by Traverse Legal, reviewed by Enrico Schaefer - May 5, 2008 - n. Keyword Advertising Trademark Infringement
In what we believe is one of the first cases of its kind, the U.S. Court has not only found that the use of trademarks in a Google Adword advertising campaign (and other advertising systems), but also required the Defendant to utilize the “negative keyword” system built into Google, as well as “excluded words” in the Yahoo! equivalent. The issue of whether use of third party trademarks as keywords in online advertising campaigns has been an issue U.S. Courts have struggled with over the last few years. Some decisions have concluded that the use of trademarks in keywords is appropriate, in that it allows consumers to find alternative goods and services. Other courts have held that use of trademarks in Google Adword campaigns, for instance, constitute trademark infringement. These are typically fact specific disputes with varying outcomes.
ORF offered some similar services to Orion, mostly related to housing finance. It was ordered by the US District Court for the Middle District of Florida from to refrain "from any and all use of the term Orion, Orion Residential Finance, or any other confusingly similar term".
http://www.theregister.co.uk/2008/05/05/negative_keywords_ruling/
The judge in the case went further, though, restraining ORF from "purchasing or using any form of advertising including keywords or ‘adwords’ in internet advertising containing any mark incorporating Plaintiff’s Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term ‘Orion’ as negative keywords or negative adwords in any internet advertising purchased or used".
Keyword advertising is the display of adverts on search results pages which are triggered by the use of a certain term in the search itself.
By ‘negative adword’, the judge is referring to the fact that keyword advertising systems allow someone to instruct the system never to display their advert when a certain term is searched for, as well as to pay to have their ad displayed when a certain term is searched for. Google, which runs the market-leading AdWords system, calls them ‘Negative Keywords’. In Yahoo!’s equivalent system, advertisers can list terms as ‘Excluded Words’.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
