Google to Unblock Trademarked Terms

In a wonderfully comprehensive article on the latest developments in the search advertising trademark controversy, Stefanie Olsen of News.com reports that Google will no longer be setting itself up as a paralegal arbitrator enforcing trademark holders' complaints. Rather, it seems that pretty much any allegedly trademarked term will be fair game for the AdWords program until a court says otherwise.

Told you so. And bravo, Google. The reasoning cited by Google, according to the article, is that "it carefully evaluated the legal landscape before making its decision and is betting on a long-held tenet of trademark law that holds there is no infringement in the use of a registered mark unless there is a likelihood of consumer confusion." This makes eminent sense.

I've been following this issue since the inception of AdWords Select two years ago, and fielding plenty of criticism for repeatedly advocating the position that Google is now officially taking. Lengthy sections in various interim updates of my "21 Ways to Maximize Results on Google AdWords" report argued this point. In Page Zero Advisor (my premium newsletter), Traffick Occasional, and as moderator of I-Search Digest, I maintained that stance. I hoped, at best, that I was providing a devil's advocate perspective to encourage advertisers not to fetter themselves willy-nilly. But I really never dreamt that Google would take this particular position at this early stage. Maybe they're in a fightin' mood on account of the hockey playoffs.

At Search Engine Strategies New York recently, there was an enlightening session called "Leggo My Trademark," in which representatives of both sides of the debate made good points, but in which the advertiser's and Google's side was finally taken by a more eloquent expert than previously. On March 3, 2004, I commented on this in Traffick Occasional, a comment which is worth reprinting now for the benefit of non-subscribers (see below). (The issue was titled "The Best thing Since Wrestling.")

The one unanswered question, discussed with fellow conference attendees at the time, is whether Google would ever "unblock" the existing blocked trademarks if there were ever any definitive legal decisions or policy changes on this issue. In other words, would we as advertisers ever get access to trademarked terms that had previously been blocked, or would these policy decisions be "grandfathered"? From Olsen's article, it appears at this stage that the answer could be "yes." Welcome news for guerrilla advertisers and a potential thorn in the side to arrogant trademark holders everywhere. Evidently, though, the change hasn't yet come into effect. I already had a new keyword blocked today quite quickly after entering it ("elance"); evidently this term was on Google's stock list of disallowed trademarks. Will it come off the list? Will eBay come off the list? Will there even be a list? This will be interesting to watch.

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[Excerpt from Traffick Occasional #6, March 3, 2004]

Speaking of that legal issues session... (whoops I feel a song coming on)....

So the FCC won't let me be
Or let me be me so let me see
They tried to shut me down on MTV
But it feels so empty without me

...legal counsel for American Blind, the outfit that's suing Google for allowing competitors to advertise on American's trademark, got a little overheated today in his rhetoric (although all the panelists including him were great, and measured in their comments, which shows we've come a long way in the past six months... formerly it seemed like the world was ready to crucify Google AdWords in the name of trademark protection, placing much higher standards on them than would seem justified by legal history as explained by excellent panelist and author Douglas J. Wood)... calling Google "like a drug dealer" and saying pointlessly that they are allowing this "traffic in keywords" and that they are "trafficking in something-or-other" etc. Well, I never!

Somehow I always suspected it would come down to this. But while the controversyyyy creates billable hours for lawyers and pundits, it is all going to turn out to be much less interesting than people think. It's going to be shown that most of the advertising that appears near search results will be seen as TOTALLY LEGAL because it couldn't be construed to be reasonably causing consumer confusion. People who look at the ads based on the keywords they type aren't "directed to" a competitor's website as some scaremongers would have it. Far from it. They might not even look at the ads all that closely, and if they do, surely it was by choice. And, ahem, the ads are labeled "sponsored links." How much more disclosure is warranted?

So then what? When all this stuff is actually legal as we advertisers thought it would be...? And then we discover that Google and some of their competitors like Overture have a long list of trademark holders for whom they rolled over, and blocked other advertisers from using those terms? Will Google unblock 'em? Everyone knows Ebay advertises on every term on the sun, because you really can buy brand-name products on Ebay so arguably that's fair use. Problem, though: it doesn't work both ways. You can't advertise on the term Ebay, even *if* a court of law might someday find that it's fair use. Google has blocked it.

At some point, when the law gets itself sorted out, we'll need Google to stop playing paralegal and remove all those blocks. Those have been a point of annoyance for my friend, a local lawyer, who has argued vociferously on this point for some time because he's not only a lawyer, he's an AdWords junkie. Finally, as the Douglas J. Woods of the world (who understand the legal history of advertising) get more traction in the debate, more people are seeing the light. A trademark violation in this context means something that is likely to legitimately cause consumer confusion. Some rulings in the past few years have indicated little more than judge confusion as they simply haven't understood the technology. Metatags and keyword suggestion tools are the devil, helping seedy criminals steal business from Home Depot and Playboy, right? Not! As Mr. Wood pointed out, what some may call trademark infringement is good old-fashioned competition, a principle we hold dear, a principle which, among other things, lowers prices, provides choice, and drives innovation in our society.

The one-sidedness of the trademark holders' increasingly-frequent threats finally caused Google to finally stand up and say, you know what, we're going to fight this American Blind thing as a test case. We're no longer going to allow legal arguments which have yet to be tested in the courts determine our policies. American Blind will be doing Google a big favor if they keep moving ahead with this one, and a disservice to Google and the advertising community if they give up on it. We can only hope that the lengthy process sheds light on the legalities. And if that's a controversial viewpoint, well... (sing it with me)...



Now this looks like a job for me
So everybody just follow me
'Cos we need a little controversy
'Cos it feels so empty without me

Hum dee dai la la hum dei dei la la la la la
Hum dee dai la la hum dei dei la la la la la

Posted by Andrew | | | Permalink

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