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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.


 

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<b>Quotations, Rules, Aphorisms,
Pithy Tips, Quips, Sage Advice,
Secrets, Dictums and Truisms in
99 Categories of
Marketing, Business and Life</b>
<a href="http://bookstore.napco.com/images/TakeawaysPreview.pdf" target="_blank" class="moreInfo">
<font color = "red">Click Here to Look Inside</font>  
</a>
<i>"Denny Hatch’s latest, Career Changing Takeaways, is an extraordinary reflection of one of the direct marketing industry’s most enduring polymaths. With quotes and “takeaways” on every conceivable aspect of business and marketing life and beyond, it’s the sort of book you’d give your children and children of friends on graduation day as a guide for life, especially in business. Worth having on your desk to look to for inspiration." </i> 
 —Charles A. Prescott. Editor, The Prescott Report

<i>"Often the most profound advice can be distilled into two or three sentences. CAREER-CHANGING TAKEAWAYS is filled with bullet points of advice that really could change the direction of your career. Save the book as a reference and turn to a particular section as you need it, or read it from cover to cover as I did."</i>
 —Arnold Howard, Marketing Director
Paragon Industries
<b>About “CAREER-CHANGING TAKEAWAYS”</b>

Since 2005, Denny Hatch has been writing <b>BusinessCommonSense.com</b> —a free e-newsletter that looks at current news and connects the dots back to the reader's life and career. Every issue contains Takeaway Points—a short collection of bulleted one- and two-liners or short paragraphs at the end of each piece-that summarize why a particular issue might be worth reading.

The very best of Denny's Takeaways have been assembled into this collection that readers can use not only to make career decisions, but also add power, emotion and erudition to their correspondence, memos, reports, PowerPoint presentations, white papers, articles and books.  Here’s a sampling: 

<b>17 Career-Changing Takeaways—
Fascinating, Memorable and Fun </b>

<i>"When you innovate you've got to be prepared for everyone telling you you're nuts."</i>
—Larry Ellison 
Oracle founder, owner of Rising Sun, second largest yacht in the world
 
<i>"You'll never have to apologize for giving people some fun."</i>
—Bill Veeck (1914-1986) 
  Major league baseball owner, author of "Veeck . . . As in Wreck,"
(who sent 3-foot-7-inch stunt man Eddie Gaedel to pinch hit for the Cleveland Browns, August 19, 1951)
 
<i>"The customer or prospect doesn't give a damn about you, your company or your product. All that matters is, 'What's in it for me?"</i>
—Bob HackerDirect marketing guru 
Founder of the Hacker Group, Seattle
 
<i>"It's easy to remember Hacker's dictum (above): Always listen to W-I-I-F-M."</i>
 —Denny Hatch

Here are thousands of takeaways in 99 Categories!  Find the quotable gems that will stick with you and provide the roadmap no matter if you are writing a business letter, hiring or firing an employee, looking for a job, making a speech, or simply maneuvering life!

<b>CONTENTS</b>

Note From Denny Hatch — 1) Advertising — 2) Advertising, Rescinding —  3)  Agencies —  4)  Art & Antiques —  5)  Awards —  6)  Book Publishing —  7)  Brands and Branding —  8)  Brand Trashing — 9) Business, Acquiring a — 10)  Business, Expanding a — 11)  Business Models — 12)  Business, Starting a — 13)  Charities — 14)  Checklists — 15)  Communications, Corporate — 16)  Competition — 17)  Consultant, Being One   — 18)  Consultants, Hiring — 19)  Controls — 20)  Copywriting — 21)  Creativity — 22)  Corporate Culture — 23)  Customer Relationship Magic — 24)  Customers, How to Know — 25)  Data-Data Management — 26)  Data Protection — 27)  Decision Making Process — 28)  Design  — 29)  Direct Mail   — 30)  Direct Mail Copy & Design — 31,  Direct Mail Letters — 32)  Distribution — 33)  Due Diligence — 34)  eBay — 35)  E—Books — 36)  E—mail — 37)  E—marketing — 38)  Employee, Being  One — 39)  Employees, Dealing with — 40)  Energy — 41)  Fulfillment — 42)  Guarantees & Pledges — 43)  Headlines — 44)  Help—Wanted Ads — 45)  Hiring & Firing — 46)  Humor  in  Advertising — 47)  Information, How to Absorb — 48)  Internet — 49)  Internet & Your Career — 50)  Interviews, How to Handle — 51)  Investing — 52)  Job Search — 53)  Job Search: Cover Letters — 54)  Job Search: Résumés — 55)  Leadership à la Gen) George S) Patton, Jr.) — 56)  Legal Matters — 57)  Letters — 57)  Letters in Newspapers — 59)  Life Rules  — 60)  Mailing Lists — 61)  Management — 62)  Marketing — 63)  Marketing, Direct — 64)  Marketing, Guerrilla — 65)  Marketing, Internet — 66)    Marketing, Lead Generation — 67)  Marketing Rules — 68)  Markets, Surrounding Your — 69)  Media — 70)  Media  Selection — 71)  Meetings — 72)  Moonlighting — 73)  Murphy’s Law — 74)  News — 75)  Offers — 76)  Outsourcing — 77)  Overwork — 78)  Politics — 79)  Pre-emptive Advertising — 80)  Pro Bono Work — 81)  Products, Launching New — 82)  Public Relations (P)R)) — 83)  Public Relations, Blitzkrieg — 84)  Public Relations Crises — 85)  Public Speaking — 86)  Researching Competitors — 87)  Spokespersons — 88)  Surveys — 89)  Sweepstakes — 90)  Telemarketing — 91)  Testimonials — 92)  Testing — 93)  Traveling — 94)  Vision, Corporate — 94)  Web Abuse — 96)  Web Content: Free v) Paid — 97)  Website Design — 98)  Women — 99)  Writing

