23 replies to this topic

[laura]

I know you're not supposed to buy other people's brand names on AdWords, like Nike or Walmart etc, but what about something like product names? For instance if you look up the names of games like Daxter or Grand Theft Auto, there are sponsored listings (usually eBay, shopping.com, amazon, etc).

I am allowed to terms like that on Google and/or Yahoo? I'm not directly selling the product.

[OldWelshGuy]

The answer is simple. If it is a registered trademark, then it is illegal to use it for ANY reason. Whether or not it gets persued legally is another matter, but you will be breaking trademark law.

[DayWalker44]

OWG, but we're not actually 'using' the trademark. We're simply triggering ad's based on that keyword. Lol. From what I know on this area, the laws on trademark bidding is very grey. Depending on which country's laws, some are more strict than others. Am not encouraging it but one can always bid on certain keywords until they are informed to stop doing so or face legal action. Lol!

[jehochman]

I can advertise on a Google search for "Coke", with an ad that says "Try Pepsi for Better Flavor and More Fizz." People often use this strategy in the US.

[goodman]

The answer is simple. If it is a registered trademark, then it is illegal to use it for ANY reason. Whether or not it gets persued legally is another matter, but you will be breaking trademark law.

Your answer is wrong for the US, though it may be correct in the UK/EU.

Trademark isn't carte blanche to prevent all use of corporate names. There is such a thing as "fair use," as has been detailed in some excellent sessions with various legal experts weighing in at conferences like ad:tech and SES.

[OldWelshGuy]

yep, I was talking about UK law, as there was no geographical boundaries. In the Uk, if you bid on Coke for an add for Pepsi your ass wouldn't touch the ground once you got found out. Fair use means using the trademark when you need to use it to illustrate a point or fair mention of it in everyday publishing. IE "he picked up his vodka and coke sipping it slowly while lazing in the evening sun". Using a competitors trademark in your advertising in the uk might get you into hot water. especially hiding the use of it.

I understood Google to have taken action with regard unfair use of trademarks?

[ewc21]

What about for companies whose names are generic like The Brand Company, The Shoe Repair Shop, The Bookstore? I guess anyone who would search for such terms don't necessarily have these companies in mind.

[jehochman]

Now you all know why we (USA) had that thing in 1776.

[Monty]

I think too many people do this (using other's generic brand name) with impunity so I don't consider this to as a crime. It's easy to prove you meant smth else...

[laura]

I have the feeling that people like eBay & Shopping.com can legally use the trademarked game names because they are selling the games. If I am not selling the games directly, I assume I might get in trouble if I bought and used those keywords on AdSense and/or Yahoo Search Mktg., even if I am pointing to a site relevant to the games. But what if my site is something like GTA San Andreas cheats? I dont sell the game, but I provide info relevant to the game itself. Can I use the game name?

[OldWelshGuy]

laura you have just hit the fair use on the head. If you are selling the goods (legally), then of course you can use trademarks. The grey are comes in your last line, in that while you can use it, they can technically tell you not to.

To EWC21, : If something is too generic (ie windows) then of course it is looked at differently, that is to say that window manufacturer MUST use the word windows in his advertising, I am not sure but I think this is a limited trademark (I have a guy on my rugby forum who works at the UK patent office dealing in trademarks, so will ask him for clarification.

To jehochman:

[DayWalker44]

If it is a circumstance whereby one is selling the product through an affiliate agreement, certain merchants do have clear guidelines when it comes to bidding on their trademark for specific keywords.

Most merchants would not allow their affiliates to bid on those keywords (from my experience). However, one way many affiliates go about is by bidding on their competitors keyword, since they aren't answerable to their competitors. LOL.

Which comes back to the original question. What are the legalities in trademark bidding. So far from what most gather, it is illegal and an absolute no-no in UK. In the US however......

[arlen]

... I am not sure but I think this is a limited trademark.

The whole hubub about the Apple Records (Beetles) / Apple Computers suit comes to mind. I thought the original agreement that Apple wouldn't use the name when promoting / selling music was total BS ... I mean, how in the heck can you trademark the name or image of a fruit? As far as I'm concerned "Apple Records" and "Apple Computer" are the trademarks, the symbols are distinct enough to not be confusing, and there is no conflict or case for trademark infringement. Yet Apple Records have won 2 huge previous suits. I didn't hear how the new suit came out concerning itunes (or if it has yet).

To jehochman:   

Edited by arlen, 17 July 2006 - 02:45 PM.

[DayWalker44]

Ya know. To the question as to wether bidding on brand names (trademarks) is good or evil, right or wrong....

Hmm.... Who is to say what's right and what's wrong? Rules can be set, and so can laws be passed. When it comes to this issue in the US, it's pretty much a grey area to my knowledge.

Good or bad? Well, it all boils down to one's perspective!

[ewc21]

Thanks OWG, let me know if you have further info from the guy at the rugby forum. I am asking this because one of our clients corporate name is a real generic term.