I’ve done a bit of reading and I want to address some concerns and false perceptions stated on multiple forums, regarding Google’s trademark policy and their upcoming jury trial.

Posted by jscroft: “I could see preventing an advertiser from bidding on trademarked keywords. What I can’t see, though, is forcing all advertisers to add all trademarked terms to their exclusion lists, which is the only thing that would prevent an ad from showing up on a search including a trademarked term. Whatever we may think about the advisability of that kind of stricture, it seems obvious that it would have to be imposed at the network level (i.e. by Google) than by the individual advertiser.”

My Response: Advertisers do not need to add trademarks to an exclusion list. For example, Google allows a trademark holder to implement Google’s optional policy to prevent unauthorized parties from using trademarks in the title and copy of ads placed on a trademarked keyword bid.

What eventually will happen in the U.S. and Canada, and has already taken place in Europe, is that search engines will be required by law to completely prevent unauthorized parties from even placing ads on federally protected trademarks.

The real issue here is how “generic” can a phrase be to be allowed trademark status. Let’s look at the company, Discount Tire. People don’t normally search for “discount tire” unless they are looking for the company, Discount Tire. The generic phrase people tend to search for is “discount tires” with an ’s.’

This is where things can get heated. How does the USPTO determine if a phrase is too generic to be trademarked?

Posted by iblaine: “People have built businesses off the ability to abuse trademarks through adwords. Affiliate networks actively police this activity because affiliate networks are in direct contact with the trademark holder. Google is not in direct contact with the trademark holder but Google is a key part of the process by enabling it to exist and Google benefits when abuse occurs. At the very least, Google should be forced to have the highest standards when it comes to protecting trademark holders. I’m not sure if that’s the case today.”

My Response: iblaine, actually Google is in direct contact with the trademark holder or their authorized agent. However, it is up to the trademark holder to reach out to Google and implement Google’s trademark policy. You nailed it when you stated “Google should be forced to have the highest standards when it comes to protecting trademark holders.“

Google is illegaly abusing trademarks by using them for monetary gain in commerce, without consent from said holders of federally protected trademarks. The big blast of wind you felt on May 11th was Google’s legal team sighing in defeat when Judge Fogel decided for the American Blinds case to go to a jury trial.

I should also mention that Judge Fogel stripped aspects of the plaintiff’s complaint, but ruling that the public has an interest in whether AdWords, the Google’s pay-per-click advertising system, violates U.S. trademark law.  It was explained to me that the scope of this trial will focus primarily on whether the action of a company, advertising on a direct competitor’s trademark through Google’s Adwords system, is illegal. 

Posted by limoshawn: “It seems to me that it would be almost impossible to keep the adwords program running if google was to lose this lawsuit. I wonder if the lawsuit is including the “organic results” as well. It may come to the point that every advertiser will have to be handpicked and every keyword and ad will have to be run through the legal department. It will be like buying a house, instead of title insurance, the advertiser will have to provide Google with “keyword trademark insurance” that will be purchased from a company that researches keywords to determine if they would be subject to a trademark violation. “

My Response: Limoshawn, if (when) Google loses this or an upcoming trademark lawsuit, they will be impacted, but still very profitable. The majority of Adwords revenue comes from advertising on generic phrases like “used cars” versus trademarks like “used Ford F150.”

Incidentally, some companies decide not to implement the current trademark policy because they may not have a vested interest in a reseller market, this choice should continue to be left to the trademark holder. The auto industry is a good example, and Ford does not implement the trademark policy on the trademarked phrase “used Ford F150″ because they encourage dealerships and aggregators to handle the used vehicle market.

However, If I was a corporate leader at Ford, I would have to think long and hard about allowing third parties to buy ads for the trademarked phrase “new Ford trucks.” I would only want my brand messaging to engage the consumer, allowing me to build a brand relationship with them, and ultimately vie for their brand loyalty. Once engaged by corporate, the consumer can be serviced by the closest Ford dealership.

In response to your concern about organic results, Google does not receive compensation for these listings (commerce), therefore, it is a mute point–Google has however, proven that the search engine with the most relevant (best) results wins the majority of users.

Posted by Jim Bonfield: Regarding the issue of trademark and SEM; Successful marketplaces are built on the idea of more selection for the consumer being a good thing. This is why shopping malls work. This is why even though today’s 20-somethings who don’t usually read a daily newspaper will still pick one up when looking for a car – there is a great concentration of data located in one place.

The idea of a search engine user typing in “American Blinds” and then being presented with a number of paid AND non paid (organic) results is not unlike a Yellow Pages experience. If I looked up American Blinds in my Yellow Pages and I am then subjected to ads from 20 other blinds companies, can I sue the Yellow Pages publisher? Of course not.

Trademarks and Servicemarks are issued as a way to help consumers differentiate between products and services and for the provider of those products and services to protect against a competitor making use of their marks in a way that tricks or misleads a consumer into thinking they are buying that trademarked product.

That is not what is happening here.

A search term generates a real-time marketplace drawn into existence only at the very moment the consumer requests info on a certain topic. In essence the searcher asks Google to assemble a special section containing information on and RELATING TO American Blinds. In answer to that query, Google responds with info about that company, about its products and about possible competitors who offer similar products for the consumer’s consideration. That sounds like a great deal for the consumer and not like something that should be banned.”

My Response: WOW. Jim, I am shocked to find out your company, Eyeballfarm.com, is a search engine marketing firm. Your website states that you have done internet marketing for Red Lobster, Petco, and Lowe’s. I would assume you to have an ethical and financial interest in regard to your clients? Shouldn’t you be an advocate of protecting your clients’ brand assets, namely federally protected trademarks and other IP (intellectual property) holdings?

Your assertion that “the idea of a search engine user typing in “American Blinds” and then being presented with a number of paid AND non paid (organic) results is not unlike a Yellow Pages experience” is deeply flawed. The Yellow Pages do not return results for trademarks, they only publish results for generic, non-branded categories—i.e., “blinds” or “window treatments.”

What you really meant to say, was that if one were to search on Google for a generic keyword, like “blinds,” the user should have every right to choose from any and every company advertising, which is already the case. Furthermore, if you searched for American Blinds in the White Pages (which are presented by brand) and were provided with the contact and product information for a different blind retailer, then you would have a lawsuit to pursue.

In summary, the Yellow Pages (think paid search results) only display listings for generic categories, and the White Pages display listings for companies (trademarks).

The bottom line is that brands go to great lengths and financial expenditures to build, nurture, and protect their trademarks, and this is exactly why Google is out of line.

Technorati tags: Google lawsuit, trademark infringement, Adwords trademark policy, search engine marketing, keyword advertising