<b>Here are fourteen more Takeaways:</b>

<i>"A great cover letter is the golden key to any job search. Yet despite a glut of advice books and websites, an estimated 85% of cover letters are so flawed that senders never land an interview, career coaches say."</i>
 —Joann S. Lublin, Reporter, The Wall Street Journal

<i>"Always hire A’s. In the first place, they are more fun to work with. Secondly, they push you into excellence."</i>
 —Denny Hatch

<i>"You can observe a lot by just watching."</i>
 —Yogi Berra

<i>"If you want to dramatically increase your response, dramatically improve your offer."</i>
—Axel Andersson
Founder, Axel AnderssonAkademy, Hamburg
 
<i>"Executives talk a blue streak about the importance of developing talent. But many quickly form rigid opinions of staffers, and then resist changing those views despite evidence that employees have matured, become more seasoned or possess talents that weren't apparent when they were first hired. Conversely, some bosses continue to insist that an employee is a star even though he or she was just never that talented."</i>
—Carol Hymowitz
 Reporter, writer, Forbes, The Wall Street Journal
 
<i>"I look for a business I can understand."</i>
—Warren Buffett 
Founder Berkshire Hathaway
 
<i>"Half the money I spend on advertising is wasted; the trouble is, I don't know which half."</i>
—John Wanamaker (1838-1922)
  Legendary retailer
 
<i>"If I had one takeaway point to suggest to horseplayers, private equity firms and venture capitalists, it would be the classic advice of successful horseplayers: Winning is knowing when NOT to bet."</i>
—Denny Hatch
 
<i>"If your company has a clean-desk policy, the company is nuts and you’re nuts to stay there."</i>
—Tom Peters 
Business guru, co-author of “In Search of Excellence”
 
<i>"A neat stall is the sign of a dead horse.”</i>
—Sign on an Ogilvy & Mather office wall. 
 
<i>"I don't know the rules of grammar... If you're trying to persuade people to do something, or buy something, it seems to me you should use their language, the language they use every day, the language in which they think. We try to write in the vernacular."</i>
—David Ogilvy (1911-1999)
  Founder and Chairman, Ogilvy & Mather,
 
<i>"My advice: Don’t write anything in an email that you wouldn’t want to see on your office bulletin board or hear announced over your company’s loudspeaker."</i>
—Carol Kleiman
  Reporter, The Chicago Tribune

<i>"Legendary direct marketer Bob Hemmings once worked for a jeweler on New York’s West 47th Street diamond district where the merchants rent counters and window space in a kind of giant co-op. Every evening all the jewelers would dutifully take their diamonds out of the showcases and lock them in the safe until the next morning. All the jewelers, that is, except for Hemmings’ boss, who would leave his diamonds out all night and put his customer list in the safe. 'If I lose the diamonds, the insurance company will pay,' he told Hemmings. 'If I lose my customer list, I am out of business.'"</i>
—Denny Hatch

<b>“CAREER-CHANGING TAKEAWAYS,”</b> published February 24, 2011 by The Target Marketing Group, ISBN: 978-1-931068, 260 pp, 6” x 9” trade paperback, perfect bound.
 
<b>About Denny Hatch</b>

Since 1976, Denny Hatch has been a consultant, copywriter and designer in the field of direct marketing. In 1984, with his wife Peggy, he launched the newsletter, Who’s Mailing What!, which was based on a library of over 200,000 direct mail samples. In 1992, his company was acquired by North American Publishing Co., in Philadelphia, where he is a regular columnist for Target Marketing magazine and editor of the e-newsletter, Denny Hatch’s Business Common Sense, published by the Target Marketing Group.  He is the author of:

<u>Business Books</u>

Million Dollar Mailings * Method Marketing * 2,239 Tested Secrets for Direct Marketing Success * priceline.com – A Layman’s Guide to Manipulating the Media

<u>Novels</u>

Cedarhurst Alley * The Fingered City * The Stork

<u>Memoir</u>

Jack Corbett, Mariner CAREER-CHANGING TAKEAWAYS

Quotations, Rules, Aphorisms, Pithy Tips, Quips, Sage Advice, Secrets, Dictums and Truisms in 99 Categories of Marketing, Business and Life Click Here to Look Inside "Denny Hatch’s latest, Career Changing Takeaways, is an extraordinary reflection of one of the direct marketing industry’s most enduring polymaths. With quotes and “takeaways” on...

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