Keyword Use and Trademark Infringement

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 What Are Keywords?

A search engine uses keywords to direct Internet users to a particular website or advertisement. Often referred to as “adwords,” these are sold by search engine companies to advertisers.

If the searcher enters the keyword “running,” they may be directed to advertisements for running shoes. Keywords are a recent development in Internet usage.

Is Keyword Advertising Trademark Infringement a Crime?

It is possible to commit keyword advertising trademark infringement by selling trademarked words and phrases to companies competing with the trademark owner. Since search engines have become more commonly used in the last decade, trademark infringement by keyword advertising is a relatively new phenomenon.

Owners of trademarks are unsatisfied with this practice because they believe it creates confusion among consumers. If a consumer searches for keywords that fall under the trademark, they see those exact words on websites that are unrelated to the product or brand.

As a result, finding the right product or service from the company holding the trademark takes a lot longer.

There is only infringement when the search engine links a trademark’s actual words to a competitor. A consumer may perform a generic search for “contact lenses,” which is not a trademarkable term.

However, more specific phrases are protected by trademarks. The problem is when search engines link to competitors’ sites with trademarked keywords.

Consumers may be able to tell that a hit on a keyword search is paid advertising. However, it’s not always obvious.

It is possible that keyword advertising infringement can diminish a trademark’s value because others are using it to gain awareness and traffic to their sites or increase sales. As trademarks aren’t free, individuals who spend time and money on a trademark for a phrase, word, or slogan lose out on its value.

It is the trademark holder’s right to use, profit from, copy, and distribute an approved trademark. Search engines, however, don’t seem to offer as much protection as trademarks do.

Trademarks were originally intended to reduce consumer confusion. It should be easy for a person to find out what company made or offered the product or service they are looking for. Allowing trademark infringement through keyword advertising is illegal because it causes confusion.

The opposite side argues that consumers benefit from being able to search with keywords. This increases awareness and allows the consumer to make a more informed decision.

For trademark owners, Internet marketing and search engine analysis are new challenges.

Courts often rely on economic analysis to determine whether keyword advertising violates a trademark. Among the information analyzed are the number of keyword searches, the value of the trademark, and the distance of the goods or services from the top of a search result Lawyers consider the potential damages caused by trademark infringement in keyword advertising as well as how many sales were lost due to likeness and proximity.

What Is the Importance of Trademark Infringement in Keyword Advertisements?

Due to the value of online search tools and marketing, trademark infringement on keyword advertisements is important. Companies invest more time and energy in online initiatives that increase brand awareness in all industries.

A trademark serves to protect a company or individual’s interests and intellectual property. The sale of trademarked keywords by search engine companies creates confusion and reduces the value of the trademark.

To prove trademark infringement, your case needs to meet four elements:

  • You must have a current trademark
  • The design belongs to you
  • A company or individual who infringed on your mark sold services or goods in regular commerce using the mark
  • Consumers may be confused by the other company’s use of the mark

The courts have often found that keyword advertising doesn’t infringe on a trademark since it isn’t an actual use of the trademark.

During a court case, the parties will also consider the following factors:

  • Intent
  • Actual confusion
  • Consumer sophistication

Reasons to Avoid Keyword Advertising Trademark Infringement

Take legal action if you believe your trademark has been infringed upon by someone else who purchased keywords. You have the right to sue for trademark infringement in federal court as a trademark holder. Be cautious, however, as there is not always enough evidence to validate infringement claims.

Keywords are used every day by consumers to find products and services. It is difficult to prove that the use of a keyword is an infringement of a trademark. It may be impossible for you to prove that the use of the keyword by a third party caused confusion, even if the keyword is contained within your mark.

Many companies do not contest trademark infringement lawsuits involving keyword advertising because they are difficult to win.

If you own a trademark or trademarks, you may wonder how to protect them from infringement. Monitoring keyword usage by searching for them yourself is the best way to do this. You should file a complaint if you find that someone else is using keywords in an advertising campaign that causes confusion.

If filing a complaint against Google, Yahoo, Bing, or another search engine company doesn’t resolve the issue, you can also directly contact the company that is using your trademark as a keyword.

Is it Ever Possible to Use Trademarked Material in Keywords?

In general, purchasing trademarked material for keyword purposes is not illegal. It can, however, result in legal repercussions. This is mainly because of the potential for abuses like false advertising and trademark infringement. There is a thin line between acceptable practices and legal violations, and since keywords are such a new phenomenon, the rules regarding their usage can be somewhat murky.

Typing in the word “Nike” may take you to an ad or a website owned by a company named “Nikey .”In most cases, this is legal. If the Nikey website claims “Nike licenses our products,” but they really aren’t, that’s undoubtedly a trademark violation.

What About the Use of Trademarks in Meta-Tags?

Meta-tags and other “meta-data” can also be a legal hazard when trademarks are used. Metatags are embedded in the HTML code for web pages. As with keywords, metatags can affect a search engine’s ability to locate a website when an internet searcher is browsing the web.

In some cases, web designers embed trademarked words or phrases in the website’s meta tags. Since the meta tags do not appear directly on the visible website itself, they can be difficult to detect. They operate “behind the scenes” of the webpage.

What Can Be Done to Avoid Keyword Use Trademark Infringement?

It is sometimes possible to avoid liability if the website operator properly indexes their data and places a disclaimer on their site.

Almost all major companies and businesses hire web specialists who search the internet for keyword and meta-tag abuses. Right now, it’s best to completely avoid any ambiguous or confusing uses of trademarked material on a website.

If the trademark infringement lawsuit is successful, the infringing company may have to pay monetary damages to the trademark holder, as well as cease being infringing.

What Should I Do if I Have Issues With Keyword Use and Trademark Infringement?

As with most issues pertaining to the Internet, the laws governing keyword use and trademark infringement can be very complicated and technical. You should avoid certain practices if you are uncertain about their legality. You may wish to contact a trademark lawyer if you have any issues involving trademarks and keywords. An attorney can help you if you need to file an infringement lawsuit.


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