Trademarks

Google, Microsoft and Yahoo all require advertisers to comply with trademark law when using their services. Their policies and terms and conditions state that the use and monitoring of trademarks is currently the responsibility of you, the advertiser.

This section will explain what a trademark is, what the main issues are in search and the best processes to follow to protect your trademarks.

• What is a trademark?
• Why is trademark law relevant to search marketing and what are the main issues?
• How do I protect a trademark in search?
• Are there differences between the search engine trademark policies?
• When can I use a trademark in the copy of search engine adverts?
• What if a trademark of mine is being used by another company without permission?
• What are the rules on misspelt trademarks in search?
• What do I do if I believe someone is using my trademark against search engine policies?
• What happens if the problems continue?
• What are the rules for affiliates?
• What happens if I have used someone else’s trademark in search marketing?
• Useful links

What is a trademark?

There are many definitions of a trademark but the IAB adopts the UK Intellectual Property Office’s own definition:

A trademark protects any sign or symbol that allows your customers to tell you apart from your competitors. You can register a name, logo, slogan, domain name, shape, colour or sound.

A trademark must be:

• distinctive for the goods and services you provide

• not deceptive, or contrary to law or morality.

If your trademark meets these requirements, you may want to consider applying for a registered trademark. Your trademark does not have to be registered but an unregistered mark will rely on the common law of passing off. If you have a registered trademark, you must renew it every 10 years to keep it in force.

Source: UK Intellectual Property Office

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Why is trademark law relevant to search marketing and what are the main issues?

Search is a unique medium that allows advertisers to add their own adverts without going through a mediator. Trademark law is highly relevant to search marketing because you, the advertiser, are responsible for trademark use.
There are issues unique to search:

• Bidding on trademarks - Microsoft and Yahoo! currently don’t allow bidding on competitor trademarks without permission. Google don’t encourage advertisers to bid on competitor trademarks but their engine does make it possible in the UK if you choose to.

• Broadmatching - all search engines include this option. Broadmatching allows an advert placed under a particular keyword to appear on any search with that word included to reach a wider audience. For example, an advert placed on the keyword "internet" with broadmatching turned on can appear under searches for trademarks that include it like ‘internet advertising bureau’. This can result in adverts unintentionally appearing under a search for a trademark. Search advertising admin areas make it possible to block certain keyterms including trademarks. In the UK the advertiser must do this.

• Synonymous keywords - search engines can associate two words closely linked by meaning to help consumers find content e.g. ‘movie’ and ‘film’. If an advertiser placed an advert on the keyword ‘movie’, the advert could also appear under ‘film’. Like broadmatching this makes it possible for certain keywords to result in your brand appearing under a trademarked term.

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How do I protect a trademark in search?

The IAB recommends that you register trademarks as soon as possible to protect them in search and other mediums. A trademark doesn’t have to be registered to be protected under common law, but it will certainly make disputes significantly easier to resolve. Registration is carried out by the UK Intellectual Property Office.

The internet is a global medium even if you’re not a global company. You will have to consider the implications of this when registering your trademarks.

Are there differences between the search engine trademark policies?

It is worth noting some key differences in attitudes to trademarked brands between the different search engines.

Microsoft and Yahoo! do not allow advertisers to bid on competitor trademarks and they will investigate competitor use when notified. Google does not encourage bidding on competitor trademarks but the engine does make it possible if the advertiser should choose to and will stop its use once a complaint is received.

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When can I use a trademark in the copy of search engine adverts?

All trademark law applies to online content including search engine adverts. Search marketers should make sure they only use a trademark in their adverts in the below instances:

1. Sales - A search ad can include a trademark when authentic goods or services are being distributed through a website under the trademark.

2. Information provider - A search ad can include a trademark when the website’s focus is providing information related to the trademark (such as reviews or news).

3. Ordinary terms - If a trademark is also an ordinary term it can be used under UK law if it is clearly being used as the dictionary term. For example "apple".

However, if a trademark owner complains about your use of their trademark you may not be able to continue using it even in the above categories.

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What if a trademark of mine is being used by another company without my permission?

This depends on whether it is being used:

i) lawfully or not and;
ii) in paid or natural search.

In natural search, the advertiser using the trademark is entirely responsible and you must deal with them directly.

In paid search, companies that advertise in search engines are again responsible for the use of trademarks but search engines will get involved when necessary. In the first instance the IAB recommends that you contact the advertiser directly to raise awareness of, and attempt to resolve, the issue. If the issue remains unresolved you should contact the search engine.

Each search engine has customer services that will investigate concerns over the use of a company’s trademark. Once contacted the search engine will review the advert in question and when appropriate either advise the advertiser to remove the listing or remove it themselves.

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What are the rules for misspelt trademarks in search?

Misspelling of trademarks to ride the wave of a popular brand is a problem that long precedes search marketing. However, because search marketing places the responsibility on advertisers to place ads, write ad copy and the keywords they target, it has been thrust further into the spotlight.

The UK Intellectual Property Office states that a trademark is protected on the basis of appearance, so if ‘IAB’ is a trademark, we would only be protected for that spelling. To fully protect against misspelt trademark use you would need to register a series of trademarks in the same application. Protected trademarks can be found using the UK Intellectual Property Office website's trademark enquiry form.

Taking both this and the search engine policies into account, bidding on unregistered misspelt trademarks is permitted by law, and so is their use in the advert copy. The IAB does not recommend such practices however.

Of more importance than your competitors bidding on misspelt trademarks, the IAB recommends that you monitor misspelt searches and then consider bidding on them yourself to help consumers find your site. This is important because a consumer is likely to mistype a search by accident and you should help them find your site.

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What do I do if I believe someone is using my trademark against search engine policies?

If a company is bidding on or using your trademark for search engine adverts first check the rules of the search engine you have seen the advert on. As discussed above, each search engine has a slightly different trademark policy and the company could be using your trademark legitimately.

Once you have checked to confirm the trademark is being used inappropriately, contact the advertiser directly. It could be that they don’t realise there is a problem. In most cases a simple email or phone call will be the quickest way to solve the problem.

Should the company not stop or change their use of your trademark you can contact the search engines directly. Each search engine has a complaints form and procedure (found at the bottom of this page).

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What happens if the problems continue?

If, after all of the above steps have failed, and the advertiser continues to illegally use your trademark in ad copy, you can decide to take legal action against the offending advertiser through the UK Intellectual Property Office resolving disputes page.

What are the rules for affiliates?

In the UK, affiliate websites are entitled to use trademarks as long as they adhere to the rules discussed above.

The IAB recommends that the owner of a trademark offers clear guidelines for its use by affiliates in search engines within their brand guidelines.

What happens if I have used someone else’s trademark in search marketing?

If a concern has been raised over you using a trademark in your advert copy in a search engine that proves to be valid, the IAB would recommend that you immediately stop using the term and then ask permission! If you have a legitimate use for the trademark, you can avoid any further dispute by explaining to the owner and seeking permission for use.

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Useful links

The UK Intellectual Property Office has a large UK trademark law resource - but for search engine specific information, please view the related pages on each of the search engine websites at the foot of this page.

Search engine trademark help pages:

• Google’s Trademark Complaints Procedure

• Microsoft adCenter Trademark Policy

• Yahoo! Search Marketing’s Editorial Guidelines