Live: Trademarks & Paid Search: How Have Things Changed?

Oct 5, 2009 - 3:40 pm 0 by
Filed Under SMX East 2009

Below is live coverage of the Trademarks & Paid Search: How Have Things Changed? from the SMX East 2009 conference.

This coverage is provided by Barry Schwartz of RustyBrick & Justin Davy of

We are using a live blogging tool to provide the real time coverage, please excuse any typos. You can also interact with us and while we are live blogging, so feel free to ask us questions as we blog. We will publish the archive below after the session is completed.

Trademarks & Paid Search: How Have Things Changed?(10/05/2009) 
3:40 Barry Schwartz:  Starting in 5 minutes..
3:43 Barry Schwartz:  Here we go, Matt Van Wagner is modding up this session.
3:44 Barry Schwartz:  Debrah Wilcox is up first, she is from Baker & Hostler
3:45 Justin Davy:  Whats in a name?

Auctionweb is now eBay and ValueJet is now Airtran. There's a lot in a name.
3:45 Barry Schwartz:  Auctionweb is eBay
Phillip Morris is Altria
ValueJet is Airtran
3:45 Barry Schwartz:  There is a lot in the name
3:45 Justin Davy:  Just because a word is in the dictionary does not meant that it is "free" to use
3:46 Barry Schwartz:  Generic words is not a trademark, such as Apple
3:46 Barry Schwartz:  Descriptive marks are not yet enough to be a TM
3:47 Barry Schwartz:  Suggestive words give an idea of serivces
3:47 Justin Davy:  Trademark Strength Spectrum

Generic - not a trademark (dictionary meaning) Apple for apples
Descriptive - not yet strong enough to be a mark (labrador retreiver)
Suggestive - gives idea os the good services
Fanciful, Artibrary, Invented - No obvious connection to the goods
3:47 Barry Schwartz:  Fanciful, arbitrary, invented has an onvious connection, such as Twitter (tweets)
3:49 Justin Davy:  Trademark Rights:
In the US, based on first use or first to file an intent-to-use application
3:49 Justin Davy:  In many countries, based on first registration
3:49 Barry Schwartz:  In US, it is first to use but in other countries it may be first to register the trademark.
3:50 Justin Davy:  Infringement
Use in commerce of anothers mark that is likely to cause consumer confusion

The strong the mark, the stronger the protection against the infringement
3:51 Justin Davy:  Usually, for there to be use in commerce, the mark is used on the goods or in connection with the services being sold, such as on labels, packaging and advertising
3:51 Barry Schwartz:  She shows examples of Webkinz
3:54 Barry Schwartz:  She then mentions the Rescuecom vs Google case, which you can learn more about over here.
3:55 Justin Davy:  TM law is meant to protect consumers from being misled in their purchasing decisions
3:55 Barry Schwartz:  Next layer of analysis over infringment after use in commerce is likelihood of consumer confusion
3:56 Barry Schwartz:  Are these people trying to trade off the good will the TM owner established?
3:56 Justin Davy:  Courts apply a multi-factor test:
- Strength of mark
- Similarity of Goods/Services
- Wrongful intent to trade off goodwill
- Actual consumer infusion
3:56 Barry Schwartz:  What Justin said above Wink
3:58 Justin Davy:  Questions particular to keyword-triggered ads:
- Are all users looking for the trademark owners' official site?

Example - Official Webkins Plush Toys vs Webkins
3:58 Barry Schwartz:  Are all users looking for a trademark by searching actually looking for the official site?
3:58 Justin Davy:  I guess that's spelled Webkinz
3:59 Barry Schwartz:  Are users able to tell the difference between the various ads, between official owners or not?
3:59 Justin Davy:  Are users able to distinguish between sponsored results and the trademark owner's ads?
3:59 Barry Schwartz:  I am freezing up, need to reboot...
4:00 Justin Davy:  Consumer Confusion can come from a banner ad not identifying the sponsor
4:05 Justin Davy:  Permitted uses of trademarks:
  • Descriptive fair use of mark in its ordinary dictionary sense
  • To identify the authorized product
    Compatible With
    Providing information (bloggers writing about brand)
    Comparative advertising (comparing your product by name to another Ex. Pepsi to Coca Cola) has to be truthful, backed up by scientific studies
4:06 Justin Davy:  Ahh the days when meta keywords mattered.....
4:06 Justin Davy:  Example of Terri Wells vs Playboy case
4:06 Justin Davy:  She used Playboy etc in the meta keywords area
4:07 Justin Davy:  While Google may not care about use of the meta keyword tag, courts still do.
4:08 Barry Schwartz:  Funny, cause Matt Cutts of Google had a blog post and video to show how people should now sue each other over keyword meta tags
4:08 Barry Schwartz:  See this blog post at
4:09 Barry Schwartz:  Here is that video
4:09 Barry Schwartz:  If you have an international issue, you need to work with lawyers in other countries.
4:10 Barry Schwartz:  Next up is Laura Convington of Yahoo
4:10 Barry Schwartz:  Laura Covington
4:11 Justin Davy:  Laura will be discussing search engine policies (not just Yahoo's)
4:12 Barry Schwartz:  Yahoo's TM policy is always based on 'fair use'
4:12 Justin Davy:  Yahoo is focused on fair use. The used to let advertisers bid on competitors terms if they had comparative advertising. Ultimately the decided not to allow that.
4:13 Barry Schwartz:  But they do allow comparison sites bid on TMs
4:13 Justin Davy:  They do allow resellers and non competitive information sites to bid on trademarks
4:13 Barry Schwartz:  Or if the term is used in a generic or descriptive manner, it is allowed
4:14 Barry Schwartz:  Yahoo requires the TM in the ad copy
4:14 Justin Davy:  Sharing example of "Bose"
4:16 Justin Davy:  4 ways to raise trademark related questions:
Trademark Complaint
Counterfeit Complaint
False & Misleading Complaint
Copyright DMCA
4:17 Justin Davy:  Outside US: Yahoo applies local country fair use principles
4:17 Barry Schwartz:  In US: If they get a complaint about TM, they review it and if it is in violation, they take the ad down.
Outside US: Local fair use principlpes apply
4:18 Justin Davy:  Microsofts policy is similar to Yahoo's
4:19 Justin Davy:  Google does a limited investigation on their side
4:19 Barry Schwartz:  FYI, most of this does not apply to the free/organic listings... only paid
4:20 Barry Schwartz:  Google has laid out rules for most countries
4:21 Justin Davy:  Understand that searching for "TM" doesn't mean consumers always and only want "TM Company"
4:22 Justin Davy:  Important to understand that over-regulating keywords reduced consumer choice and can increase consumer search costs
4:24 Barry Schwartz:  A lot of the parts people object to online, dont even think about in the offline world. such as ads near other ads in a magazine...
4:25 Barry Schwartz:  Last up is David Naffziger of BrandVerity
4:28 Barry Schwartz:  Google TM policies have changed often over the years
4:28 Barry Schwartz:  In 2000, TMS cannot be purchased.
4:29 Barry Schwartz:  In 2004, Puchase TMs in US/CA
4:29 Justin Davy:  In the past year Google has been moving much faster with their policies
4:29 Barry Schwartz:  April 2008: Purchase TMs in UK/IE (not in ad copy, btw)
4:29 Barry Schwartz:  May 2009: Purchase TMs in 190 countris and 5/2009 US: non competitive use of TMS in ad copy is okay
4:30 Barry Schwartz:  September 2009 the EU court opinion said TMs should be allowed for ad buys
4:30 Justin Davy:  Partners are doing a majority of trademark bidding
4:32 Justin Davy:  Affiliates are outbidding merchants when the merchant's ad position is #2 typically
4:32 Barry Schwartz:  Merchant is often ranked number one, but when that is not the case, the affiliate is typically outranking them.
4:32 Justin Davy:  Offensive Tactics from Affiliates include direct linking, geo-targeting & dayparting
4:33 Justin Davy:  Affiliates are able to hide what they do by:
  • Reverse geo-targeting
  • Day-parting
  • Copying ad text
4:33 Barry Schwartz:  Affiliate techniques include reverse geo targeting, run ads at night (day parting) , copy your ad text
4:35 Justin Davy:  Comparison shopping engines also conduct their own affiliate networks
4:36 Barry Schwartz:  bigger issue with Google then with yahoo or microsoft, cause Google is more automated and it is easier to get around it.
4:36 Justin Davy:  Some dodge filters by using variations on TM (typos, spaces, etc)
4:37 Justin Davy:  Using international characters (ex. of something that looks like and "i" or "o")
4:37 Barry Schwartz:  é = e
î = i
ô = o
4:38 Barry Schwartz:  He shows these ads on the content network as well and even in google maps
4:38 Barry Schwartz:  i.e. google places pages
4:40 Barry Schwartz:  He calls out a specific advertiser who does this...
4:41 Barry Schwartz:  Toolbar monetization, such as's toolbar
4:41 Justin Davy:  Defensive Tactic's Include

4:41 Justin Davy:  Knowing how the advertiser makes money
4:42 Justin Davy:  Leveraging your Relationships
4:42 Justin Davy:  Cease & Desist
4:42 Justin Davy:  Working Directly with Engines
4:44 Barry Schwartz:  Amazon said affiliates can no longer direct link to amazon
4:44 Barry Schwartz:  You can also collaborate by working with your affiiliates
4:44 Justin Davy:  Collaboration is another good example. Overstock Coupons is used as an example
4:46 Justin Davy:  Register your trademarks with the engines and all typos as well
4:47 Justin Davy:  You do not need a registered mark to do so
4:49 Justin Davy:  Keep in mind that TM management is your responsibility and not that of the engine
4:50 Barry Schwartz:  That is all, now maybe some Q&A
4:53 Justin Davy:  If someone is bidding on your brand and their site has nothing to do with your site the good thing is that typically their at the bottom of the ad results



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