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Trademarks

How long should I give them?

     
9:54 am on Nov 7, 2003 (gmt 0)

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Hi,

We've got a trademark dispute with Google, whereby our direct competition is using our trademark to trigger their advertising. We've approached the companies direct but with no result and have faxed three requests to google to ask them to remove the keywords but again they haven't responded (they haven't even had the courtesy to acknowledge response of the faxes as requested). We've now spoken to our legal department and they say we could now put it into their hands and "require" that google remove the ads but I'm just a bit cheesed off that it's turning out this way. We receive alot of traffic (the bulk) through users searching for our trademark, since the name is sourced in the national press each day.

Do you think I should now give up trying to get google to do anything and take the matter down the legal route or wait even longer for a possible resolution?

Any thoughts appreciated.

Carl

9:57 am on Nov 7, 2003 (gmt 0)

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[adwords.google.com...]

we cannot 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. We encourage trademark owners to resolve their disputes directly with our advertisers,

Sounds like you need to contact the advertiser direct.

9:58 am on Nov 7, 2003 (gmt 0)

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We tried - unfortunately the relationship between us and the advertiser is a little frosty.
10:01 am on Nov 7, 2003 (gmt 0)

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Get medieval then.

But you are going to have to work out how much it will cost you. If your legal fees are more than you will lose you have to make a decision. It could be a principle thing. Only you can decide. Take legal advice.

10:19 am on Nov 7, 2003 (gmt 0)

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It definately is a priciple thing - it massively devalues the purpose of a trademark if any tom dick or harry can just use it as they please and it's very frustrating to try and get help to protect it. I suspect that a few threatening letters should suffice but it would have been quicker and easier if google would just acknowledge the mark and remove it themselves (I've sent them eveything they need!).
11:25 am on Nov 7, 2003 (gmt 0)

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It is my understanding that if you donít challenge every violation of your trademark, you will dilute your ability to challenge in the future.
I fully appreciate your position, it is a matter of principle, regardless of the law, but fighting it is a real pain.
I found some useful information here [chillingeffects.org]
jb
3:36 pm on Nov 7, 2003 (gmt 0)

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We've been going through the same thing with two of our clients. With losing the case in France recently you'd think Google would do more to protect advertisers. I have a client who spends millions each year in advertising to brand their name. We finally have their name protected and they are the only ones showing up under that name. It's taken persistence to keep on them to take off the other people who have been showing up under my clients name. This has included getting companies taken off the Premium Listings, which seems to be handled under separate auspices than regular. Correct me if I'm wrong.
3:59 pm on Nov 7, 2003 (gmt 0)

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I think this is a pretty grey area in the UK.

Displaying someone elses trademark in your ads is obviously an infringement. However, if it's only being used as a trigger (& the trademarked term is not displayed in the ads), I think a lawyer could make a good case for the defense.

Disclaimer: I am not a lawyer. Always get legal advice from a qualified trade mark attorney, etc.

5:31 pm on Nov 7, 2003 (gmt 0)

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I agree with roitracker.

Can an advertiser lay claim to all of that ad space claiming it protects their trademark?

Andrew Goodman recently made a good point in the I-search newsletter that went something like this:

If someone owns a field across the highway from a big name brewing company and they sell advertising space on a billboard in that field is it wrong for a competing brewing company to advertise on that billboard?

I see adwords as advertising space where related services and products can be promoted. As long as the trademarked term is not used in the ad I don't see the problem.

Maybe if you claim trademark infringement Google gets to check your own account for any questionable words or phrases.

Ebay cried fowl about their name and they bid on numerous trademarks. NextTag is another example.

While were at it, if you really want to protect your trademark, why not have Google remove all adwords and SERPS with the exception of your own site and ad?

If I was fighting for my brand I would be more concerned with people making money off my name from free search listings than paid advertisements.

This is not a black or white issue. There is a HUGE gray area.

5:45 pm on Nov 7, 2003 (gmt 0)

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Had this happen to us.

A simple email resolved it - well I say simple....

"this matter will be in the hands of our lawyers within 24 hrs"

"will contact Google to have your site removed from their index and Adwords campaign suspended" (bluff! ;))

"our press department will shortly release a statement ensuring members of the public that we are not associated with your company" (semi bluff - I would have done it! ;))

They seemed eager to remove the campaign.

Although it probably only worked because they weren't too knowledgable about Google.

They removed our brand name from their meta tags too! :)

To hell with the cost involved IMO - it's the principle. You work hard to run a legit business and then someone comes along and expects to make some money off the back of it. Don't think so matey! ;)

Scott

5:53 pm on Nov 7, 2003 (gmt 0)

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How long have you been waiting? Last time we did a "how long does it take thread" about Adwords and trademarks, I think the average response time was 5-6 weeks. Our complaint was answered in about 6 1/2 weeks.
4:01 pm on Nov 13, 2003 (gmt 0)

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carlwright: If I were you, I'd protest! While you're at it, get Google to remove every single site from the regular listings that comes up when you search for your company name, as clearly they are violating your trademark by your measure. The added bonus is that you'll score a GoogleWhack.

