eMarketing & Commerce (eM+C)

You will be automatically redirected to emarketingandcommerce in 20 seconds.
Skip this advertisement.

Advertisement
Advertisement
 

3 Key SEM Trademark Questions Answered

March 12, 2009 By Melissa Campanelli

Despite the tremendous growth in paid search advertising revenue, uncertainty in recent court developments has discouraged some search engine marketers from purchasing keywords that are trademarked by others. The fear is if they purchase these trademarked keywords, they could be found liable.

To delve into these issues, eM+C chatted with Mark J. Rosenberg, an intellectual property attorney with Sills Cummis & Gross P.C.'s Intellectual Property Practice group.

eM+C: Please explain how some recent court developments involving trademarks may discourage search engine marketers?

Mark J. Rosenberg: Most courts have taken the position that search marketers can purchase third-party trademarks as keywords if the search marketers are offering genuine versions of the trademarked products.

Courts, however, have not been consistent when marketers purchase trademarks as keywords and are only selling generic versions of trademarked products or comparing products sold on their Web sites with the trademarked products. Some courts have said this is permissible, others have not and still others have said it depends on how the trademark is being used on the Web site. In other words, it’s a matter of context.

eM+C: What are some proactive measures marketers can take to make sure they're not tripped up by trademark issues that can lead to their worst nightmare, such as launching a new product or marketing campaign and receiving a cease and desist letter, or even worse, a lawsuit for trademark infringement a short time later?

MJR: Marketers should conduct trademark searches. At a minimum, they should search the Internet database of the U.S. Patent and Trademark Office to make sure no one else has registered or applied to register the trademark or a similar trademark.

It’s also helpful to use Google to see if there are any common law uses of the trademark, which is a trademark use where the owner has not registered the trademark. The rights of the owner of a common law trademark can be just as strong as the rights of the owner of a registered trademark. If the trademark is very important to the business owner, the owner should have an attorney conduct a full search of the records of the USPTO and a variety of common law databases for the trademark and confusingly similar variations of the trademark.

eM+C: What are some legal ways marketers can use other marketers’ trademarks to enhance their visibility on the Web?

MJR: Search marketers can use other marketers’ trademarks as keywords or in Web site content to identify products or services on their Web sites. They can also use them in Web site content, articles or videos to identify generic versions of trademarked products or make legitimate comparisons to trademarked products.

However, trademarks can only be used to identify trademarked products or services. They can’t be unnecessarily repeated or used in a more prominent size or font than the surrounding text.

For more information, reach Mark at mrosenberg@sillscummis.com.

To learn more about this topic, attend Rosenberg’s session at the Search Engine Strategies 2009 Conference & Expo at the New York Hilton, March 23-27. Rosenberg’s session, "Privacy, Intellectual Property & Trademark Issues: What You Must Know,” will take place on March 26.


 

Companies Mentioned:

SPONSORED CONTENT

MORE ON MANAGEMENT >>

FROM THE BOOKSTORE

To help determine what marketers can do and should be doing with the exponential growth in mobile device ownership, Daniel Rowles gives practical and hands-on training on how to design, implement and measure an effective digital strategy.  Mobile Marketing How Mobile Technology is Revolutionizing Marketing, Communications and Advertising

To help determine what marketers can do and should be doing with the exponential growth in mobile device ownership, Daniel Rowles gives practical and hands-on training on how to design, implement and measure an effective digital strategy. ...

ORDER NOW

This PDF book explores a range of marketing metrics and seek to help marketers to answer such questions as:  What metrics to use to determine whether your marketing/advertising programs are accountable? And is it a waste of money, hence a danger to the company, if your marketing strategy and executions are not accountable? How to calculate how much you can afford to spend to acquire a customer or make a sale. And how can you calculate the customer’s lifetime value? How to understand the relative economics between customer acquisition, retention and CRM. How to measure the funnel process and which improvements will have the most impact.Your download of this book will also include model templates that you can use to immediately calculate and increase profitability for all your marketing efforts.  Profiting from the Magic of Marketing Metrics

This PDF book explores a range of marketing metrics and seek to help marketers to answer such questions as: What metrics to use to determine whether your marketing/advertising programs are accountable? And is it a waste of money, hence a danger to the company, if your marketing strategy and executions...

ORDER NOW

 

SPONSORED CONTENT

MORE ON SEARCH >>

FROM THE BOOKSTORE

As important as email marketing is, being an expert at it is no easy task. But do not fret. Email Marketing 2014 provides the trends and best practices you need to follow. You'll find: 21 email trends charts featuring data from Who's Mailing What!Analysis of 11 effective cross-channel emails Best practices covering everything from email copywriting and design to data, metrics, CRM, deliverability and more4 email case studies Email Marketing 2014 Trends, Best Practices & Case Studies

As important as email marketing is, being an expert at it is no easy task. But do not fret. Email Marketing 2014 provides the trends and best practices you need to follow. You'll find: 21 email trends charts featuring data from Who's Mailing What!Analysis of 11 effective cross-channel emails Best practices...

ORDER NOW

To help determine what marketers can do and should be doing with the exponential growth in mobile device ownership, Daniel Rowles gives practical and hands-on training on how to design, implement and measure an effective digital strategy.  Mobile Marketing How Mobile Technology is Revolutionizing Marketing, Communications and Advertising

To help determine what marketers can do and should be doing with the exponential growth in mobile device ownership, Daniel Rowles gives practical and hands-on training on how to design, implement and measure an effective digital strategy. ...

ORDER NOW

 

COMMENTS

Click here to leave a comment...
Comment *
Most Recent Comments: