Trademarks and SEM

If you’re a trademark holder, you most likely have search engine marketing (SEM) and search engine optimization (SEO) issues. Some issues may be fairly weighty and have a significant impact specific to your business. Others you share with many marketers. Let’s look at some of the more common trademark-related issues you may be facing.

According to “The American Heritage Dictionary,” a trademark is “a name, symbol, or other device identifying a product, officially registered and legally restricted to the use of the owner or manufacturer.” This definition is a bit simplistic. The phrase I’ve often heard lawyers and the legal press use is “likelihood of confusion.” Keep that in mind as we probe trademark issues.

Trademarks as Search Terms

There are several possible ways someone could bid on a trademarked term:

• The trademark is shared by others in different industries, business categories, or classes. Sometimes several firms or organizations hold a trademark on the same term for different classes. For example, there are many trademarks on the term “Yale,” including locks, education, meat, material handling (forklifts), and clothing. A search of the U.S. Patent & Trademark Office’s Trademark Electronic Search System (TESS) shows over 100 trademark registrations. If you and fellow holders of the same trademark are bidding for SEM traffic and position, you have to live with it.
• The retail distribution channel sells the brand/trademark. This situation should have significant benefits. However, when your channel bids against you on your brand keyword, it could have very negative consequences.Suppose your retail channel sends traffic on your keyword to a landing page where 50 percent of the content cross-sells to your competition, including low-priced competition. Your trademark may be used to route a searcher to the competition. Or, you may be competing against your own gray-market product or used/refurbished product.When the product is still the primary focus of the landing pages, you might not have a strong court case. However, some engines may have a solution for you (see below).
• The competition bids on the trademarked term. It’s unusual for the competition to bid on your term. However, editorial policies have changed, and your trademark may not have been removed from competitor account listings. See the search engine resolution options below.
• Your affiliate network bids on your trademark/brand. Many retailers’ affiliate networks use SEM heavily to arbitrage the difference in their traffic costs and their earnings from you. Our clients’ trademarks tend to have the best conversion rates, and, therefore, a high return on investment (ROI), particularly at reasonable bid prices. That’s why many trademark holders, in some cases, have started barring their affiliates from bidding on trademarked terms. Restricting affiliate use of trademarks often leaves the trademark holder free to bid on traffic unperturbed.

Search Engine Resolutions

The two major paid-placement vendors — Google and Overture — have trademark policies. As a trademark holder, you can enforce your rights within the paid-search environment.

Google’s trademark policy is fairly simple. The trademark holder governs how the trademark is used as a search term. There are two options: a blacklist of advertisers who may not use your trademark and a whitelist of advertisers who may. For dealing with problems, read Google’s full trademark complaint procedure.

Overture’s policy is a bit more permissive, allowing advertisers to use a trademarked term as a search term for “comparative advertising, sale of a product bearing the trademark, or commentary about the trademark owner or its product.” The policy acknowledges some “fair use” of trademarks results in consumer confusion.

If you have a trademark issue, you may get different resolutions from different engines. Read each engine’s policy, and start discussions armed with the appropriate facts and supporting documentation.

Trademarks as Ad Copy

Another issue is trademarks used in ad copy. For example, a retailer buys the generic term “sneaker,” then uses the trademarked term “Reebok” in the copy. Enforcing trademarks in such cases requires court rulings. Thus far, I’m not aware of any such rulings. If you know of such a legal ruling or other precedent, let me know. I’ll cover it in a follow-up column.

Please note: None of the above should be construed as legal advice. For that, you need to talk to a lawyer.