Protecting your Trademarks in Paid Search

Protecting your trademarks in the paid search channel is critical to maximizing the value of your brand. Here is a complete guide, with links, submitting trademark paperwork to the major engines plus strategies for dealing with affiliates and trademark bidding.

Topics Covered in This Article:

• Why Protect Trademarks?

• Search Engine Policies on Trademarks

• What about Affiliates and My Trademarks?

• What to Do Next

Why Should I Protect My Trademark?

Your trademarked names or brand names are the most valuable keywords in your paid search arsenal. As you build your business, gain customers, send out press releases, buy media and acquire traffic – more and more people will enter your brand name or URL into search engines to find you. These terms almost always convert the best regardless of what your conversion metric is.

Because of this, your trademark can be under attack by competitors, uncontrolled affiliates and companies illegally using our products (more on this later). It is imperative that you understand your options, recognize the threats and have a course of action to protect your brand.

Search Engine Policies on Trademarks

From the search engine company standpoint, refereeing the use of trademarks is a difficult and thankless task. Everyone who has a trademark thinks that they are special, lawyers get involved and search engine employees spend hours working through the issues protecting the rights of their advertising clients from illegitimate and illegal use of the trademark.

Additional considerations from the engines include whether the trademark violation is in the organic or sponsored area. If someone is improperly using your trademark and they show up in the organic area of the search engine results page (SERP) then you are out of luck from any recourse from the search engine companies. If it shows up in the sponsored (paid) area of the SERP then you have some recourse.

There are also specific procedures for whether your trademark is secured in the US, Canada, North America or Other. Most engines have a different process for Trademarks in different countries making both the problem and the solution more complex.

Ideally for the Search Engines, they would remain neutral in the use of trademarks and simply collect the money when people buy a trademark and use a trademark. However, in order to appease advertisers (aka trademark holders), the different engines have implemented different levels of trademark protection.

Google Trademark Policy:

Google is the most lazes-faire of the engines with regards to trademarks. It used to be permissible to buy and use other people’s trademarks in the sponsored link area. Today’s rules help in terms of

protecting the trademark holder, but don’t go as far as the other major search engines. Here are some of the rules:

-With the submission of the proper trademark paperwork (see link below), Google will block non-trademark owners from using the trademark in the copy of the advertisement.

-A non-trademark owner can BUY the trademarked keyword, but the editorial filtering will restrict the use of the trademark in the copy

– EXCEPT for the display URL.

-I personally find this last bit concerning as testing has proven that the display URL is an important part of the copy. I haven’t gotten a good answer on why the display URLis not included in the trademark protection. More specific information and the complaint form is available at: http://www.google.com/tm_complaint_adwords.html

Yahoo! Search Trademark Policy

Yahoo! has taken a stronger stand on trademark protection than Google which has also evolved over the years. You used to be able to buy competitor terms as long as you sent the traffic to a comparison page of products or services. That allowance has been eliminated if you are a competing site. Here is what they do allow:

-If you are a retailer and are legitimately selling the trademarked good or service – you can buy the trademark keyword and use in your copy.

-If you are a non-competitive site that is providing comparison content, you are allowed to buy and use the trademarked item.

In addition to trademark protection, Yahoo! offers an additional level of complaints based on Copyrights Infringement and alse/Misleading Claims. We’ve had some success going after sites that are illegally using free software to acquire credit card numbers and email addresses using these complaints as the foundation. More specific information available here: http://searchmarketing.yahoo.com/legal/trademarks.php

MSN Trademark Protection Policy

The MSN policy is very similar to the Yahoo! policy. No buying of someone’s trademark unless it is one of the following situations:

-You are a retailer

-You have a legitimate information site

-You are clearly using the trademark in an ordinary dictionary manner (Kleenex for example)

Both Yahoo! and MSN are more lenient towards advertisers with trademarks and don’t require as rigorous paper trail as does Google.Here is the MSN policy link:http://advertising.microsoft.com/Home/Article.aspx?pageid=708&Adv_Articleid=3216

What Do I Do About My Affiliates?

