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Is it possible to get sued for using trademark name in google adwords?

Discussion in 'Legal Issues' started by Bullz, Jan 29, 2009.

  1. #1
    Pretty much the title explains it, but here are the details.

    I am using a popular/well known company name in my Google Adwords searches. So whenever someone types in that company's name, my ad appears in the Google sponsor.

    I have already been contacted by their lawyers and received probably 2 warnings from them regarding having their company name/trademark removed from my Adwords or else they'll sue.

    After some time and discussion, we decided to have it removed because we didn't want to spend money getting a lawyer to look into this.. though we actaully did, the lawyer seemed clueless about what google adwords even was... so a real waste of money there. Not wanting to spend MORE money, we decided to remove it.

    It really sucks to remove their name/keyword because we sell the same/similar product, and a handful of our sales come from that keyword. We sell a similar product of theirs for about 1/3 the price since theirs is brand name.

    So does anyone know what the legalities of this is? Am I allowed to use their name as a keyword? I've read up some other stuff online regarding Google vs. Geico and other stuff, but wanted to see if anyone else knew something about this.

    I'm posting this in Legal Issues as well as Google Adwords since it's a mix of both.. feel free to remove one of them from whichever you think is best Mods. Thanks!
     
    Bullz, Jan 29, 2009 IP
  2. Folbiddle

    Folbiddle Peon

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    #2
    Yes it is possible. Of course it's possible. Sometimes companies specifically tell you to not use their trademarks, etc.

    If you are making money off your own product and you are using Adwords + a similar products name to advertise YOUR product you are just begging to be sued.
     
    Folbiddle, Jan 29, 2009 IP
  3. Bullz

    Bullz Peon

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    #3
    Hmm... not sure if you misunderstood me, or maybe I didn't explain it clearly enough.

    Here's a quick example for anyone else reading this post.


    Pepsi (Them)
    Jababagooey (Me, some random company name)

    1.We both sell soft drinks. But I don't mention the word Pepsi in my adword.

    2.I have the keyword Pepsi as one of my keywords in adwords.

    3. Someone goes to google and does a search for the trigger keyword, "Pepsi".

    4. My ad appears saying something like...

    Soft Drink
    Try our great tasting
    soft drink today!

    When you click on the link, it leads you to a landing page on our site that says, "We offer delicious soft drink with similar taste as Pepsi."

    Can anyone tell me which part of that is wrong? Or all of it is wrong?


    Also, whoever replies, please let me know if you are SURE of what you're saying, or you are just giving your OPINION and saying what you THINK is the correct answer. I'd prefer to get the correct answer, than just someones opinion or what they think might be right.

    Thanks to anyone for the help. :)
     
    Bullz, Jan 29, 2009 IP
  4. Business Attorney

    Business Attorney Active Member

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    #4
    Not only is it possible for the owner of the trademark to sue, trademark owners have sued and have won in a significant number of the cases brought.

    It is a murky enough area that you may win or you may lose, but if the trademark owner decides to pursue the issue, it is clear that whether you win or lose it is likely that you'll spend money on legal fees.
     
    Business Attorney, Jan 29, 2009 IP
  5. 69Firebird

    69Firebird Peon

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    #5
    I think it might be considered misreprentation and deceptive advertising practices. In the worst case scenario you could not only be liable for infringement damages but the FTC might come after you as well. I personally would advise against using trademarks in Adwords or on your website.
     
    69Firebird, Jan 30, 2009 IP
  6. rohan_shenoy

    rohan_shenoy Active Member

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    #6
    Well, you can get "sued" for any damn thing! Perhaps you should have asked "Will I win the suit If I get sued?" :D

    and yes, you can get sued in this situation!
     
    rohan_shenoy, Jan 30, 2009 IP
  7. Bullz

    Bullz Peon

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    #7
    Okay...here's another analogy....


    Let's say, I don't use that company's trademark in my ad or even in my trigger keywords.

    Here's an example...

    Company trademark name is... Canadas Tastiest Cows Inc.

    My trigger keywords are...

    Canadas Tastiest
    Canadas Cows
    Tastiest Cows
    etc..

    And my ads are listed to show up for broad searches..

    So now someone does a search for Canadas Tastiest Cows, and my ad shows up beside their name because I have trigger keywords that contains those word they searched for....

    NOW... is THAT trademark infringement and are they right to sue and can they win, if they decide to sue?
     
    Bullz, Jan 30, 2009 IP
  8. Bullz

    Bullz Peon

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    #8
    I've also found a few examples...

    The searched word "Toyota" triggers a few ads from Toyota themselves, as well as a few other small companies, but also an ad from HyundaiCanada.

    http://www.google.ca/search?hl=fr&q=toyota&btnG=Rechercher&meta=


    Keyword: Honda. You find Hyundai Ad in that trademark keyword, as well as Ford and some other small company.

    http://www.google.ca/search?hl=fr&q=honda&btnG=Rechercher&meta=


    Keyword: Audi. You find BMW as the first Ad, as well as a bunch of other small companies using the word Audi in their ad.

    http://www.google.ca/search?hl=en&q=audi&btnG=Search&meta=


    As you can clearly see here. Many BIG corporate companies, are using their competitors trademark name as a trigger keyword for their ads. What's going on here? How come these guys haven't sued each other yet and how come all these guys are doing it to each other?
     
