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                                                                  For more information on this
Change in Google's Trademark Policy
                                                                  issue please contact a member of
                                                                  our Trademark practice group:
Effective June 15, 2009, Google has changed its US trademark
policy to permit the use of third party trademarks in adword
text and on sponsored link websites. Specifically, the policy
states in the following terms that trademark owners will have     Cindy Caditz
to police the use of their marks on the web independent of        206-695-1715

Google is not in a position to arbitrate trademark disputes       Daiva Tautvydas
between advertisers and trademark owners. As stated in our        206-695-1727
Terms and Conditions, advertisers are responsible for the
keywords and ad text that they choose to use. Accordingly,
Google encourages trademark owners to resolve their               Everett Fruehling
disputes directly with the advertiser, particularly because the   206-695-1743
advertiser may have similar ads on other sites. However, as a
courtesy to trademark owners, Google is willing to perform a
limited investigation of reasonable complaints.                   ______________________

Historically, the search-engine giant has been more
accommodating to trademark owners than other search
                                                                  CHRISTENSEN O’CONNOR
engines. Specifically Google previously had a policy that
prohibited the use of a trademark in ad text that was             JOHNSON KINDNESS PLLC
featured in the sponsored link or the highlighting of a           1420 Fifth Ave., Suite 2800
particular brand unless the site owner was also the trademark     Seattle, 98101
owner or the site owner had the approval of the trademark         Tel: 1-206-695-1750
owner (yes, those wonderful "affiliate" programs). This policy    Fax: 1-206-224-0779
theoretically enabled trademark owners to prevent others
from promotion of goods under their trademarks.

It is probably not a coincidence that this change in policy
came roughly a month after the U.S. Court of Appeals for the
Second Circuit ruled that a lawsuit may proceed in which the
Plaintiff has asserted that Google's sale of trademarks as
adwords constitutes infringement of the rights owned by the
rightful owners of those trademarks.
                                                                              CLIENT ALERT

 Google argued that the sale of trademarks as         complaints; our actions may include
 adwords was not a "use" of the trademark in          disapproving or disabling ads and/or
 commerce and therefore could not infringe the        terminating advertisers. Any such investigation
 rights of trademark owners. Google may still         and action will only affect ads served on or by
 win that case. In order to stop Google's sale of     Google." You should be aware, however, that
 trademarks as adwords, the Plaintiff will have to    "upon request and approval, a complainant's
 prove that the sale of adwords by Google is          contact details may be forwarded to the
 likely to confuse consumers who are drawn to         affected advertiser(s)." i.e., Google will give
 rival websites. Proving the likelihood of such       you up to the infringer if they ask why their
 confusion may be tough. Nonetheless, Google is       advertisement has been disapproved or
 now faced with discovery and possibly trial if the   disabled.
 case does not settle.
                                                      Google's updated policy now seems to be in
 Seemingly in response to this burden, Google         line with that of other search engines. The
 issued the more hands off trademark policy that      bottom line - now that Google's "hands off"
 advises trademark owners to police their own         policy has taken effect on the web, it is even
 marks as used on Google advertisements. True         more important that trademark owners
 that the case addresses sale of adwords and not      conduct internet searches of their marks on a
 use of trademarks as keywords or in advertising      regular basis. Policing your trademarks in a
 text, but perhaps Google has decided to leave        proactive way is the best way to prevent
 those burdens to the trademark owners who are        infringing uses from growing both in terms of
 annoyed by Google's sale of trademarks as            geographic distribution of goods and markets.
 adwords to competitors.                              The change in Google's trademark policy makes
                                                      the use of a competitor's trademark on a
 Trademark owners still have some recourse with       Google sponsored ad possible but does not
 Google in addressing trademark infringement on       make it legal. More and more companies are
 Google advertisements. For example Google's          now instructing their external legal counsel to
 Trademark Complaint Procedure for Adwords            monitor their marks on a quarterly or bi-annual
 states that "Google recognizes the importance        basis and alert them of any possible misuse.
 of trademarks. Our AdWords Terms and
 Conditions with advertisers prohibit intellectual
 property     infringement     by     advertisers.
 Advertisers are responsible for the keywords
 they choose to generate advertisements and the
 text that they choose to use in those
 advertisements." Moreover, in egregious cases
 Google has agreed to "investigate all reasonable

                                                                     June 2009 | 2

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