Buying search engine ads for word marks is enough to constitute infringement – Trademark

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In the recent case of Bart et al vs. Slocumb (2-21-cv-01771, Eastern District Louisiana, May 26, 2022), a plaintiff survived a defendant’s motion to dismiss in which the plaintiff alleged that the defendant purchased advertising space from a motor search under brand keywords to advertise goods that did not contain one of the plaintiff’s marks. The court held that the plaintiff had sufficiently alleged trademark infringement by illustrating the initial conflict of interest, even if the resulting publicity did not infringe.

The court held that the infringement was not the mere purchase of the keywords, but the advertising resulting from the use of the marks. He said this behavior was “deliberately and intentionally deceptive and misleading” because a consumer using Plaintiff’s word mark to search for its goods will receive results that display Defendant’s goods. In other words, it is the initial confusion that results from a consumer’s search for marks intended to specifically identify the plaintiff in commerce that constitutes infringement. The court cited the Fifth Circuit decision in Adler: whether advertising incorporating a brand visible to the consumer is a relevant but not decisive factor in determining likelihood of confusion in search engine advertising cases (Adler v. McNeil Consultants LLC10 F4e 422, 430, 5th District 2021).

The law in this area is not established. The Ninth Circuit notes that use of a search engine keyword that triggers the display of a competitor’s advertisement constitutes “use in commerce” and determines infringement by an assessment of the
Selekcraft The factors (Network Automation Inc v Advanced System Concepts Inc, 638 F3d 1137, 1148, 9th circuit 2011). It is within this framework that a defendant can generally use such factors to show that there is no confusion, in particular because the consumer’s degree of default attention has increased as The internet is becoming less new and online commerce is becoming mainstream. The Second, Third, Fifth, Sixth, Seventh, Ninth, Tenth, and Federal Circuits recognize infringement based on confusing original interests, while the First, Fourth, and Eleventh Circuits do not. Additionally, most courts have held that search engine companies are not liable for trademark infringement, even when they knowingly sell trademarks as keywords to competitors.

Keywords and search engine optimization are typically used to improve brand visibility by allowing businesses to establish a presence in the search results page of a relevant term. Based on this court’s decision and inconsistencies across jurisdictions, there is at least some authority that keyword buying may constitute trademark infringement, depending on the circumstances. Marketing teams and legal professionals at major brands should keep this in mind when developing strategies to increase brand recognition and when monitoring third-party usage for enforcement. . Along the same lines, the most risk-averse marketing teams and trademark law professionals should continue to buy and use relevant keywords in search engine optimization as it increases traffic. Web, but try to keep keywords generic whenever possible.

This article originally appeared in World Trademark Review Weekly on June 16, 2022 and is reprinted with permission.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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