The decision to allow or not allow affiliates to buy your trademarked keywords in paid search is a difficult one. Here are the pro’s and con’s to allowing this:

Pro’s for letting affiliates buy trademarked/branded keywords:

-Increases the number of slots taken up by your brand on the brand search thus freezing out competitors (particularly important in Google because competitors can still buy the keyword without using it in their copy)

-If structured properly, these high value keywords can be used as a carrot to expand the non-branded keyword programs your affiliates are using to drive traffic/sales to your site

-If, for some reason, your SEO efforts aren’t effective for your keywords then you have more options for end users to click on a placement that leads to your site.

Con’s for letting affiliates buy trademarked/branded keywords:

-Affiliates care only about making money and will do, say just about anything to reduce costs and improve conversion – regardless of the reflection on your brand.

-Competitive affiliate bidding on branded keywords drives up the CPC of your branded terms increasing the cost per action of that keyword category.

-Branded keywords are “easy money” for affiliates and unless managed appropriately will only spend energy on these terms vs.expanding your overall program.There are three options for working with affiliates with regards to branded keywords:

-Do not pay for any sales, service or leads generated from your branded keyword list. The trend in the industry is to move more towards this position in order to reduce costs and have more control over the brand messaging.

-Give affiliates unfettered permission to use branded keywords in their paid search programs. This will result in the most sales and the happiest affiliates, but at higher costs and risks to the brand.

-Establish a set of messaging and bid-cap rules for affiliates with regard to using branded keywords including:

1.The maximum cost per click they are allowed to bid in the engines. This is a hard rule to monitor as none of the major engines give you exact data on what the affiliates max bid is. However, you can closely monitor your CPC for the category and ensure that you are in the #1 position. If your CPC for the #1 position goes over the max bid cap – you have reason to “talk” to the affiliates.

2.Stipulate a % of sales, leads, etc. that can come from branded keywords. Do this by using a unique linking URL for branded keywords by affiliate. This will let you see how much traffic/business is being generated by each affiliate.

3.Have a clear list of do’s and don’ts with regards to the messaging and copy that can be used with the branded keywords. Make sure to give the affiliates lots of examples of what they CAN say in conjunction with very strict guidelines of loaded keywords, numbers,amounts, discounts, etc. that are off limits.

4.Set aside time on a regular basis to monitor the affiliates. Engage your top affiliates to help monitor the rules as well so that you have more eyes keeping the playing field level.

5.Have strict two strikes rules on your affiliates. You can give an affiliate (especially a new one) one strike with regards to these rules. Second strike should be an immediate restriction of those keywords and/or exclusion from the program. Do not waffle on this or your will get into issues of “fairness” with the broader affiliate group.

What to Do Next

1.Get the trademark documents from your (or your clients) legal department for as many countries as you have trademark rights for. These should be in a PDF form that you can submit with the paperwork to the engines.

2.Decide what you are going to do with affiliates. If you submit trademark paperwork to the engines and do not give them an exclusion list for the affiliates – you will shut out your affiliates from the branded keywords inadvertently.

3.Assemble a list of “approved” affiliates/vendors that can use your trademarks. Get URLs, official email addresses and account numbers for each engine for each approved affiliate/vendor to use your trademarks.

4.Alert your account managers for the various engines with regards to what you are doing so they can help. Many account managers can help smooth the flow of decision making to get these rules in place more quickly.

5.Visit the URLs listed above to submit trademark protection concerns. You can also see the URLs on the Brand Digital Resource page at http://www.branddigital.net/internet-marketing-resources.htm

6.Persevere. This is not an easy or smooth process for anyone. Lots of questions will arise, lots of people can get involved and there needs to be lots of communication to all parties to be effective.

7.Monitor, monitor, monitor. Just putting rules out there without a consistent vigilance to monitor is wasted energy. You have to set aside time and stay on top of your terms and who is saying what with regards to them in paid search (and online for that matter – a different article).

8.Send this email to someone you care about and want to help.

9.Send me feedback on what you liked/didn’t understand about this issue. scott@branddigital.net.