    Bullz, Jan 30, 2009 IP
  9. druidelder

    druidelder Peon

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    #9
    Is THAT trademark infringement? Are we talking about the US or Canada? In the US the answer is... possibly!!!

    Okay, that seems like a lame answer, but the truth is that there is no specific law about it so all the decisions that have been made are based on interpretation of existing law. Decisions have come down both in the favor of the trademark holder and the advertiser.

    Can they sue? Yes. Will they win? There is no simple answer for this. So far it seems to depend on what judge you land in front of (if it goes that far).

    Look up cases on Merck and Zocor, Google v. Rescuecom... there are many more and the decisions are all over the place.

    Why do they do it to each other and why haven't they sued? It is easier to try to establish legal precedent by suing small companies that are less likely to win due to lower resources than it is to sue your multinational competitor that has the resources to keep the case in court for years.
     
    druidelder, Jan 30, 2009 IP
  10. Neticule

    Neticule Peon

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    #10
    I would play it safe man, most likely you would not get sued, but they could, and if they did, they could probably win.
     
    Neticule, Jan 30, 2009 IP
  11. gust

    gust Active Member

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    #11
    Unless you are misrepresenting your product as being "Pepsi", I don't see the problem here. The keywords here are: Are you confusing or misrepresenting your product as being Pepsi?

    You ad is being displayed when the trademarked word "Pepsi" is typed in google. You are not infringing on their trademark. Pepsi could try and sue Google, but I don't think they have a case. GEICO tried in the past in a similar case and they've lost.

    Read here: http://www.theregister.co.uk/2005/08/15/google_loses_adwords_trademark_case/

    I'm not a lawyer but I'm currently studying law.
     
    gust, Jan 30, 2009 IP
  12. hostlonestar

    hostlonestar Peon

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    #12
    If the lawyers have already contacted you at least once, and even worse, twice, then you may just want to hang up that idea and quite riding the other companys good will of the name. That is all your doing, and your begging to be sued. If I was that company I would notify google and have them terminate your account.
     
    hostlonestar, Jan 31, 2009 IP
  13. Dave Zan

    Dave Zan Well-Known Member

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    #13
    Bullz, see the Rosetta Stone vs. Rocket Languages dispute.
     
    Dave Zan, Jan 31, 2009 IP
  14. nonprofitattorney

    nonprofitattorney Peon

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    #14
    Sometimes companies specifically tell you to not use their trademarks, etc its true. May be its not possible for the owner of the trademark to sue, trademark owners have sued and have won in a significant number of the cases brought.
     
    nonprofitattorney, Feb 2, 2009 IP
  15. Mike1958

    Mike1958 Peon

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    #15
    I believe that comparative advertising is fair use of a trademarked / brand name. But then again, defending in court is expensive even if you are right.
     
    Mike1958, Feb 3, 2009 IP
  16. druidelder

    druidelder Peon

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    #16
    Comparitive advertising is when you actually compare two products. That is different than using keywords in an ad campaign (particularly if the ad does not list that product at all). This could be considered by some judges as a form of passing off.
     
    druidelder, Feb 4, 2009 IP
  17. xrachel.louisex

    xrachel.louisex Peon

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    #17
    I believe you can be sued. You're using their product name to sell your product, and are stealing their traffic and potential customers etc. As the person was looking for them not you. I think doing a quick google search will come up with some cases on it.
     
    xrachel.louisex, Feb 4, 2009 IP
  18. incentivesearch

    incentivesearch Peon

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    #18
    If I read what you are doing correctly you are using the other company's name behind the scenes (i.e. the consumers do not actually see it). I highly doubt that you would lose a lawsuit for doing this unless the ad you are running has a high likely hood of causing consumer confusion which is the typical standard in the U.S for trademark infringement.

    However, you can be sued for anything. All it takes to sue someone is to file a few pieces of paper. The question is not whether or not you will be sued, it is whether or not you can afford the legal fees to fight the law suit. Large corporations have used this tactic for years. They file a lawsuit they have no hope of winning because they know the smaller company's cannot afford a lawyer to fight back.
     
    incentivesearch, Feb 4, 2009 IP
  19. druidelder

    druidelder Peon

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    #19
    incentive,

    In Edina Realty v theMLSonline keywords used for adsense ads were found to be close enough to trademark infringement for the case to go to trial, even though the trademark was not seen by consumers. It was settled out of court with the competitor paying Edina Realty some money. In the Merck issue, that judge threw out the suit before it went to trial. At this point, until there is enough case law to establish a wide precedence it will really boil down to who the judge you end up in front of is.
     
    druidelder, Feb 4, 2009 IP
  20. kingyman123

    kingyman123 Banned

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    #20
    If the company tells that dont bid on any trade marks keyword, then ur not supposed to do. if not, then they will surely sue you.
     
    kingyman123, Feb 6, 2009 IP