Introduction

Historically, trademark law has been driven by a desire to protect consumers from confusion when encountering goods and services and to protect mark owners from losing product goodwill through another’s use of a similar mark.  The advent of the Internet and more specifically Search Engines has created further nuances in the realm of trademark law.  Yet foundationally, the traditional requirements for alleging trademark infringement, and subsequently defending such conduct remains the same.

To prevail in a claim of trademark infringement, the owner of the mark must establish (1) ownership of a valid mark that has been (2) used in commerce, (3) without the consent of the owner, in such a way as to (4) create a likelihood of consumer confusion (5) in connection with the sale of goods or services bearing the mark.  In response, the alleged infringer may assert various fair use defenses to rebut liability.  In the context of claims surrounding Search Engines,  the critical legal issues surround establishing viable  ‘use in commerce’ and ‘likelihood of confusion’ attributable to the Search Engine entity. 

Additionally or alternatively, the owner of a valid trademark may assert infringement claims based upon the Federal Dilution Statute.

Potential Infringement Actions

Keyword Advertising

Keyword Advertising is a search engine marketing tool that enables web site advertisers to purchase “keywords” from a search engine.  When a search engine user enters this “keyword” into a query, and advertisement for the web site is displayed with the results. 

Advertisers are allowed to bid on the keyword, and the subsequent placement of the ad, depending on the search engine, is a factor of the amount of that bid and the relevancy of the ad to the search.  Keyword matching options are different methods of targeting ads to users that help advertisers reach the most appropriate users for the best cost.

Keyword advertising result in significant revenue for search engines, which get paid every time a user clicks on the advertisement.  Google states that 90% of its revenue comes from keyword advertising.  As a result, search engines are hesitant to limit the range of keywords advertisers can bid on.  For example, Google allows advertisers to bid on keywords that are part of another company’s trademark, but if Google receives a complaint from a trademark owner, it will then investigate whether there is a trademark infringement.  Follow the links to read more about Google and Yahoo! keyword advertising policies.  Click here to see a Google presentation about the benefits of keyword advertising.

Due to the broad flexibility for keyword advertising, search engines and advertisers face the possibility of being accused of trademark infringements.  Trademark owners have alleged that the use of their trademarks as keywords by competitors constitutes trademark infringement under the Lanham Act or dilution under the Federal Dilution Act.  Trademark owners do not like to see competitor's advertisements appear when a user makes a query with a trademarked keyword.

Meta Tags

A meta tag is a hidden part of a web site’s HTML code that provides information about the site’s content, and help search engines determine the relevancy of web pages to the user’s search query.  There are three types of meta tags:

• Descriptive- A descriptive meta tag is designed to provide a brief summary of the content of the site
  
  
• Keyword- A keyword meta tag is used by search engines to help determine whether the site is relevant to the search terms from the queries. These meta tags allow the web site developer to include information about the site that does not necessarily appear on the page's content.
  
  
• Robot- A robot meta tag indicates to robots that are crawling sites whether the web page should be indexed and whether links on that page should be followed. 
  

Meta tags do not provide as many benefits as they once did.  In the past search engine technology use to scan the meta tags to establish relevance and index the information they found from the meta tags.  Now search engines, such as Google, use updated technology that scans the entire contents of the site instead of just the meta tags, and ranks relevance based on other criteria.  Thus, if a web site developer wants to increase their sites rankings, it is better to concentrate on content rather than metatags. Nevertheless, there are still search engines that use the more traditional approach of spidering meta tags.

Policy Considerations

Many trademark owners are hoping that search engines will discontinue the ability of advertisers to buy trademark keywords and respect their intellectual property rights. Opponents argue that this will be over-inclusive as trademarks are meant to designate origin and to distinguish goods and services but not as an absolute property right. Further search engines are hesitant to limit the amount of information available to users; after all users turn to search engines to get answers to their questions.

Query

How would you design the keyword advertising policy of your search engine company?

Who is infringing the trademark?

-The Search Engine for allowing advertisers to buy trademarks? OR

-The adverstisers for using the trademark?