Aug 2010 , Vol. VI, No.1

Up in the Air of Cyberspace – Keyword Advertising and Trademark Infringement

Is the use of your trademark as a keyword in online advertising an infringement on your trademark?
The issue of whether the search engine provider that sells the keyword is liable for trademark infringement is still up in the air in the United States.  In Rescuecom Corp. v. Google Inc. the Court of Appeals for the Second Circuit recently ruled that the sale by Google of a keyword is “use in commerce” of a trademark.  The court, however, did not rule on the second element of trademark infringement - whether the use of Rescuecom’s trademark in Google’s AdWords keyword advertising program causes likelihood of confusion.

In the European Union, on the other hand, the European Court of Justice held in the case of Google v. Louis Vitton Malletier that Google was not liable for trademark infringement by simply selling keywords to trigger online advertisements.

As regards whether the advertiser who purchases your trademark from a search engine’s keyword advertising program is liable for trademark infringement, most courts in the United States have found that purchasing a keyword is “use in commerce”.  As to whether there is also likelihood of confusion resulting from the purchase and use of the keyword, the trend appears to be that the mark must be visible to the searcher in order for there to be likelihood of confusion.

In the European Union following the Google v. Louis Vitton Malletier case, in order to recover for trademark infringement against an advertiser, a trademark owner must show that the keyword triggers an online ad that either falsely suggests that there is an “economic link” between the advertiser and the trademark owner, or it is so vague that “informed and reasonable attentive Internet users are unable to determine” whether there is an economic link.

Given the above, the burden will continue to be on the trademark owner to find and stop use of its marks as keywords.  The following are some steps to take to protect your trademarks from infringement in this manner:

• Become the highest keyword bidder for your own trademarks in the search engine provider’s keyword advertising program;
• Monitor the use of your trademarks on the Internet and elsewhere;
• Register your trademarks with the U.S. Patent and Trademark Office (and internationally if you use your trademarks internationally);
• Promptly notify the search engine provider and the keyword advertiser of any infringement; and
• Use the complaint procedures offered by the search engine provider, as well as the procedures provided by the Internet Corporation for Assigned Names and Numbers (“ICANN”).

These articles are meant to bring awareness to the topic and are not intended to be used as legal advice. If you have questions about any of the articles or any other related matters, please see the contact information located at the end of each individual article.