Google & trademarks

News - Hoover's Online: "Google plans to stop limiting sales of trademarks in its popular keyword advertising program, a high-stakes gamble that could boost revenue but also create new legal problems for the company....

Google in the next two weeks will begin allowing U.S. and Canadian advertisers to bid on any keyword, including trademarked terms, sold as part of its sponsored listings service...

According to Jupiter Research, paid search will grow from $1.6 billion in sales in 2003 to $2.1 billion this year, and it will continue to grow at a compound annual rate of 20 percent through 2008... At least some of that growth could be jeopardized if legal rulings bar Google and other search engines from selling off well-known terms such as "eBay" in their advertising programs, experts cautioned...

Google's predicament goes to the heart of many Internet businesses, which rely on the sale of trademarked keywords. Shopping sites like NexTag and Shopping.com, which recently filed to go public, allow merchants to bid on trademarked terms to turn up in search results. Adware makers Claria, formerly known as Gator, and WhenU.com also make their money by allowing marketers to buy and deliver pop-up ads when consumers visit their rivals' Web sites. Claria faces numerous lawsuits related to its trademark policies.

Last year, auction giant eBay asked Google to block advertisers from using its trademark in sponsored search results, for example. eBay listed, in 13 pages, a wide selection of terms related to its trademarks, and Google complied with some of eBay's requests. In another example, Louis Vuitton sued Google and its French subsidiary for similar alleged trademark infringement, and a French court ordered Google to cease the practice and pay a fine.

The law is murky in the United States over how far search engines must go to police trademarks allegedly infringed in paid search services...

January, legal guidance came from a five-year lawsuit involving Playboy Enterprises and Netscape Communications. The Ninth Circuit Court of Appeals ruled that Playboy could pursue charges that Excite and Netscape violated its trademark by selling banner ads triggered by the terms "playboy" and "playmate." Its analysis supported enough of a case for consumer confusion and brand dilution related to Playboy's trademarks that a trial was ordered. Shortly after, Netscape owner America Online settled the case with Playboy for an unspecified amount."