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See Articles by Chris Silver Smith at: http://marketingland.com/author/chris-smith

SEO & PPC In Trademark Law: The High Price Of What You Don't Know

Presented by

Chris Silver Smith

CEO, Argent Media

ArgentMedia.com

argentum@verizon.net

Twitter: @si1very

http://marketingland.com/author/chris-smith

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Ø Argent Media Founder - search marketing agency providing SEO, Online Reputation Management, and Social Media.

Ø Columnist at Search Engine Land & Marketing LandØ Expert Witness in:

Chris Silver Smith:

§ Pension Funds v. Former Executives of R.H. Donnelley Corporation§ Daniel Hegglin v. Google, Inc.§ PODS Enterprises, Inc. v. U-Haul International, Inc.§ Academy of Motion Picture Arts & Sciences (The Academy Awards) v.

Godaddy.com, Inc.§ Jay M. Pensler, M.D. v. Fox Television Stations, Inc.

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There are a few recurring themes where trademark law and internet content are concerned. General trademark guidelines generally mirror offline usage practices, except where dynamic content and navigation to content go beyond the well-established go-bys. A few areas of online use continue to introduce disruption and court precedents are still emerging.

Historically, damage awards in trademark cases have been relatively low where online infringement has been found by courts – limited primarily to injunctive relief, but relatively recent litigation has increased the sizes of awards through the concept of “corrective advertising”, making the risks where infringement is concerned much greater.

Trademark Law & Internet Marketing – Historical View

$ $ $ $ $ $ $

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x One may not pretend to be a company/brand that one is not;

Obvious Trademark Practices Apply On The Web

x One may not closely imitate brand names’ trademark dress – if your web design (color + fonts + layout + logo design) is too imitative of a competitor, or if your products or sales language is too similar, you could be infringing.

x Using a competitor’s trademark on your webpage in order to sell your things could be an infringement.

☑ Limited “fair use” is allowed. Ex: using a brand name to provide a comparison with your brand’s products/services.

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<title>U-Haul: U-Box pods for moving and storage.</title>The concept of “Corrective Advertising” was introduced as a means of making up for the missimpressions.

Missimpressions of the PODS trademark occurred in search engine results pages for popular PODS-related searches as well as on the thousands of pages on the U-Haul website.

PODS wins $62 million award in trademark infringement lawsuit against U-Haul

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PODS Enterprises, Inc. v. U-Haul International, Inc.

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Example – Fair Use of Competitor’s Mark

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• SEO: If pages may be deemed “relevant” for a keyword query, including trademarked words/phrases, then there are incentives to optimize sites for those terms.

Trademark Law + Internet Marketing – Areas of Frequent Conflict:

• PPC: If one’s products might be of interest to searchers, then paying to have one’s ads appear in context with trademark keyword search results is highly valuable.

• Search/Display/UI: Within ecommerce websites, programming for relevancy helps users find related/similar content, increasing sales. Faceted navigation often includes trademarked brandnames as well as generic search terms for products.

• Domain Names: Use of a similar brand name or derivation to that of a competitors’ brand can seem attractive for targeting the customer audience.

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• Hiding keywords in Meta Tags has long been contraindicated. Courts often interpret this as a sneaky means of enabling your webpages to appear for a competitor’s trademark.

• Hiding keywords in image ALT text is likewise contraindicated.

• Performing link building with competitors’ trademarks in the anchor text of links pointing to your website might also be deemed improper.

• Cloaking to show search engines your competitors’ keywords while showing human users something different is improper. (Also, highly risky as an SEO practice that can get you penalized.)

Trademark Law & SEO

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It has been established by practice for some time that one may target ads to competitors’ trademark names, but not display the name in ads. (Google allows this.)

Trademark Law – Paid Search

* Even though targeting competitors’ names in search is allowed, there could still be risks of infringement. Context could play into this, making it to be deemed less-than-ok. Could there be confusion? Are other aspects of the ad misleadingly similar to the competitor? Does the landing page convey the company involved, or is this downplayed or nonobvious?

Cartier

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Google and Bing perform some automated detection to determine if a trademarked term (for the same industry) is used in the ad copy, and will disallow the ad if this is found. This can be highly irritating in instances where seemingly-generic descriptions get disallowed. (There can be workarounds, however.) * Be careful of using ad copy that is too imitative of competitors’ ads and collateral – language and style can sometimes be part of your competitor’s “trade dress” that conveys their unique branding.

Trademark Law & PPC

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Technology marketers and developers imagine that if it is alright within a Google search for a competitor’s brand name for them to advertise their own competing products/services, then it may be fine to program their own site’s search engine to display various products from different providers when the same branded search is conducted.

Trademark Law & Search Functionality

Ecommerce sites often produce pages on static URLs related to popular search terms. This functionality often increases sensitivity to the possibility of trademark infringement!

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Multi Time Machine contended that there was “initial interest confusion” on Amazon, because when consumers search there for products such as “mtm special ops”, only competitors’ products are returned, and the searcher is not informed that Amazon does not carry MTM products.

Multi Time Machine, Inc. v. Amazon CaseJuly 2015: Ninth Circuit Court initially found in favor of Multi Time Machine that there was a likelihood of confusion.

October 2015: They reversed their decision upon rehearing, and found in favor of Amazon, based on:

Multi Time Machine, Inc. v. Amazon Case

• A relevant, reasonable consumer would know something about MTM watches prior to searching for them;

• Someone searching for MTM Special Ops watches would likely know they cost several hundred dollars, unlike the results on Amazon;

• Products that were displayed on the results page were clearly labeled, included photos, and thus the search results would not be confusing.

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Bodum USA, Inc. v. Williams-Sonoma, Inc.

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https://williams-sonoma.com/search/results.html?words=french+press+bodum

Branded-Keyword Relevant Search Results – Infringement?

• Remove pages associated with discontinued items/brands.

Avoid Legal Risk With Your SEO Program:

• Tread carefully with brand pages and faceted navigation.

• Periodically review your brands lists.

• When using brand keywords where you do not carry the brand, check with your legal department.

• Clearly label if you do not carry a brand product.

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Legal Use In One Area Might Increase Exposure If There Is Infringement In Another Area…

If discontinuing a brand/product, update your PPC advertising program!

• Remove ads for discontinued products – reduce appearance of sneaky-looking redirects.

• Remove brand keyword targeting for discontinued brands/products.

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Examples from Academy of Motion Pictures v. GoDaddy:

Presence of a Trademark in a Domain Name = Infringement

• OSCARSHOTELS.COM

• OSCARSDRESSREGISTRY.COM

• DOGACADEMYAWARD.COM

• ACADEMY-AWARDS.ORG

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Film Academy Loses to GoDaddy in Oscars Cybersquatting Battle

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How to Police for Infringing Domain Names

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Argent Mediahttp://argentmedia.com

Chris Silver Smith

Search Engines are complex. Get qualified help.

argentum@verizon.netTwitter: @si1very

@argentmedia