Google Sparks Trademark Debate

The search engine decides to allow advertisers to bid on keywords despite trademark complaints, instead focusing on the content of the sponsored-link results. But its move draws skepticism among some search marketers and attorneys.

Google Inc. is planning to change its policy governing the use of trademarks in the keywords that trigger its sponsored listings, stoking the debate over where the lines should be drawn in the use of trademarks in search-based advertising.

Google on Thursday began sending e-mails about the policy change to advertisers and trademark holders who had filed past trademark complaints, officials confirmed on Tuesday. The change should occur in the next few weeks.

Previously, Google in some cases had removed keywords from bidding in its AdWords program after receiving complaints from trademark holders, said Rose Hagan, senior trademark counsel at the Mountain View, Calif., search engine.

In the new policy, Google will allow all advertisers to bid on any keyword, regardless of trademarks, in the United States and Canada but also will allow trademark holders to seek the removal of trademarks from the actual text of an ad, Hagan said. She said Google decided that the removal of keywords from bidding also blocked many relevant ads from appearing in the paid results.

"The key impetus for this was that we wanted to provide our users with more choices and balance the interests of advertisers, end users and trademark holders," she said.

Outside of the United States and Canada, Google will still consider removing certain trademarks from keyword bidding when trademark holders complain. The reason for the different approaches relates to differences in trademark laws, Hagan said. In the United States and Canada, trademark infringement depends largely on whether the use of a term causes confusion in the market, she explained.

Search engine marketers and trademark attorneys were quick to doubt whether Googles change had as much to do with improving results for users as it did with more aggressively pushing the issue of trademarks as it finds itself battling lawsuits and questions over it.

"They seem to want to bring the question of how far a search engine can go to a head," said Barry Felder, a partner at Brown, Raysman, Millstein, Felder & Steiner LLP, in New York.

Felder served as lead counsel for Playboy Enterprises Inc. in its case against American Online Inc.s Netscape Communications Inc. subsidiary and Excite. The case was settled earlier this year after a federal appeals court ruled that it could head to trial. In that much-watched case, Playboy sued for trademark infringement over the use of keywords to link to banner ads of its competitors.

Among the cases against Google is one filed earlier this year by American Blind and Wallpaper Factory Inc. The Plymouth, Mich., home-decorator retailer has alleged that Google is infringing on its trademarks by allowing competitors to use certain keywords to trigger ads. Hagan declined to discuss whether Googles policy change relates to pending litigation.

David Rammelt, the attorney representing American Blind, said Googles policy change doesnt address the retailers core case against Google. "When Google is profiting from another companys brand name, we believe the law will not look kindly upon these solicitations," said Rammelt, of Kelley, Drye & Warren LLP, in Chicago.

Next Page: Googles Move in Sharp Contrast to its Competition