Guest Comment: Who Owns The Trademark When It Comes To Search?

A recent entry into the world of search advertising litigation is the American Airlines lawsuit against Yahoo. The suit follows a familiar pattern, namely third parties bid for positioning on protected terms like American AAdvantage, cause confusion, and take undue money away from the trademark owner.

So, who owns the trademark when it comes to search? I’m often asked this question at the  Search Engine Strategies Conference and I’m sure it will come up again in February at the London event next year. 

Where should you draw the line between moneymaker and money-taker? All of this litigation stems from the huge amounts of money that big brands measure from clicks on their trademarked terms in search results but are they simply misunderstanding the search realm?

The Right to Search

Even if the courts can, much of the consuming public can't yet tell the difference between search ads and search listings. If you want to buy airline tickets and you happen to look for an American airline on your favourite search engine, you might just find ads for every airline in the business.

You might also find sites peddling secret upgrade newsletter subscriptions. There could also be travel agents, opaque booking engines, and the occasional competing airline trying to pull you in.

In landmark decision after landmark decision, brands have forced their way into search advertising results without paying attention to which third parties are authorized to unload their goods. The policy of getting away with it until caught seems to ring true. As companies get more desperate for revenue, we can expect litigation to coincide with desperation.

Instead of forcing search engines to be the brand police we can simply tighten up controls on match types so a bid on the term "airline" by British Airways won't appear when we search for "American Airlines."

The Engines Speak

After years of sometimes successful litigation, search sites have pretty robust trademark protection policies. Google's policy is pretty cut and dried. They pledge to investigate possible infringements, and claim to take the situation very seriously.

Google's recent out-of-court settlement with American Airlines may have provided some additional guidance for them. Yahoo’s policy is filled with a bit more legal information and some instructions for setting up a claim.

Yahoo's policy is more strict when it comes to proving trademark ownership, reminiscent of the pre-litigation days when content ruled and all you needed were relevant results and corresponding site content to bid on terms. That may change, as an out-of-court settlement is very likely in the current suit.

What can you do if you don't have a seemingly endless supply of litigators?

Start by paying attention to who you partner with and how your agreements are structured. If you make deals to increase brand exposure with cooperative advertising and its ilk, make sure you clearly state the nature of which keywords are, and which ones are not, off-limits.

I can't help but think that if some brands had a better understanding of how people search and buy, there might be a bit less legal surgery to perform. Study after study shows that buyers start with generic terms and end up on brand or product-specific terms where the purchase is often made. Hence, brand terms get all the credit for transactions and generic (or higher funnel) terms end up twisting in the wind.

Then again, allowing resellers to bid and buy on generic terms that may lead to brand-specific searches prior to a purchase isn't such a bad idea. They absorb the costs and the parent brand reaps the benefits.

By Kevin Ryan

VP Global Content Director

Search Engine Strategies

www.searchenginestrategies.com/london