Bass, Berry & Sims attorney Brian Iverson authored an article for Sales & Marketing Management that examines the legal landscape for using a competitor’s trademark in a keyword advertising campaign and provides practical guidelines for marketers to minimize risk.
The rules around using third-party trademarks as keywords are continuing to evolve, but the general question in any trademark infringement suit is whether use of a mark is likely to confuse consumers as to the source of the goods or services.
The attorneys discuss the typical “likelihood of confusion” analysis courts follow to determine when an advertiser may be liable for trademark infringement. The authors conclude the article with three guidelines for advertisers to minimize risk when purchasing another company’s trademark as part of a keyword advertising program:
- Advertisers can greatly reduce risk through proactive steps to clarify that the keyword-triggered ad is associated solely with the advertiser’s business.
- Advertisers should consider the level of sophistication of their potential consumer, knowing discerning purchasing agents might be less likely to be confused while items “added to cart” without additional research may require more proactive steps to avoid confusion.
- Businesses should understand the specific trademark principles that apply in the jurisdictions where they advertise. Courts in different jurisdictions apply some theories, such as “initial interest confusion” differently. Nationwide advertisers likely should follow the most conservative approach.
While using a third-party trademark can be an effective aspect of a digital marketing campaign, the uncertain and evolving legal landscape creates potential pitfalls for advertisers that do not take proactive steps to mitigate confusion. Those pitfalls can include a heightened risk of costly and time-consuming litigation, or worse, liability for trademark infringement.
The full article, “Can I Purchase My Competitor’s Trademark as a Keyword?” was published February 21 by Sales & Marketing Management and is available online.