What You Need to Know Now about Protecting Your Company’s Trademark on the Internet

By Jared R. Clark, a Patent and Trademark attorney at Cutler & Donahoe, LLP

Internet marketing, specifically, search engine marketing, is growing at a rapid pace.  Growing with it is the potential for trademark infringement.  I chose the word “potential” because poaching, or the use of a brand owner’s trademark in search engine marketing, is currently legal in the U.S., occurring with great frequency.

The world’s largest search engine marketer is Google, whose AdWords serve as their most significant revenue stream.  In the AdWords program, users bid for the right to display an advertisement when certain words are entered into the Google search box.  The higher the bid, the higher the chance that a user’s ad will show up.  The dilemma lies in Google’s policy that allows anyone to bid on any search term, including trademarked terms.  A competitor to a brand owner can show their ad whenever the brand owner’s trademark is searched by having a high enough AdWords’ bid. 

An example is if a search engine user enters the search term “Company A,” (a trademarked name) into the search box, clicks “search,” and is confronted with an advertisement for Company B in their search results.  That is trademark poaching, and it only gets worse as a brand becomes more successful.  To make matters worse, trademark poaching makes it more expensive for brand owners to bid on their own trademark so their ads will appear in search results, where they belong.

Because of this policy, the Google AdWords program is controversial as brand owners object to the sale of their trademarks to third parties.

American courts have heard cases on this topic, but have predominantly found that using a competitor’s trademark in search engine marketing does not constitute trademark infringement. 

And it doesn’t violate any other intellectual property laws.

Some foreign countries have taken a different view: Australia; Brazil; and China, among other, all have stricter trademark laws that prevent this kind of abuse.

Hidden trademark use (incognito poaching)                      

Meta tags are hidden words placed within a website, used by search engines in ranking those websites in search results.  Often, Meta tags are used to draw competitor’s websites into search results when a brand owners search terms are used.  When a search engine user enters the brand owner’s name in the search box and clicks “search”, the competitor’s website appears in the search results, causing potential confusion to the search engine user.

How you can stop the poachers

To stop the poaching, you might have to become your own private investigator. 

• Google your company’s name and brand names once a week.
• Subscribe to an RSS feed with your company’s name and brand names.  You’ll be notified if these names are used on the internet. 
• If you see an infraction, consult a trademark attorney about writing the offending company a cease and desist regarding your trademark
• Consult with a trademark attorney to go over your other options.

If you have any questions or concerns about trademarks or your competitor’s use of your trademark, consult with a qualified trademark attorney.