Google Inc. is planning to change its policy governing the use of trademarks in the keywords that trigger its sponsored listings, stoking the debate over where the lines should be drawn in the use of trademarks in search-based advertising.
Google on Thursday began sending e-mails about the policy change to advertisers and trademark holders who had filed past trademark complaints, officials confirmed on Tuesday. The change should occur in the next few weeks.
Previously, Google in some cases had removed keywords from bidding in its AdWords program after receiving complaints from trademark holders, said Rose Hagan, senior trademark counsel at the Mountain View, Calif., search engine.
In the new policy, Google will allow all advertisers to bid on any keyword, regardless of trademarks, in the United States and Canada but also will allow trademark holders to seek the removal of trademarks from the actual text of an ad, Hagan said. She said Google decided that the removal of keywords from bidding also blocked many relevant ads from appearing in the paid results.
"The key impetus for this was that we wanted to provide our users with more choices and balance the interests of advertisers, end users and trademark holders," she said.
Outside of the United States and Canada, Google will still consider removing certain trademarks from keyword bidding when trademark holders complain. The reason for the different approaches relates to differences in trademark laws, Hagan said. In the United States and Canada, trademark infringement depends largely on whether the use of a term causes confusion in the market, she explained.
Search engine marketers and trademark attorneys were quick to doubt whether Google's change had as much to do with improving results for users as it did with more aggressively pushing the issue of trademarks as it finds itself battling lawsuits and questions over it.
"They seem to want to bring the question of how far a search engine can go to a head," said Barry Felder, a partner at Brown, Raysman, Millstein, Felder & Steiner LLP, in New York.
Felder served as lead counsel for Playboy Enterprises Inc. in its case against American Online Inc.'s Netscape Communications Inc. subsidiary and Excite. The case was settled earlier this year after a federal appeals court ruled that it could head to trial. In that much-watched case, Playboy sued for trademark infringement over the use of keywords to link to banner ads of its competitors.
Among the cases against Google is
one filed earlier this year by American Blind and Wallpaper Factory Inc. The Plymouth, Mich., home-decorator retailer has alleged that Google is infringing on its trademarks by allowing competitors to use certain keywords to trigger ads. Hagan declined to discuss whether Google's policy change relates to pending litigation.
David Rammelt, the attorney representing American Blind, said Google's policy change doesn't address the retailers' core case against Google. "When Google is profiting from another company's brand name, we believe the law will not look kindly upon these solicitations," said Rammelt, of Kelley, Drye & Warren LLP, in Chicago.
Next Page: Google's Move in Sharp Contrast to its Competition
Google's position also puts it in contrast with major competitor Overture, Yahoo Inc.'s search advertising division. Overture, in its trademark policy, states that it allows the use of a trademark as a search term when the ad is an appropriate use of the trademark, such as for comparative advertising or commentary.
Many of Google's larger advertisers with well-known trademarks are likely to protest the policy change despite Google allowing them to request the removal of trademarks from ad text, said Catherine Seda, president of Internet marketing company Seda Communication Inc., in Thousand Oaks, Calif. She also said the change could confuse users by allowing them to search trademarks in keywords but then receive ads that potentially could be barred from containing the actual word searched.
"This latest move seems more confusing for search engine users as well as for trademark owners," Seda said. "All this seems to do is let Google [try to get] off the hook from any trademark infringement claim."
But Seda said she doesn't think the move will steer Google away from future trademark disputes.
Google contends that by allowing keywords to trigger more paid results, it is allowing users to determine which ads are most relevant. Its AdWords program, for example, bases the placement of paid search results both on the advertiser with the highest bid and the click-through rate from users.
"We feel comfortable that we aren't likely to confuse users if we allow the ads to be shown," Hagan said. "If there's any possibility of confusion then it would be in the ad text, and that's why we concentrated there."
Editor's Note: This story was updated to clarify comments made by Catherine Seda.
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