5 Things Businesses Should Know About The Enforcement Of Their Trademarks

1.  Your Trademark Does Not Need to Be Registered to Be Enforced.

As you are probably aware, a trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.

What you may not be aware of is that you do not have to own a federally registered trademark to enforce your rights in a trademark (i.e., stop someone else from infringing or knocking off your mark with a similar or identical mark).

Trademarks can be federally registered and the federal registrations are well worth the time and effort to acquire.  But trademarks also exist at what is known as common law.  In short, if you are using a trademark to identify your goods or services, even if you have never registered the same, you have acquired rights in that mark back to the date that you first used the mark selling the goods or services.

2.  You Need to Have Used Your Trademark First.

Probably the most important issue in trademark enforcement is to figure out who used their respective trademark first.  The general rule is that whoever used their mark first has what is known as Priority of Use.  The person who used it second has Inferior Use.   Accordingly, the party with the Priority of Use can enforce their mark against the party with Inferior Use (e.g., make them stop using the infringing mark).  With every rule there are exceptions.  But this general rule is a good guiding point if you are thinking about enforcing your mark.

3.  The Trademarks Need to Be Similar.

When you look at your mark and the other mark do you feel that they are very similar?  The general rule is that if the marks are similar in appearance, spelling, phonetic pronunciation, or simply present a similar overall commercial impression enforcement may be had.  So unless the marks are identical, this is generally a subjective sliding scale.

4.  The Goods and/or Services Need to be Similar or Related.

Also, to enforce your mark against another the goods and/or services need to generally be similar enough that the average consumer encountering the respective trademarks would think that they originate from the same source.  To put it another way, few would argue that if we started seeing frozen hamburger patties in our grocery store with the brand “McDonalds” on them we would think those nice people from Illinois are now making frozen food as well.  Although they have never delved into the frozen food market, there is a strong enough association between the two that the assumption would be logical.

In the alternative, let’s say you are in your local car parts store and see head gaskets with the brand name GATORADE on them.  Few of us would think that the drink manufacturer has expanded into the machine parts arena. Why? It’s just not a typical expansion you see in the marketplace.  So like the subjective rule of reason we talked about with the similarity of the marks, this is also a subjective exercise.

5.  Is Enforcement a Good Business Decision?

This is one that attorneys don’t often speak about with their clients but we like to bring up – Does enforcement of the mark make good business sense? Yes you are angry someone is knocking off your mark.  Sure it is nearly identical to yours.  But does a single mom and pop store opening in California affect your bottom line in the New York / New Jersey area where you distribute your products?

We look at it like this.  At the end of the day when you are deciding to enforce your mark you need to make a BUSINESS DECISION as to whether enforcement makes sense.  If it is going to cost you a gazillion dollars to stop a mom-n-pop store in California that is not affecting your sales whatsoever is that a good business decision?  On the flip side, if you are an Internet retailer and your competitor is stealing from you every day by using a copy of your trademark you need to act immediately.

For every situation there is a different answer.  It is a factual analysis the business owner must make.

So the answer depends upon you and your business.  There are, of course, other considerations to include such as the dilution of your mark which occurs when you do not enforce the same or setting up a defense of acquiescence (i.e., if you let people use similar marks others can later claim this as a defense that they too should now be permitted to use a similar mark to yours).

But at the end of the day we like to remind those that we advise that this is business, nothing personal.  And if it does not make business sense to enforce your mark do not.  If it does, do.  But always keep an eye on the bottom line.

What Every Trademark Owner Needs To Know About The Relationship Between Trademarks And Domain Names

We are often approached by trademark owners concerned that their competition has registered a domain name that is similar to their trademark and is using the same to divert customers away from their own businesses.  Here is what you need to know about the relationship between trademarks and domain names and what you can do to protect your trademarks from being used against you in competing domain names.

Registration of a Domain name is Not Trademark Use

As you are probably aware trademark rights generally attach to a trademark upon use of the mark in commerce.  Although there are other ways to reserve rights in a mark before it is in use, using the mark is generally a pre-requisite to securing rights therein.

