New Trademark Issues Raised by Internet Advertising
My colleague Mark VanderBroek spoke at recent seminar about Internet trademark issues. It is summarized below:
The growing popularity of Internet advertising continues to spawn trademark issues that impact a broad range of businesses. Cybersquatting is on the increase. Nearly all businesses are subject to “typosquatters” who register domain names consisting of misspelled variations of others’ trademarks and “monetize” them by connecting to pay-per-click advertising websites. Many businesses now engage in Internet advertising, which may use others’ trademarks as keywords to link their advertisements to Internet search results. Cases addressing these and other current Internet trademark issues are discussed in this article.
Recent court cases involving domain names include a record damages award in a cybersquatting case ($33.15 million); confirmation that “domain tasting” amounts to cybersquatting; the failure of plaintiffs to obtain certification of a class action against Google and domain name registrars for registering, licensing and monetizing purported deceptive domain names; and an almost successful attempt by a state to seize domain names as “gambling devices.”
Trademark infringement cases involving use of a trademark as a keyword to trigger Internet advertising links generally raise two main issues: (1) whether the defendant is making use of a trademark in commerce; (2) whether there is a likelihood of confusion. A recent Second Circuit case brought clarity to the law on the first issue, by ruling that there is a use in commerce in this situation. Now, the main battleground in these cases will be on "likelihood of confusion" - an issue that was addressed by several cases in the last year.
