Introduction
A recent Dorsey Intellectual Property Update touched on what constitutes a "use" of a mark in commerce in the context of a trademark application. Use of a mark in commerce has also long been a relevant issue in trademark infringement litigation. Most recently, Internet uses of trademarks, and in particular, uses in association with advertising through the Internet, have placed new strains on the traditional interpretation of trademark use sufficient to support a cause of action for trademark infringement. Due to the widespread use and availability of the Internet, advertising activity, and therefore use of trademarks on the Internet, affects nearly everyone who owns or uses a computer.

This article will discuss a recent trend in the interpretation of trademark "use" on the Internet the use of trademarks as keywords that trigger advertisements.

Trademark Use
A trademark is a symbol identifying the source of goods or services in commerce. Therefore, in order for the owner of a trademark to establish infringement, unfair competition, or dilution in trademark litigation, it must establish that the use of the mark constitutes a "use in commerce." Use of a trademark in commerce occurs by the bona fide use of a mark in the ordinary course of trade. Physically, the mark may be placed on goods, their containers, displays, tags or labels, or on documents associated with the goods or their sale. Alternatively, the mark may be used or displayed in the sale or advertising of services. In either case, the goods or services must be rendered in commerce.

The most common Internet "use" of a trademark in commerce is the use of a mark displayed directly on a web page and/or as a domain name. Less noticeable, but equally important to trademark holders, is the use of a trademark as a keyword to trigger an Internet advertisement. Due to the "hidden" nature of a keyword use, these activities are more difficult to detect. Moreover, while trademark law provides relatively clear guidelines for stopping the unauthorized use of a trademark on a web page or a domain name, preventing the use of a trademark as a keyword to trigger advertising is more problematic for trademark holders. Most significantly, the use of a trademark as a keyword does not fall within the traditional definition of a use in commerce.

How it Works
To illustrate keyword advertising, consider the following example. An Internet user is seeking Dorsey & Whitney LLP on the Internet. This user knows the name "Dorsey" is associated with legal services, and based upon this knowledge types Dorsey into a search engine of an Internet browser (e.g., Yahoo!, MSN, Google). In response, the search engine displays a listing of search results, including "www.dorsey.com" and other websites or web pages containing the term "Dorsey." In addition, the search results display at the top, the bottom, and/or on the right side of the screen a number of additional "Sponsored Links." These sponsored links are generated as a result of the use of the keyword "Dorsey" by competitive and non-competitive entities that have paid to have their advertisement displayed when an Internet search is performed for "Dorsey."

Generally, search engines work by comparing the search terms (such as the term "Dorsey") entered by the Internet user into a search engine with databases of websites maintained by the search engine. The search engine generates a results page that lists various websites matching the search term. Entities sell advertising linked to search terms, so that when an internet user enters a particular search term, the results page displays not only a list of websites generated by the search engine using neutral and objective criteria, but also provides links to websites of paid advertisers, often displayed as "Sponsored Links."

Internet users see sponsored results only when they are relevant to the specific search terms used. Further, sponsored results are separated from the other results on the page. In particular, sponsored results generally appear at the top, bottom and right hand side of the results  page, and include some format variations or heading setting them apart from the generic search results. Thus, users who type in a phrase corresponding to a keyword receive a results page that includes both neutral results and paid search results from competitors who pay for their ads to reach potential customers. These programs have been highly successful for advertisers, as well as the entities that offer such services.

A problem arises, however, when the rights to use search terms keyed to trademarks are sold to competitors. While the trademark, in some instances, may not be displayed with the competitors advertisement, the competitor uses the goodwill associated with, and public awareness of, the trademark used in the search to trigger a link to its own website which offers the competitors goods and services.

How to Proceed
Keyword advertisers have taken the position that their use of the trademarks is either a fair use, or does not constitute a use in commerce required to establish a claim for trademark litigation. While it is possible to challenge this position and these keyword advertisements, the state of the law is currently in flux. United States courts have varied on their interpretation of the use of trademarks as keywords. For example, district courts in some areas of the country have held that it is not trademark infringement to sell and then use a competitors trademark to trigger an advertisement. On the other hand, a district court in New York has ruled that such actions do constitute infringement. Most recently, a Federal District Court in Virginia ruled that a sponsored link which included a trademark within the text of the link or advertisement was likely to cause confusion as to the source, sponsorship or affiliation of the site and therefore violated trademark law, while the evidence did not support a finding of infringement when the sponsored link did not include the trademark in the text of the advertisement. Government Employment Insurance Co. (GEICO) v. Google Inc., Case No. 04CV-507 (E.D. Va. Dec. 15, 2004). Moreover, no substantive appellate court decision is available for guidance, and it may be some time before such guidance is available.

These advertising models have also been challenged in Europe with varying success. Preliminary rulings have occurred in both France and Germany regarding Google’s advertising program. A preliminary assessment of such cases reveals that courts in France are more receptive to lawsuits brought by trademark owners for keyword usage than in Germany. For instance, in France, Google has been subject to fines and costs at different stages of litigation. Conversely, Metaspinner Media sued Google in May 2004 in Germany, accusing it of selling ads triggered when users searched for the company's trademarked software. The court dismissed the lawsuit. Similarly, in a case brought in 2003, a Munich Court ruled that Google was not liable for the advertiser's infringement of trademarks through Google’s ad system. The court indicated that advertisers should bear the responsibility for respecting trademarks when making their keyword choices.

While the law is currently uncertain, trademark owners do have options available to them. For example, entities such as Google, Inc. and Overture Services, Inc., have complaint procedures to allow trademark holders to address keyword concerns, in certain circumstances, without resorting to litigation. However, these entities vary on their treatment of keyword advertising. Likewise, treatment of keyword advertising and complaints by trademark holders may vary from country to country. Similarly, protest letters can be sent to search engines, advertisers, and competitors to state your objections and reserve your right to take action in the future to protect your intellectual property rights. Of course, in some instances, it may be appropriate to pursue litigation.

Alternative, proactive measures are also available. For instance, you may purchase your own trademarks as keywords to use them or prevent others from doing the same. Lobbying efforts to establish legislation against spyware and adware are also an option.

If you discover that entities are using your trademarks as keywords, or would like to find out, or you are not sure that a trademark is in use or triggering such advertisements, please contact your Dorsey trademark attorney to discuss these issues.

For further information regarding our intellectual property law practice, please contact any group leader.

Trademark, Copyright and Brand Management
Elizabeth Buckingham
Minneapolis
buckingham.elizabeth dorsey.com
(612) 343-2178

Patent
Lee Osman
Denver
osman.lee dorsey.com
(303) 629-3434

IP Litigation Group
Peter Lancaster
Minneapolis
lancaster.peter dorsey.com
(612) 340-7811

Tucker Trautman
Denver
trautman.tucker dorsey.com
(303) 629-3409

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