In search engine pay-per-click (PPC) advertising, the unscrupulous use of a competitor's trademarked terms is a murky business and contentious topic. With a seemingly anonymous perpetrator, it's a relatively easy offense—and sets off a torrent of trademark-infringement concerns for many companies.
One comes across three types of trademark poachers:
- Scallywags—Your trademarked name or phrase is purchased to trigger an ad for your competition. There's no mention of you or your products in the ad, but there's an attempt to take advantage of the marketing you've done.
- Scoundrels—Your trademarked name or phrase is used in the text of someone else's ad. This is one of the only times that the PPC engines will step in on your behalf, as this violates the terms of service (TOS).
- Thieves—Finally, a combination of both previous tactics is used to try to create confusion among consumers, leading them to believe that your competitor is actually you. This is truly trademark infringement.
Who will protect your brand equity? Companies selling PPC services (Overture/Yahoo, Google, FindWhat, and many more) take a hands-off approach. They put the burden of acceptable, responsible usage and advertising on their users, thus making trademark owners police these ads. The PPC providers claim they are not breaking the law, or in any way directly harming a trademark. Their defense is that advertisers abuse their system, poaching others' marks.
To protect a brand—your brand—the best defense is a good offense. Trademark owners need to be proactive in finding and stopping those who look to profit from any brand that's been established.
Use technology to gather evidence and save legal fees
In the US, the PPC providers use their hands-off stance to further saddle the trademark owner with the responsibility of contacting the offender and resolving the issue directly. This situation presents another hurdle for trademark owners: collecting evidence.
Cases of trademark infringement are traditionally difficult to prosecute. The plaintiff or trademark owner must be able to prove beyond doubt that the defendant deliberately tried to create confusion and mislead consumers.
By the time a case gets to court, those illegal PPC ads will have disappeared. But it's vital to capture a history of the illegal activity with as much detail as possible. So, apart from being a difficult task, the legal fees for gathering this evidence can be prohibitive.
Manually monitoring PPC ads daily across increasing numbers of search engines is a tedious, time-consuming task. Technology solutions can alert you to possible infringement on your trademark and automatically capture the evidence you need.
Gotcha! Now what?
Once you've found an offender, it's up to you as a brand owner to take the first steps. Often, a stern but polite request to cease and desist is enough. Not all of this trademark poaching is malicious; sometimes, advertisers aren't even aware of what they're doing or have done.
If the offending advertiser ignores your request, have your attorney send a similar cease-and-desist request on the law firm's letterhead. You may want to include a description of the evidence gathered.
In our experience, this second communication is usually enough to get offenders' attention and quickly encourage them to back down. Malicious offenders do think that it would be hard to prove a trademark infringement case against them; however, when faced with the promise of legal fees, days in court and stacks of paperwork, most such businesses pull the ads.
Regardless of the challenges that PPC has presented to trademark owners, it is critical for them to be vigilant. Every attack on an established trademark chips away at the integrity of the original brand. After enough such nefarious activity, the brand equity that takes years to establish begins to erode.
