From the SMX West Conference in San Jose, California, March 21-23, 2017. SESSION: SEO & PPC In Trademark Law: The High Price Of What You Don't Know. PRESENTATION: SEO and PPC In Trademark Law: The High Price of What You Don't Know - Given by Chris Silver Smith, @si1very - Argent Media, Founder & CEO. #SMX #33C2

1. #SMX #33C2 @si1very
See Articles by Chris Silver Smith at: http://marketingland.com/author/chris-smith
SEO & PPC In Trademark Law:
The High Price Of What You Don't Know
Presented by
Chris Silver Smith
CEO, Argent Media
ArgentMedia.com
argentum@verizon.net
Twitter: @si1very
http://marketingland.com/author/chris-smith

2. #SMX #33C2 @si1very
Ø Argent Media Founder - search marketing agency providing SEO, Online
Reputation Management, and Social Media.
Ø Columnist at Search Engine Land & Marketing Land
Ø Expert Witness in:
Chris Silver Smith:
§ Pension Funds v. Former Executives of R.H. Donnelley Corporation
§ Daniel Hegglin v. Google, Inc.
§ PODS Enterprises, Inc. v. U-Haul International, Inc.
§ Academy of Motion Picture Arts & Sciences (The Academy Awards) v.
Godaddy.com, Inc.
§ Jay M. Pensler, M.D. v. FoxTelevision Stations, Inc.

3. #SMX #33C2 @si1very
There are a few recurring themes where trademark
law and internet content are concerned. General trademark
guidelines generally mirror offline usage practices, except
where dynamic content and navigation to content go
beyond the well-established go-bys. A few areas of online
use continue to introduce disruption and court precedents
are still emerging.
Historically, damage awards in trademark cases have
been relatively low where online infringement has been
found by courts – limited primarily to injunctive relief, but
relatively recent litigation has increased the sizes of awards
through the concept of “corrective advertising”, making the
risks where infringement is concerned much greater.
Trademark Law & Internet Marketing – Historical View
$ $ $ $ $ $ $

4. #SMX #33C2 @si1very
x One may not pretend to be a company/brand that one is not;
Obvious Trademark Practices Apply On The Web
x One may not closely imitate brand names’ trademark dress – if
your web design (color + fonts + layout + logo design) is too
imitative of a competitor, or if your products or sales language is
too similar, you could be infringing.
x Using a competitor’s trademark on your webpage in order to sell
your things could be an infringement.
☑ Limited “fair use” is allowed. Ex: using a brand name to provide a
comparison with your brand’s products/services.

5. #SMX #33C2 @si1very
<title>U-Haul: U-Box pods for moving and storage.</title>The concept of “Corrective Advertising” was introduced as a
means of making up for the missimpressions.
Missimpressions of the PODS trademark occurred in search
engine results pages for popular PODS-related searches as well
as on the thousands of pages on the U-Haul website.
PODS wins $62 million award in trademark
infringement lawsuit against U-Haul
#SMX #33C2 @si1very
PODS Enterprises, Inc. v. U-Haul International, Inc.

6. #SMX #33C2 @si1very
Example – Fair Use of Competitor’s Mark

7. #SMX #33C2 @si1very
• SEO: If pages may be deemed “relevant” for a keyword query, including trademarked
words/phrases, then there are incentives to optimize sites for those terms.
Trademark Law + Internet Marketing – Areas of Frequent
Conflict:
• PPC: If one’s products might be of interest to searchers, then paying to have one’s ads
appear in context with trademark keyword search results is highly valuable.
• Search/Display/UI: Within ecommerce websites, programming for relevancy helps
users find related/similar content, increasing sales. Faceted navigation often includes
trademarked brandnames as well as generic search terms for products.
• Domain Names: Use of a similar brand name or derivation to that of a competitors’
brand can seem attractive for targeting the customer audience.