Many people believe that the registration of a domain name in and of itself creates trademark rights.  Simply put, it does not.  Look at a domain name like a phone number.  It is merely an address on the world wide web where a web site may be located.  So the address by itself is just that – an address.  It is not a trademark.

Of note, this is not to say that domain name cannot become a trademark.  Amazon.com has one of the web’s most recognized trademarks.  But it is the name promoted on the pages of the web site Amazon.com which gives the owner trademark rights and not the URL amazon.com.

Cybersquatting

Although the registration of a domain name does not constitute trademark use per se, owning a valid trademark can preclude the subsequent registration of domain names that include or are similar to your trademarks.

There are two primary statutes or rules trademark holders can use to enforce their trademark rights against the subsequent registration of like domain names: (1) the Uniform Domain-Name Dispute-Resolution Policy (UDRP); and (2) the Anticybersquatting Consumer Protection Act (ACPA).

Both systems generally have the same requirements.  A complainant in a UDRP or ACPA proceeding generally must establish three elements to succeed:

1.  The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights at the time the disputed domain name is registered;

2.  The registrant does not have any rights or legitimate interests in the domain name; and

3.  The registrant registered the domain name and is using it in “bad faith.”

In regard to bad faith, considerations of whether the domain name was registered in bad faith include, but are not limited to:

a.  the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;

b.  the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;

c.  the registrant’s providing misleading false contact information when applying for registration of the domain name; and

d.  the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others.

The UDRP and Its Remedies

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP applies to all .com, .biz, .info, .name, .net, and .org top-level domains (TLDs), and some country code top-level domains.

In short, if you register a domain name with one of these TLDs, you are subject to the policy.

Under the policy a registrant consents, in advance, to binding arbitration under the UDRP concerning disputes to the ownership of the domain name.  These disputes, which are handled by various authorized private arbitration companies throughout the world, allow for the quick and efficient resolution of UDRP claims.

Of note, the only remedy under a UDRP action for the prevailing party is to have the offending domain name transferred to their ownership.  There are no money damages.

One significant benefit to the system – speed.  From start-to-finish cases can often be completed in roughly 8 weeks.  In light of the current state of our court systems that is about as fast as you are going to get.

The ACPA and Its Remedies

The ACPA was enacted by Congress and signed into law to combat the rising incidences of cybersquatting in the U.S.  Unlike the UDRP which relies upon a relatively simple administrative proceeding, an allegation under the ACPA is generally set forth in a federal district lawsuit filed in a court of competent jurisdiction.

Unlike matters under a UDRP claim, speed is not one of the hallmarks of the federal district court system.  Due to the complexities of the issues involved as well as other actors a case filed under the ACPA in federal district court can take a year or more to reach trial.

However, the remedies under the ACPA are much broader than those under the UDRP.  Should a Plaintiff be successful, in addition to transfer of the disputed name the prevailing party may also be awarded monetary damages, costs, and attorneys’ fees.

Summary

So if you (1) have existing rights in a trademark and (2) someone thereafter registers a domain name similar to that mark (3) in bad faith you may be able to have the domain name transferred to you.  If you just want the domain name pursue the matter under the UDRP.  If you want more, a claim under the ACPA will be required.

5 Things Every Business Owner Should Know About Trademarks

We are often asked what is a trademark, do I have to register it before I use it, and other rather straightforward questions about mark usage in the U.S. and abroad.  In our experience here are five (5) simple facts every business owner should know about trademarks:

1.  What is a Trademark?

A trademark includes any word, name, symbol, or device used in commerce to identify the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name such as Coca-Cola® for beverages, the Nike swoosh for shoes, and FedEx® for package delivery services.

2.  Can I Reserve a Trademark Before I Use It?

Yes. A trademark can be “reserved” with the U.S. Patent and Trademark Office by filing an Intent-to-Use Application for the trademark. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.

3.  Should a Trademark Search Be Performed to Make Sure my Trademark is Available Before I File an Application to Register the Trademark or Begin Use Thereof?

Yes, although a search is not required. Trademark Research allows you to verify that your proposed mark is not in use by another and is available for you to use.

