Searching for Trademark Protection

The explosion of search marketing, like the rise of the business Internet itself, is transforming everything it touches. So it’s no surprise that search is having a major effect on trademark law. What changes does your company need to be aware of? And what can you do to protect your intellectual property assets?

The Internet reinvents intellectual property. In many ways, the Internet seems almost designed to facilitate trademark infringement. Both text and graphical elements are easy to copy and repurpose. Identity is easy to conceal. Theft can occur quietly, and both evidence and culprits can disappear with little trace. In addition, the ease of forming partnerships practically ensures that trademarks will appear in contexts beyond those originally planned for.

Trademark infringement has been an issue since the Web’s earliest days. Industrious would-be entrepreneurs cybersquatted on corporate domain names, hoping for lucrative payouts that usually never came (intellectual property laws were interpreted and in some cases rewritten to protect rightful trademark owners).

Trademark law and affiliate programs. Trademark law in its basic form is designed not to protect the rights of the owner of the mark, but to prevent confusion for the reasonable consumer. This means that a company’s rights in a mark are really a responsibility to consumers of the product to ensure its goods are not confused with those of someone else.

When a company goes through the process of building a trademark management policy, it is important not to inadvertently cause confusion in the marketplace. A company must ensure that it controls the image of the product being presented to potential consumers. It also is important to ensure that any affiliate or partner you work with has a full understanding of your trademarks and the rules governing them.

Failure to inform affiliates of such restrictions can cause particular harm to a company’s trademark because it can lead to violations of the guidelines governing the use of the mark.

Affiliate marketers are heavy users of search engine marketing, yet few affiliate programs have a method in place to manage trademark rights for their customers. As a result, affiliates and trademark owners constantly compete for ad placement on trademarked terms.

The evolution of this model has created a continually increasing cost per acquisition for both the affiliate and the holder of the mark. Though on the surface it would make sense for the search engines themselves to solve such an issue, it is important to understand that as the bid costs rise for the terms, so does the search engine’s revenue. This is the same reason the engines have been slow to adopt regulations to protect a company’s trademark rights.

New motivation for IP theft. In today’s hot search marketing climate, some companies have resorted to questionable business practices to boost search engine rankings; for example, using competitors’ trademarks to elevate their own results. Companies must know what competitors are doing — and even what their own overzealous search marketing employees and consultants might be cooking up — regarding trademark infringement and its legal ramifications.

Couldn’t search engines help avoid the confusion by refusing to let companies bid on trademarks they themselves don’t own? They could – if they were content to give up the revenue they make on these keywords, which are often hotly contested and thus high priced. And cracking down on pay-per-click keywords still would leave open the question of using competitors’ trademarks to influence natural (organic) search results.

This issue — the responsibility of the search engines themselves — may be resolved in the courts soon, as a retailer recently filed a trademark infringement lawsuit not against its competitor but against Google, accusing it of facilitating the practice. You might think a lawsuit would result in Google becoming more conservative in this area, yet the opposite occurred: Google recently announced it would allow anyone to bid on trademarked words, with no restrictions.

Its legal strategy is to wash its hands of any responsibility for policing trademarks (much as community forum sponsors, for example, take no responsibility for reviewing or editing user postings, thus relieving themselves of liability for libelous language).

What you should do. If yours is a large company, policing all your trademarks in all their online search contexts could be an overwhelming burden requiring near-infinite resources. However, there are concrete steps any organization needs to take to proactively defend its trademarks.

o Implement a complete organic SEO campaign on your site to protect the free organic space and compete with the costly paid listings.

o Create a cease-and-desist policy to enforce your rights when a violation of your trademark occurs.

o Put a strong statement of your trademark protection policy on your Web site and provide a place for people who have been led astray by a violator to report the violation.

o When creating an affiliate agreement, include a keyword do not purchase list covering trademarks.

As the world of search develops with new products such as local search, it becomes increasingly important to ensure trademark policies are firmly in place. The issues discussed here can be dealt with through proper upfront planning and a clear definition of how best to protect individual trademark rights.

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