Can Trademarks Be Used in Search Terms?

Rhett Pardon
NEW YORK – While the legal status of trademarks used in sponsored-link advertising remains murky, lawsuits around the country continue to sort through the legal morass.

The latest case involves Copiague, N.Y., pet store owner Robert Novak, who claims Google, Kanoodle and Overture have illegally sold advertising tied to the “Pets Warehouse” name he says he owns because he succeeded in obtaining a trademark registration from the U.S. Patent and Trademark Office. The search-engine companies argue that the phrase is generic.

The nation’s courts so far have issued mixed rulings on whether trademarks can legally be used in search terms.

But former Playboy Playmate Terri Welles won the right to use the terms “playboy” and “playmate” in her metatags. The 9th U.S. Circuit Court of Appeals ruled last year that people can use trademarks as descriptions if they only use as much of the word as necessary. The court said Welles couldn’t be expected to describe herself as “the nude model selected by Hefner’s organization,” in place of the word “playmate.”

Many of the cases, however, are settled before they ever reach the court, with smaller sites often removing the trademarked terms to avoid a costly legal battle.

But last year French court fined Google for selling advertisements based on two travel-related phrases that were trademarked.

The Pets Warehouse case will continue, though.

U.S. District Judge Denis Hurley of the Eastern District in New York said in a preliminary ruling that the case could proceed, denying the search companies’ efforts to get it dismissed, because he wasn’t sure that Pets Warehouse is generic.

But Hurley dismissed Novak’s claim that Google was guilty of “tortious interference with prospective business relations,” saying it was nonsense. Novak, in this and other cases, has represented himself in court. Novak filed for bankruptcy last year and lost the rights to the domain but now runs, as well as a bricks-and-mortar store.

He is trying to reclaim in a separate legal maneuver where he is claiming $15 million in damages from a lawyer who managed to take over the after he sued Novak for dematory remarks made on a website. The lawyer still owns and has turned it into a bulletin board highlighting the lawsuits Novak has filed so far.

In another case, Mark Nutritionals filed suits last year against Overture, AltaVista, FindWhat and Kanoodle for alleged trademark infringement.

Mark Nutritionals charges that the search companies used keywords related to its trademarked name Body Solutions but buried Mark’s own links. The company is seeking $440 million in damages.

And in yet another court pursuit, Google has asked a court to rule on whether its keyword-advertising policy is legal in a dispute with American Blind & Wallpaper Factory over the sale of keyword-advertising within search results that appear on Google.