4.  Do I Have To Register a Trademark to Use a Trademark?

No. However, federal registration has several key advantages which make it important to obtain a registration especially to Enforce a Trademark and preclude others from using your mark or similar marks thereto. A federal trademark registration provides:

* Constructive notice nationwide of your claim of ownership of a trademark;

* Evidence of ownership of the trademark;

* Jurisdiction of federal courts to Enforce a Trademark may be invoked;

* Registration can be used as a basis for obtaining Registration in Foreign

Countries;

* Registration may be filed with U.S. Customs Service to prevent importation of

infringing foreign goods.

5.  Is a U.S. Federal Registration Valid Outside the U.S.?

A U.S. Federal Registration only protects your mark here in the U.S. However, any trademark owner with an application filed in or a registration issued by the U.S. Patent and Trademark Office can extend protection of that trademark into over 71 other countries through a treaty known as The Madrid Protocol.

The Trademark Company

How To Renew Your Registered United States Trademarks

Unlike other forms of intellectual property (e.g., patents and copyrights) trademarks can, in theory, be maintained forever.  To do so, however, the U.S. Patent and Trademark Office (“USPTO”) maintains strict and unwavering requirements concerning the maintenance of U.S. Trademark Registrations.    As such, once a Trademark Registration is received, you must calendar these important deadlines or use a service to do so to make sure that your Trademark Registration is not permitted to lapse.

Of note, many trademark owners do not realize that once a trademark is registered it can still be canceled through a Cancellation Proceeding initiated by any party who feels that it may be injured by the continued registration of the trademark.  Typical grounds for cancellation proceedings include, but are not limited to: (1) a likelihood of confusion with another trademark wherein the other trademark claims priority of use; (2) that the registered trademark is merely descriptive and, as such, is incapable of functioning as a trademark; (3)  fraud perpetrated in the filing or maintenance of the registration; and (3) abandonment or non-use of the mark without an intent to resume use thereof.

If a trademark owner receives notice of a cancellation proceeding typically through a document known as a Petition to Cancel they should seek the advice of counsel immediately as there are strict deadlines to respond thereto.  If a cancellation proceeding is not defended in a timely manner the Trademark Registration will be canceled.

Putting the threat of cancellation aside, here are the standard renewal deadlines of which all trademark owners should be aware:

5th – 6th Year Affidavit of Continuous Use and Declaration of Incontestability

Between the 5th and 6th year anniversary of the registration a trademark owner is required to file a Section 8 Affidavit of Continuous Use to maintain the registration.  This is an affidavit verifying that the trademark is still in use and requiring the trademark owner to supply evidence of that use to the USPTO.  If the Section 8 Affidavit is not filed between the 5th and 6th year anniversary of the registration there is a 6-month “grace period” after the 6th year anniversary during which the affidavit can still be filed although additional fees will apply.  If no Section 8 Affidavit of Continuous Use is filed during this 18 month  time frame the Trademark Registration is canceled.

During this same time, namely between the 5th and 6th year anniversary of the registration, a trademark owner may file a Section 15 Declaration of Incontestability.  In short, this document certifies that a registration has been registered in excess of 5 years and, as such, can now only be canceled for (1) fraud perpetrated in the filing or maintenance of the registration; or (2) abandonment or non-use of the mark without an intent to resume use thereof.  There is no mandatory requirement that a Section 15 Declaration of Incontestability be filed although it is recommended.

9th – 10th Year Application for Renewal and Affidavit of Continuous Use

On or about every 10-year anniversary of the registration of a mark a trademark owner is required to file a Section 8 Affidavit of Continuous Use  and a Section 9 Application for Renewal of the Trademark.  The filings are required to be completed within one year of each 10-year anniversary (e.g., between the 9th and 10th year anniversary of the registration of the mark, between the 19th and 20th year anniversary of the registration of the mark, etc.) or within a 6-month grace period following each 10-year anniversary.  As always if the filing is made during the “grace period” additional fees will apply.

Provided that trademark owners comply with these deadlines and their Trademark Registration(s) is/are not otherwise canceled via a cancelation proceeding they will be able to maintain their trademarks for a long long time.