When American Airlines filed a lawsuit last year against Google claiming trademark infringement, many people hoped that this case would clarify the otherwise confusing jurisprudence surrounding the issue- whether or not Google allowing advertisers to purchase trademarks as keywords for advertising- is trademark infringement. However, in July the companies stated in identical emails, that they have resolved the claims on “mutually satisfactory terms”. The terms, however, remain confidential.
Under its AdWords program, Google allows advertisers to buy keywords. When Internet users enter the advertiser's keyword, Google displays a link to the advertiser's web site in the “sponsored links” section located on the top and the right-hand side of the screen. The controversy arises when companies buy keywords consisting of their competitors’ trademarks.
Whether Google allowing advertisers to purchase trademarks as keywords for advertising is a trademark infringement or not is not an easy question. For the benefit of the consumers I will bring forth some of the arguments supporting that Google neither directed nor contributorily infringed any trademarks.
The critical legal issues concerned under the U.S. Lanham Act are establishing viable “use in commerce” and “likelihood of confusion”.
It can be claimed, that Google is not using the trademarks in commerce since they are not doing the advertising, but simply providing the billboard on which advertisers can write what they want. Google’s use is invisible and therefore it is technically not trademark use under U.S. law. The use can be compared to practices such as placing generic drugs next to name brands in pharmacies and buying billboard ads next to those of competitors.
Traditionally, likelihood of confusion is classified as an issue of fact. However, situations where the likelihood of confusion can be established seem to be very rare. As long as the ads are not misleading people into thinking that clicking on them will take them to the trademark owner’s own site, then it is hard to see how it is trademark infringement.
Even if “use in commerce” and “likelihood of confusion” is established, it can be argued that this is a legitimate fair use. First of all, it provides consumers with useful alternatives and more complete information. Secondly, a consumer searching for a trademark on Google cannot necessarily be seen as the trademark owner’s customer. Therefore, the consumer is not poached by anyone who seeks to educate that consumer about other marketplace alternatives. Finally, the outcome does not seem to be desirable. Google would be forced to consider means for checking keywords against trademark registers. Due to the high number of keywords, the numerous variations of those keywords and the lack of awareness of possible license agreements, it does not seem feasible to do so. Besides, Google already does a lot to help trademark owners. Trademark owners can already restrict advertising on their trademarks without having to run to court. If courts ever held Google liable for selling keywords, Google would be even more aggressive about squelching ads that might benefit consumers.