes on its patents and copyrights. AXA has requested that Google stop selling the keywords.
In the meantime, companies should begin auditing how their trademarks are being used in Google. One way to do this is to use an online trademark monitoring service, which is designed to quickly locate and monitor how a trademark is being used on the Internet.
“The value-add of a service like ours is that at the end of the day we are essentially a filter,” said Noah Silverman, founder of TrademarkTracker.com, a Los Angeles-based company that monitors the Internet for clients concerned with intellectual property abuse. “We have patent-pending artificial intelligence that will filter out the ‘noise’ and send targeted results about potential offenders.”
Another way to audit trademarks is to begin “quality control sampling” on a regular basis. Ideally, a company should look for trademark infringement over its entire set of keyword phrases. If you can’t afford to do that, typical acceptance sampling methods can be used by running weekly queries on a smaller set of random keyword phrases. By doing this, companies will be able to establish the extent to which the infringement has taken place.
If infringement on your trademarked terms is discovered in Google Adwords, you have limited recourse within Google. According to Google’s site, the new policy will not allow competitors to actually use the trademarked keyword phrases in the text of its ads – but does not prohibit purchasing the keyword itself and presenting an ad devoid of the keyword. A trademark owner may file a complaint with Google requesting that they inspect an ad for a policy violation. If a violation is found, Google will require the advertiser to remove the trademarked keyword from the text in the ad.
