Change in Google's Trademark Policy
Effective June 15, 2009, Google has changed its US trademark policy to permit the use of third party trademarks in adword text and on sponsored link websites. Specifically, the policy states in the following terms that trademark owners will have to police the use of their marks on the web independent of Google.
Google is not in a position to arbitrate trademark disputes between advertisers and trademark owners. As stated in our Terms and Conditions, advertisers are responsible for the keywords and ad text that they choose to use. Accordingly, Google encourages trademark owners to resolve their disputes directly with the advertiser, particularly because the advertiser may have similar ads on other sites. However, as a courtesy to trademark owners, Google is willing to perform a limited investigation of reasonable complaints.
Historically, the search-engine giant has been more accommodating to trademark owners than other search engines. Specifically Google previously had a policy that prohibited the use of a trademark in ad text that was featured in the sponsored link or the highlighting of a particular brand unless the site owner was also the trademark owner or the site owner had the approval of the trademark owner ( yes, those wonderful "affiliate" programs ) . This policy theoretically enabled trademark owners to prevent others from promotion of goods under their trademarks.
It is probably not a coincidence that this change in policy came roughly a month after the U.S. Court of Appeals for the Second Circuit ruled that a lawsuit may proceed in which the Plaintiff has asserted that Google's sale of trademarks as adwords constitutes infringement of the rights owned by the rightful owners of those trademarks. Google argued that the sale of trademarks as adwords was not a "use" of the trademark in commerce and therefore could not infringe the rights of trademark owners. Google may still win that case. In order to stop Google's sale of trademarks as adwords, the Plaintiff will have to prove that the sale of adwords by Google is likely to confuse consumers who are drawn to rival websites. Proving the likelihood of such confusion may be tough. Nonetheless, Google is now faced with discovery and possibly trial if the case does not settle.
Seemingly in response to this burden, Google issued the more hands off trademark policy that advises trademark owners to police their own marks as used on Google advertisements. True that the case addresses sale of adwords and not use of trademarks as keywords or in advertising text, but perhaps Google has decided to leave those burdens to the trademark owners who are annoyed by Google's sale of trademarks as adwords to competitors.
Trademark owners still have some recourse with Google in addressing trademark infringement on Google advertisements. For example Google's Trademark Complaint Procedure for Adwords states that "Google recognizes the importance of trademarks. Our AdWords Terms and Conditions with advertisers prohibit intellectual property infringement by advertisers. Advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements." Moreover, in egregious cases Google has agreed to "investigate all reasonable complaints; our actions may include disapproving or disabling ads and/or terminating advertisers. Any such investigation and action will only affect ads served on or by Google." You should be aware, however, that "upon request and approval, a complainant's contact details may be forwarded to the affected advertiser( s ) ." i.e., Google will give you up to the infringer if they ask why their advertisement has been disapproved or disabled.
Google's updated policy now seems to be in line with that of other search engines. The bottom line - now that Google's "hands off" policy has taken effect on the web, it is even more important that trademark owners conduct internet searches of their marks on a regular basis. Policing your trademarks in a proactive way is the best way to prevent infringing uses from growing both in terms of geographic distribution of goods and markets. The change in Google's trademark policy makes the use of a competitor's trademark on a Google sponsored ad possible but does not make it legal. More and more companies are now instructing their external legal counsel to monitor their marks on a quarterly or bi-annual basis and alert them of any possible misuse.