I have to agree with two of the folks above. I'd totally agree with getting people to take down ads if they use your trademark in their ad, but having their ads appear when someone searches for your name? That's not trademark infringement in most jurisdictions. To take a previous argument, it's more akin to your competition buying giant billboard ad space right next to your store. Okay, that's [em]not nice,[/em] and your competitors should really have better marketing tactics, but it's hardly trademark infringement, no matter how close the billboard is to your store signage.

Patents, trademarks, copyright.. it's all a horrible mess, and usually ends up with the open market and fair competition getting trampled on. Alas! But, as usual, everyone will crank out the lawyers and continue the fights.. so, get on with it :-)

4:17 pm on Nov 13, 2003 (gmt 0)

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I always thought that usage of a trademark, no matter how or where, requires an acknowledgement?
4:53 pm on Nov 13, 2003 (gmt 0)

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A lot of that depends on the context and any arrangements made (i.e. between Apple the computer company, and Apple the music label). Of course, if we're talking about Adwords, if someone else is using your trademark as part of their content, you have a case. If the ad says:

OurCompany Inc.
Just like YourCompany's
products, but cheaper!

Then you have every right to be spitting fire, considering your trademark is being diluted. From what's been said so far, however, it doesn't sound like this is so?

To be honest, I can see why, from a commercial angle, you want to pursue this, and can even sympathise to a point. But I just don't think it's right to pursue it, unless there is a clear misuse of your trademark. But as none of us really know what the deal is with your company name, our advice is rather limited in scope.

*trying to be an idealist* :-)

5:18 pm on Nov 13, 2003 (gmt 0)

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If you have "trademark store" in an office bulding or shopping center it is completely within my right to purchase advertising on billboards surrounding your store.

I can do the same in yellow pages, print magazines, newspapers etc. I have the ability to select a physical location in close proximity to a competing business.

With the internet and in particular ppc advertising you have to designate triggers or keywords to determine where your ad is placed since there is no physical space.

This makes things a lot more complicated when determining trademark violation. If you have a close competitor offering a similar product why can't they advertise in that space?

If you're looking through the Yellow Pages for Widget King to fix your widgets because that is the only company you are familiar with and you come across The Widget Company and decide to use them instead how is that different from searching on a trademark because it is what you know and then finding alternatives as a result?

How can you possibly determine what someone is thinking when they search on a certain word or phrase?

I'm not saying this is not a problem but it is not a "I'm right and you're wrong" issue.

9:05 pm on Nov 17, 2003 (gmt 0)

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Carlwright, you don't say whether or not your trademark is registered.

I recently got Google to stop a competitor bidding on our trademark, but it was a registered trademark.

I had a look at your site, and the name of your site doesn't seem to be registered. Also, it is a fairly descriptive name, so it could be difficult to register.

I would imagine that Google take more notice of registered trademarks. Otherwise they would have everyone telling them that they own the common-law trademark "blue widgets" to try and block their competitors from bidding on that phrase.

12:51 am on Nov 18, 2003 (gmt 0)

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carlwright, I've re-read this thread, and it's not clear to me if you've contacted AdWords about your trademark issue in the formal way that is outlined here:

[google.com ]

The above link will take you to the Trademark Complaint Procedure page, and is a link from the page mentioned in post #2, above.

1:01 am on Nov 18, 2003 (gmt 0)

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This happened to us a few months ago.

I emailed Adwords three times and faxed them their required form. They suspended the infringing campaigns within a week.

1:07 am on Nov 18, 2003 (gmt 0)

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We went through this process with Google and it took about 7 days to resolve the whole issue.

It went like: Day 1 sent an email complaining about trademark infringement. Day 2 got a response back from Google saying to write up a letter following some guidelines in the email. We wrote up a letter, faxed it to them, asked for a confirmation email, and got it same day. We then waited about 5 days until we got a response saying the ad was taken down because it was infringing.

This was for a US mark. I found the process very easy and Google to be very prompt. Not sure why you have had such a poor response.

7:29 pm on Nov 18, 2003 (gmt 0)

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Chime in from the other side. If your word is registered trademark, you can contact google and they'll make the offending party remove the ad.

There's some dispute if a company could require google to do this, but that doesn't matter - google will do it of their own accord. All that has to be done is the trademark owner has to contact google.

I routinely advertise on competitors keywords. The crucial point here is that you have to complain to google. No complaint means the advertising is allowed.

On behalf of my customers, I advertise on hundreds of keywords that are either company names or domain names (like ****xxx, xxxxx.com, www.xxxxxx.com, [xxxxx.com,...] etc.). I've only ever had one complaint from google. They shut down the ad, I don't advertise on that one anymore, and everybody's happy. The other 999 companies didn't complain, so I'm still advertising there.

3:50 pm on Nov 27, 2003 (gmt 0)

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A quick update for you - Google have now removed the offending adverts. We're very pleased here
 

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