8. #SMX #33C2 @si1very
• Hiding keywords in Meta Tags has long been contraindicated. Courts
often interpret this as a sneaky means of enabling your webpages to
appear for a competitor’s trademark.
• Hiding keywords in image ALT text is likewise contraindicated.
• Performing link building with competitors’ trademarks in the anchor text
of links pointing to your website might also be deemed improper.
• Cloaking to show search engines your competitors’ keywords while
showing human users something different is improper. (Also, highly risky
as an SEO practice that can get you penalized.)
Trademark Law & SEO
#SMX #33C2 @si1very

9. #SMX #33C2 @si1very
It has been established by practice for some time that one may
target ads to competitors’ trademark names, but not display the
name in ads. (Google allows this.)
Trademark Law – Paid Search
* Even though targeting competitors’ names in search is allowed,
there could still be risks of infringement. Context could play into
this, making it to be deemed less-than-ok. Could there be
confusion? Are other aspects of the ad misleadingly similar to the
competitor? Does the landing page convey the company involved,
or is this downplayed or nonobvious?
Cartier

10. #SMX #33C2 @si1very
Google and Bing perform some automated detection to determine
if a trademarked term (for the same industry) is used in the ad copy,
and will disallow the ad if this is found. This can be highly irritating
in instances where seemingly-generic descriptions get disallowed.
(There can be workarounds, however.)
* Be careful of using ad copy that is too imitative of competitors’
ads and collateral – language and style can sometimes be part of
your competitor’s “trade dress” that conveys their unique branding.
Trademark Law & PPC

11. #SMX #33C2 @si1very
Technology marketers and developers imagine that if it is alright
within a Google search for a competitor’s brand name for them to
advertise their own competing products/services, then it may be
fine to program their own site’s search engine to display various
products from different providers when the same branded search is
conducted.
Trademark Law & Search Functionality
Ecommerce sites often produce pages on static URLs related to
popular search terms. This functionality often increases sensitivity
to the possibility of trademark infringement!

12. #SMX #33C2 @si1very
Multi Time Machine contended that there was “initial
interest confusion” on Amazon, because when consumers
search there for products such as “mtm special ops”, only
competitors’ products are returned, and the searcher is not
informed that Amazon does not carry MTM products.
Multi Time Machine, Inc. v. Amazon Case
July 2015: Ninth Circuit Court initially found in favor of Multi Time Machine
that there was a likelihood of confusion.
October 2015: They reversed their decision upon rehearing, and found in
favor of Amazon, based on:
Multi Time Machine, Inc. v. Amazon Case
• A relevant, reasonable consumer would know something about MTM
watches prior to searching for them;
• Someone searching for MTM Special Ops watches would likely know
they cost several hundred dollars, unlike the results on Amazon;
• Products that were displayed on the results page were clearly labeled,
included photos, and thus the search results would not be confusing.

13. #SMX #33C2 @si1very
Bodum USA, Inc. v. Williams-Sonoma, Inc.
#SMX #33C2 @si1very
https://williams-sonoma.com/search/results.html?words=french+press+bodum
Branded-Keyword Relevant Search Results – Infringement?
• Remove pages associated with discontinued items/brands.
Avoid Legal Risk With Your SEO Program:
• Tread carefully with brand pages and faceted navigation.
• Periodically review your brands lists.
• When using brand keywords where you do not carry the brand, check
with your legal department.
• Clearly label if you do not carry a brand product.

14. #SMX #33C2 @si1very
Legal Use In One Area Might Increase Exposure If There Is
Infringement In Another Area…
If discontinuing a brand/product, update
your PPC advertising program!
• Remove ads for discontinued products – reduce appearance of sneaky-
looking redirects.
• Remove brand keyword targeting for discontinued brands/products.

15. #SMX #33C2 @si1very
Examples from Academy of Motion Pictures v. GoDaddy:
Presence of a Trademark in a Domain Name = Infringement
• OSCARSHOTELS.COM
• OSCARSDRESSREGISTRY.COM
• DOGACADEMYAWARD.COM
• ACADEMY-AWARDS.ORG

16. #SMX #33C2 @si1very
Film Academy Loses to GoDaddy in Oscars
Cybersquatting Battle

17. #SMX #33C2 @si1very
How to Police for Infringing Domain Names

18. #SMX #33C2 @si1very
Argent Media
http://argentmedia.com
Chris Silver Smith
Search Engines are complex.
Get qualified help.
argentum@verizon.net
Twitter: @si1very
@argentmedia