Home / Insights / Can One Business Use Another’s Trademark as a Keyword?

Can One Business Use Another’s Trademark as a Keyword?

by | Jun 18, 2024 | Intellectual Property, Trademark

If your business’s trademark is used by a competitor in an invisible way, does that count as commercial use that could constitute trademark infringement? You might assume the answer is “No,” since there would likely not exist evidence of typical infringements like dilution, blurring, or tarnishment. 

However, what if this invisible usage seems to be attracting customers away from your business? Does it then become a valid case of trademark infringement? 

This question has come up in a case involving two competing law firms in strife over Google search term keywords. Accident Law Group was using Lerner & Rowe’s registered trademark name as a keyword for its ads. Thus, when a customer would search “Lerner & Rowe,” the link to Accident Law Group’s website would pop up first in the search results.

You can see how Lerner & Rowe might object to this in principle, but is this a trademark violation? That is the question that the Ninth Circuit Court in Arizona must answer.

Search: “Lerner & Rowe” to Find Accident Law Group

Accident Law Group and Lerner & Rowe are both law firms based in Arizona that deal with personal injury litigation. The case in question revolves around keyword bidding in Google Ads for each of these businesses.

What exactly is keyword bidding? When you search for something on Google, some of the top search results are paid ads rather than organic searches. The results that appear first come from the highest-bidding businesses; basically, if you pay more, you are more visible to customers in search results. 

When Lerner & Rowe discovered that Accident Law Group was using their name as a keyword, they decided to pursue the case from that angle, arguing that the competing firm misused their trademark to cause consumer confusion in search results. This is where the “invisibility” factor comes into play. If the registered trademark in question was not visible to consumers, was it truly being used in commerce?

A federal judge last year found that the likelihood of confusion was too low, dismissing the case on summary judgment. Now, however, the case has been revived through appeal and has arrived at the Ninth Circuit.

Enough for Likelihood of Confusion?

Currently, the Ninth Circuit is grappling less with the commerce question and more with how few customers were confused. Based on Accident Law Group’s call logs during the Google Ads run, 236 out of 10,000 calls pointed to possible consumer confusion. This means that the customers mentioned Lerner & Rowe in some fashion, indicating redirection from the Google search. 

The appellant’s attorney argued that even a handful of cases of actual confusion can prove the likelihood of confusion among consumers. However, one Ninth Circuit judge pointed out that small, isolated numbers only work as proof in an incomplete picture. With all the call log data at hand, the judge said, the case to show likelihood of consumer confusion – more than a negligible amount – is much weaker.

Why was the Ninth Circuit so relaxed about the “non-visible trademark in commerce” question? This question is, in fact, not new to them. They answered it with precedent in Network Automation, Inc. v. Advanced Systems Concepts, Inc. In that case, they found that the likelihood of confusion associated with using another business’s registered trademark as a keyword search term was “insufficient to support injunctive relief.”

Essentially, despite the low ratio of confused customers, the appellant lawyer is asking the Ninth Circuit to consider overturning their own precedent. Why would they attempt that?

The Network Automation case was argued in 2010 and the decision issued in 2011 – 13 years ago. The proliferation of businesses using keywords in Pay Per Click ads to entice consumers away from competitors has grown astronomically since 2010, and as technology changes, sometimes the law lags behind.

In other words, what seemed logical and reasonable 13 years ago may not apply to our increasingly digital world.  

The Wait

At this time, we are simply waiting on the Ninth Circuit Court to make their call. If they overturn precedent, companies may have to stop using competitors’ registered trademarks in keyword search strategies. 

Whether or not they uphold precedent, however, here is an IP lawyer’s opinion: competing businesses should continue to carefully choose their keywords in online advertising. The specifics of one case can still be decided against precedent, and you can still end up spending money on a trademark infringement lawsuit for many years.

Categories

Get in Touch with Us

Hidden
Hidden
This field is for validation purposes and should be left unchanged.

Archives

Marks Gray P.A.

Connect with Us