Because I’m writing an article on the application of trademark law to paid search, in connection with which I have looked at the trademark and relevancy policies of the search engine’s paid search programs (such as that of Google’s, here and here), this article  from auctionbytes.com (via NameProtect) caught my eye  EBay has apparently requested that Google remove EBAY as a keyword that can be purchased through the AdWord program, thus affecting the EBAY cottage industry.  As one vendor of eBay ancillary software notes, the irony is that EBAY is itself a heavy purchaser of third-party trademarks (the example of GUCCI given in the article appears to have changed – I just put in PRADA and got an EBAY ad). 

Not only that, but without commenting on the applicability of this provision to eBay, I note that search engines’ relevancy policies tend to frown on the purchase of keywords by other search engines (in eBay’s defense, it’s ‘landing pages’ do provide information relevant to the searched term).

This case illustrates the three-way bind that trademark owners, ancillary users, and intermediaries are in.  Representing trademark owners I have encountered situations of unambiguous trademark infringement in sponsored links – competitors of my clients who have purchased my clients’ trademarks and used them as the headline of their ads.  The search engine quickly removed the ads (and didn’t say to my client – go spend $5000 on a UDRP or $50,000 on a civil action).  I note that these particular clients only asked that the offending ads be removed, not their trademarks be completely taken out of the AdWords program.  However if you type in various famous trademarks into Google, you will see a significant number have no sponsored links, suggesting that they have asked Google to remove their trademarks from the program.

Now,  it seems possible to draft a sponsored link that makes a fair nominative use of another’s trademark.  Asking a search engine to remove the trademark makes all such fair nominative use impossible. 

On the other hand, does Google want to keep a former Ninth Circuit court clerk on staff, to apply a nominative fair use test to each $30 transaction?  It’s a private company and shouldn’t be forced to do business that it doesn’t want to do (and part of Google’s success may be attributable to its pattern of avoiding this kind of headache).  It’s easier to remove that particular name from circulation.

However, as Google and the other providers of paid search become the de facto yellow pages of the Net, this article illustrates that the status quo is somewhat unstable.  Stay tuned.

 

IPKat takes Absolut to task for its cooperation with ‘Sex in the City’s fictional ABSOLUT HUNK plot line (see left).  IPKat notes:

“By associating its ABSOLUT mark and campaign with overt sexual imagery, Absolut has arguably tarnished its own mark, in which case its taking moral high ground in opposing third parties from registering such domain names as absolutbabes.com, absolute-erotik.com, absolutporn.com and absolutpussy.com seems just a tad two-faced.”

I suspect that IPKat is being ironic but I respectfully disagree nonetheless.  Everyone uses sexual imagery and I don’t think this is more overt than anything else (after all, the bottle is, as IPKat points out, strategically placed).   More to the point, the Absolut Hunk campaign is fictional, and thus the use is tarnishing only if you miss the joke.

There is a market distinction between such ‘overt’ sexual imagery and pornography.  This is something that the Judge in the Playboy/Netscape case overlooked as well, when she said that Playboy couldn’t be tarnished by being confused with hardcore pornography because it’s sold in the same channels of trade as hardcore pornography (which I don’t think is 100% accurate).  Sex in the City and Playboy, if they were movies, would be rated R (or, judging from this year’s season, NC-17).  They’re not for everbody, but they’re mainstream in the sense that there is no stigma.  Hardcore pornography on the other hand, is not mainstream, does have a stigma, and both Sex in the City and Playboy would suffer economic damage if they were labeled as such.  Marketers who push the envelope, still want to stay inside the envelope.

Disclosure: I used to represent Absolut in a previous life.

 

Here’s a place to start.  WIPO’s booklet: 20 Questions About the Madrid Protocol.  For those of you who have fewer than 20 questions – the Madrid Protocol is an international treaty under which owners of a national trademark application or registration in its home country can ‘deposit’ that application or registration with WIPO in order to obtain an ‘international registration’  That regsitration can then be ‘extended’ to any other country that is a signatory to the Protocol.  The point of all this is to streamline the process of filing and renewing trademark applications, and can result in significant savings.  The U.S. has agreed to the treaty and starting November 2, you (you Americans that is) can begin filing those Madrid trademarks, and you (you non-Americans who live in the 57 other Protocol countries) can begin extending your International applications to the U.S.

Map of Madrid courtesy of and copyright Lonely Planet.

Carl Oppedahl, who has previously contributed to the Trademark Community (for example he freely distributes his Feathers trademark monitoring software), again performs a community service by hosting a listerv on the Madrid Protocol.  Instructions on subscribing are here.  A warning – he gives Homer Simpson as an example.  Do not subscribe to the list as Homer Simpson, as, Carl tells me, several dozen already have (he may be pulling my leg).

UNITED STATES JOINS THE MADRID PROTOCOL

New York, NY – August 5, 2003

On August 2, 2003 the United States deposited its instrument of accession to the Madrid Protocol with the World Intellectual Property Organization in Geneva. This action signals its official membership to the treaty. The U.S. membership will take effect three months after the deposit, on November 2, 2003, to allow time for other treaty members to prepare for the acceptance of Madrid applications both to and from the United States.

“This is a great day for trademark owners,” says Kathryn Barrett Park, the president of the International Trademark Association (INTA). “For more than a decade, INTA has worked tirelessly to overcome obstacles to U.S. membership. Trademark owners will now have the option to use the International Registration system to protect their trademarks in all of the 59 Madrid Protocol-member countries with only one application, in one language and with one set of fees in a single currency.”

The Madrid Protocol is a treaty that facilitates the international registration of trademarks. On October 17, 2002, the U.S. Senate approved an advice and consent resolution paving the way for final action on legislation to implement the treaty, which was signed into law on November 2, 2002. Since then, the U.S. Patent and Trademark Office (USPTO) has sought comment on draft rules for the filing and processing of Madrid applications. Final rules are expected to be released in the near future. With the deposit of the accession documents, the USPTO will begin accepting Madrid applications on November 2, 2003.

For more information about the Madrid Protocol, visit www.inta.org/madrid, or call INTA Public Affairs at +1 212-642-1749.

Toyota seems to be upset by the Chinese car maker Geely Merrie’s logo, shown above.  This article indicates that Toyota has sued Geely.  Interestingly, this ad for U.S. importation of the Merrie supports Toyota’s claims that Geely is falsely stating that the car has a Toyota engine.

In other Chinese carmaker trademark news, this article describes GM’s complaint that the Cherry QQ copies the design of its Spark.