Google has asked a U.S. District Court judge to rule whether its keyword advertising system infringe on trademarks, according to a complaint made public Friday.
The Mountain View, CA, search company asked the court for a judgment that selling keyword-based advertising through its AdWords program does not constitute trademark infringement. The request, filed Nov. 26 in the U.S. District Court in San Jose, CA, would head off a lawsuit threatened by American Blind & Wallpaper Factory Inc. for violating its trademarks by selling paid listings tied to its trademarked terms.
The case could clear up the extent to which companies can protect their trademarks when it comes to search advertising, which is bought by bidding on a specific search term. Google holds its advertisers responsible for obeying trademark law, while also giving companies the opportunity to object to misuse of their trademarks. Google removes AdWords links found in violating trademarks. This summer, eBay successfully petitioned Google to remove links that it claimed violated its trademarks.
“Both Google and [paid listings rival] Overture have been very responsive to these sort of demands,” said Fredrick Marckini, chief executive of search marketing firm iProspect. “They're going to have to shift to a proactive stance.”
In the court filing, Google included a letter dated July 23, 2002, from American Blind's attorney, Susan Greenspon, requesting Google remove ads triggered by 37 terms, including terms like “American blind.” Currently, a search on the term returns a paid listing from American Blind's Web site, along with listings for competitors and comparison services.
Google said it contacted American Blind and offered to remove some terms on specific trademarks, like “DecorateToday,” but would not remove generic terms like “American blind.”
“While Google has agreed to prevent other entities from using American Blind's registered marks themselves as keywords, Google believes and maintains that descriptive terms (including terms such as 'blind,' 'wallpaper,' and 'factory,' which are component parts of American Blind's trademark) are not entitled to any such treatment,” the complaint argued.
The trademark issue is particularly confused because of Google's “broad match” option, which expands keyword listings to show paid listings on related terms. With broad matching, an advertiser bidding on a generic term like “blind” would show up in a search for “American blind” since the word is in the query, Google said in the complaint.
Under an expanded broad match option rolled out in October, advertisers' listings can appear on similar keywords. For example, a bidder on “shades” might also appear on a search for “blinds,” according to Google's online AdWords suggestion tool.
Despite its policy to remove ads tied to trademarks, Google has faced a number challenges to its policy. In October, Louis Vuitton sued Google and its French subsidiary in a French court for selling ads using keywords on its trademarks. Google does not currently display ads to searches for “Louis Vuitton” on its U.S. site. In another case, a French court ordered Google to stop selling keywords containing the trademarks of two French travel companies.