Google Trademark Infringement

Google trademark infringement, or the right for the company's name to be protected from use by others, was challenged in a recent lawsuit on the grounds that "google" is now a generic term for internet searching. However, the Supreme Court rejected this petition without comment. While Google was able to keep its trademark in this legal challenge, other companies have lost trademarks when the words fall into generic usage. Some examples include thermos, aspirin, and videotape — all words that were once trademarked.

The legal petition, claiming that no word better epitomizes the ideal of searching the internet than "google," was filed by an individual named Chris Gillespie. Gillespie registered more than 750 domain names, all using some variation of the word Google." The man had to give up these domains in response to a Google claim of trademark infringement, and he filed the petition to invalidate the company's trademark in response.

A federal appeals court ruled that Google's trademark should remain valid since it refers to more than just a search engine. The 9th U.S. Circuit Court of Appeals noted that even if the public does use Google as a generic term, this does not indicate anything about how they primarily understand the term. A trademark will only be lost to generic usage, according to the court, when it is an exclusive descriptor that other companies must use in order to describe their product.

The legal protection given by a trademark includes the right to sue those who infringe on the trademark, preventing others in the industry from using a similar mark that may confuse the public.

Is Trademark Use in Google AdWords Trademark Infringement?

Google AdWords is a service offered by the company in which businesses can pay for their ads and links to appear prominently in searches for specific keywords. Many companies have litigated over the use of registered trademarks in Google AdWords, arguing whether doing so constitutes fraudulently selling, marketing, promoting, or advertising a trademarked product. In May 2017, a company known as Tipsy Elves, LLC sued Ugly Christmas Sweater Inc. because the latter company's products appeared as ads on a Google search of the words "tipsy elves."

Tipsy Elves alleges that this infringes on their trademark and constitutes unfair competition and false designation of origin. The lawsuit claims that the words "Tipsy Elves" have been trademarked since the company began using the term to sell online holiday clothing and accessories in 2001. The plaintiff also claims that their mark has goodwill through their media popularity and an appearance on the television show Shark Tank. They state that the deceptive Google AdWords tactics used by Ugly Christmas Sweater Inc. would lead to customer confusion and were designed to redirect internet traffic to the defendant's site.

This is just one of more than 50 lawsuits regarding Google AdWords trademark infringement in the last decade; most of these have been found in favor of the defendant. In another high-profile case in which Rosetta Stone Ltd. sued Google, the Fourth Circuit found that Google AdWords could violate the Lanham Act. However, the parties ultimately settled out of court. The Tipsy Elves case is unique in that the plaintiff is suing the infringer directly rather than suing Google. When this case is settled, it will likely provide more guidance about what actions on Google AdWords constitute infringement.

Google's Approach to Trademarks

Google's policies state that they are cognizant of the importance of trademarks and prohibit trademark and copyright infringement in the AdWords terms and conditions that every advertiser must sign. They note that advertisers are responsible for their own ad content and keywords and that all valid complaints by trademark owners are thoroughly investigated. However, Google does not mediate trademark disputes, although they may enforce certain restrictions. Many factors are used to determine whether or not a trademark can be used in an ad when a trademark owner has submitted a valid infringement complaint.

Trademarks in Ad Text

When Google restricts the use of certain trademarks in ad text, ads that use these words will be banned from running internationally. The exception is when ad campaigns using these words are following Google's informational site policy and are targeting consumers in the following countries:

  • Ireland
  • Canada
  • Australia
  • New Zealand
  • United States
  • United Kingdom

Ads will be in compliance with this policy when:

  • The landing page for the ad in question serves the primary function of selling, or is obviously intended to facilitate the sale of, the products or services that correspond to the trademark
  • The landing page for the ad in question serves the primary function of selling, or is obviously intended to facilitate the sale of, compatible goods, components, or replacement parts that relate to products or services associated with the trademark
  • The goods or services are the primary focus of the landing page for the ad
  • The landing page for the ad clearly provides a way to purchase goods or services associated with the trademark
  • The landing page for the ad clearly provides commercial information, such as quotes, prices, or rates, as they pertain to the goods and services of the trademark
  • The landing page for the ad in question serves the primary function of providing detailed information regarding products and services that correspond with the trademark

Ads will be considered to be in violation of this policy if:

  • The landing page for the ad in question does NOT serve the primary function of selling, or facilitating the sale of products or services that correspond with the trademark OR compatible products, components, or replacement parts for those goods or services
  • The ad refers to the trademark for competitive reasons
  • The landing page for the ad fails to provide substantial information pertaining to the products or services that correspond with the trademark
  • The landing page for the ad in question requires the user to provide substantial information before they are provided with commercial information
  • The ad is unclear in regards to whether the advertiser is an informational website or a reseller

Submitting a Complaint About the Use of Your Trademark

If you're a trademark owner and are concerned about the use of your trademark in AdWords, there are a few things you can do:

  • Contact the advertisers directly
  • Submit a complaint with Google regarding the use of your trademark within AdWords

Once you've filed a complaint regarding text ads in the Search Network, you have the option to authorize specific AdWords accounts to make use of your trademark. This includes your account and the accounts of any affiliates or partners that need to be able to use the trademark in question. If your specific concern relates to counterfeit products or content that falls under copyright protection, refer to Google's Counterfeit Goods and Copyrighted Content policies.

It is worth noting that Google will not restrict the use of trademarks in AdWords text ads that appear in the Search Network unless you take the necessary steps to file a valid complaint. This is true even if your trademark is registered with the United States Patent and Trademark Office.

Google will investigate the following types of issue upon submission of a complaint:

  • Google Ads: This covers text ads that appear in the Search Network as a part of AdWords text ads.
  • Ad Parts: This will ONLY cover the use of trademarks in the text of the ad. Things like keywords and URLs are not considered under normal circumstances.
  • Search Results: Understand that, according to the trademark policies set in place by Google, search results aren't something they consider to be trademark infringement. If you have a concern about certain websites that appear in the results of a specific search, you'll need to contact that site's owner.
  • Geographic Scope: Due to the fact that rights pertaining to trademarks are "territorial," Google will only investigate infringement complaints in the physical regions that you have trademark rights in.
  • Trademark Rights: Google does not have the ability to register trademarks on your behalf.
  • Other Types of Ads: Google's policies pertaining to trademarks ONLY apply to trademarks that appear in text ads through AdWords. That doesn't mean, however, that they won't remove a specific ad from another format on their network if a trademark owner makes a valid complaint.

Before you take steps to submit a complaint to Google, it's a good idea to take the time to read through their Trademark and Copyright policies to make sure you have a solid case. Otherwise, you may expend time and effort that, ultimately, could go to waste.

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