Yahoo’s Trademark Policy Recklessly Abuses Brands Online
In Online Brand Protection, Yahoo, Search Engine Marketing | 6 comments | permalink
Trademark dilution and infringement run rampant on Yahoo Search Marketing’s paid advertisements for federally protected trademarks.
While Yahoo and Google continue to battle through lawsuits for trademark infringement in their respective search engine advertising programs, it is evident that Yahoo needs to move a step closer to the brands they are leveraging for profit.
In 2005, Google was forced to change their trademark advertising policy after a devastating blow from a federal district court in the Geico Case. The court stated:
“…the district court found that the “extremely high” percentage of respondents who experienced some degree of confusion when viewing these advertisements was sufficient to show that there was a likelihood of confusion present when GEICO’s marks appeared in either the heading or the text of a Sponsored Link advertisement.
Google advised the district court that it had no contrary evidence. Thus, the district court held that GEICO had established a likelihood of confusion and had therefore shown that Google violated the Lanham Act with regard to those Sponsored Link advertisements that included GEICO’s marks in the headings or text.”
In order to avoid a highly public compensatory damages phase of the suit that could spread to many more companies getting involved, Google settled with Geico for an undisclosed amount. Google then updated it’s trademark policy to prohibit third parties from using the trademarks of other companies in the title or text of trademark-triggered ads (U.S. & Canada), at the request of the trademark holder.
While I don’t believe this goes far enough to protect a brand’s IP assets, it does remove a lot of the feculence that still resides on Yahoo.
Let me illustrate some examples for you. In the screenshot below we take a look at a search for “Best Buy” on Google. Best Buy is my go-to store for electronics and they often feature some great deals online, too.
As you can see, the trademark policy implemented on Google has eliminated the brand siphoners from advertising on this trademark (though this isn’t the case for every brand on Google). Gone are the brand parasites that once competed for visibilty on this trademarked search in Google.
Now let’s take a look at a search for “Best Buy” on Yahoo.
Note the Yahoo advertisements on the Best Buy trademark, attempting to steal brand traffic. While Best Buy does have an outlet store on eBay, I can assure you they do not enjoy eBay’s tactics.
At the very least, Yahoo needs to fall in line with Google to eliminate the use of another organization’s trademarks in the title and text of search engine advertisements. This move will improve relations with brands and help to ensure relevant results.
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Yahoo’s Trademark Policy Recklessly Abuses Brands Online
At the very least, Yahoo needs to fall in line with Google to eliminate the use of another organization’s trademarks in the title and text of search engine ads.
Well, you probably wouldn’t know this those yahoo featured ads do not violate any trademark. None whatsoever. Basically, they are not electronics stores or operating in the field of electronics sales. True, that they may be “siphoning” clicks from the ads with the top two main page results, but those contextual ads are dynamic anyway.
There is only one “Best Buy” Electronics store and they have the two most prominent spots on the page. If a user clicks on any other links but the top two, then they probably deserve to end up where they end up.
A client like Best Buy only wants to pay just as much as it can to get that BestBuy.com URL to the top of the list. Trust me, they don’t care about those contextual ads.. of course until someone tells them it’ll make a significant amount of money off them.. then they’ll spend that extra cash.
Maybe they dont want to pay more to fill up more space with one freakin’ web site.
143underpar,
Thanks for jumping in the fray. Your statement that the Yahoo ads do not violate Best Buy’s trademark is incorrect and shortsighted. If you would have read the entire post you would have gained some education–a federal district court in the Geico v. Google trademark infringement case ruled that the use of a trademark in the heading or text of a search engine advertisement, triggered for the search of said trademark, is likely to cause confusion and thus violates the Lanham Act.
Trademark dilution is also a part of the code and clearly the Best Buy trademark is recklessly diluted by the third parties advertising for this trademark.
It is just a matter of time before landmark decisions will change the face of trademark advertising in the search engines as we know it today.
What do you do for a living? Let me guess… affiliate marketer, black hat marketer, brand siphoner?
Tom,
A trademark is a limited monopoly right. From the gitgo, therefore, right-thinking people take pause to consider whether that monopoly helps or harms competition. Apparently you don’t care and reflectively assume that all uses of words, slogans, and designs used to sell some good or service are no longer available to anyone else to sell either those same goods or services or unrelated goods or services. Absent proof of marketplace confusion, however, there is no legitimate basis to enjoin that other’s use. I suggest that you need reconsider who the more honest capitalist is in this debate.
Dan,
I respect and agree with your perspective to a degree, but your argument is best served for issues outside of search engine advertising. While a trademark may be a limited monopoly, the use of trademarks in search engine advertising without the consent of the trademark owner is a total sham. The Utah Trademark Protection Act describes the practice as corporate theft, and I admire their integrity. It is only a matter of time before other jurisdictions play catch up.
The concepts here are very basic and simple to understand. Let me use an analogy. There are two types of phonebooks–the Yellow Pages, where results are sorted by generic categories (non-branded), and the White Pages, where results are sorted by brand (trademarks). Can you imagine how confusing and unfair it would be to find advertisements in the White Pages underneath the listing for Dominos Pizza?
Dominos Pizza……………………125 Elm St (212) 345-6789
SEE ALSO >> Pizza Hut…..150 4th Ave (212) 332-4576
SEE ALSO >> Papa John’s…229 Tee St (212) 451-7789
Competitors of Dominos have every right to advertise in the search engines on generic keywords like “Pizza” (think Yellow Pages), but have no business advertising on the Dominos Pizza trademark itself (think White Pages).
Third parties, as well as the search engines, should not be allowed to leverage the extremely costly IP assets of another entity to generate revenue without approval from the trademark holder. Period.
Finally, let me address your statement: “Apparently you don’t care and reflectively assume that all uses of words, slogans, and designs used to sell some good or service are no longer available to anyone else to sell either those same goods or services or unrelated goods or services.”
Let me address this for two types of advertisers.
1. Retailers/vendors/independent reps advertising on a trademark because they sell new or used versions of the trademarked product. There are many examples of brands that prefer to allow advertising on their trademarks to move product. But in my opinion, it is ultimately the trademark owner who gets to make that decision for two reasons: A) To protect the integrity of their brand, and B) To protect customers who are vulnerable to inferior quality (refurbished, reconditioned) or counterfeited product.
Let’s say a retailer sells accessories for the iPhone. Again, I believe it is up to the trademark holder to allow (endorse) the retailer to advertise on the iPhone trademark. More than anything this measure protects the consumer.
2. Direct competitors. This is where the French courts got it right. They held that Google infringed on Louis Vuitton’s trademark rights by selling search-related keyword advertising to competitors of the fashion company. It’s just common sense. In order to cultivate and maintain a capitalistic environment there has to be rules to protect the players.
However, when Geico sued Google claiming that Google’s practice of using the mark “Geico” as a search word or keyword in Google’s advertiser program, a federal trial court ruled that using marks as keywords to launch advertising does not indicate a trademark violation provided that the mark does not appear in the sponsored links. However, the court ruled that the use of the Geico name in those sponsored links might create sufficient confusion so as to constitute an infringement.
So you can use thier name as keyword you just cant use thier name in the text of your ads.
Frankly bestbuy and all these other words are too generic i want to trademark the word store…rofl
PS: Best buy is a total rip off anyone that shops at that store dose not get the best buy and is a fool and pays too much.
Better not use the word store in your ad or i’ll sue.