Google has disabled one of my advertisements because I use the term "Smartjoy" in the ad which is a trademark of www.Lik-Sang.com.

What's stupid about the whole issue is that the products I sell are purchased from Lik-Sang wholesale for resale and now they are trying to keep me from using the term in my advertisements?

I feel that this type of use falls under nominative fair use. I am using the trademark owners trademark in order to describe their product, read up on nominative fair use and see if you agree or disagree...

Any thoughts, or opinions?

I've contacted Lik-Sang but who knows how that will go, and of course Google won't let me use the term again without a letter from Lik-Sang giving me permission to use it.

Google won't allow terms that are also trademarks to be used in ad copy. However, it also doesn't proactively enforce this. It really only should be acting on complaints received per its policy: policy (http://www.google.com/tm_complaint.html). It sounds like the company you are reselling for has asked them to prevent you from advertising. And with Google's policy, only that company is going to get Google to change its mind.

It is stupid, because even if you aren't an official reseller, the policy prevents you from accurately describing products. If I sell an add-on for an iPod, that might not be approved by Apple but in the US, neither is it illegal for me to sell. But Google's policy means I couldn't say something like:

Voice Buddy
The easy-to-use voice
recorder for your iPod

Instead, I'd have to say:

Voice Buddy
The easy-to-use voice
recorder for your music
recording devices made
by a big company named
after a popular fruit

The policy really ought to be about policing trademarks if you are being misleading, not in fair use situations. But Google's embroiled in lawsuits and feels this is the best way out, for the moment.

Go back to the company and say that if you are to be an effective reseller, they need to let you resell. If that doesn't work, I suppose you could sue both Google and the wholeseller and claim they are trying to restrict trade :)

It really isn't anything to do with Google. It's the TM Owners who contact Google and tell them not to allow anyone to use their TMs (of course, if you've been in contact with the TM owner and they grant you permission, there's no problem).

Also, I've seen ads running on Apple and iPod keywords and with those terms in the ad text, so i think you're allowed use those terms.

By my own experience, it seems that Google will enforce the trademarks of foreign companies but not companies in the US or Canada. Now I don't understand that one a bit but I was told something like that when I complained a while back that advertisers were using "searchrank" which is a federally registered trademark to trigger AdWords.

By my own experience, it seems that Google will enforce the trademarks of foreign companies but not companies in the US or Canada. Now I don't understand that one a bit... David Wallace, this confusion will probably be cleared up by taking a look at the trademark policy details within the FAQ - which are linked to below.

Of the two, the second link speaks more directly to your question about international differences.

What is Google's trademark policy?
https://adwords.google.com/support/bin/answer.py?answer=6118

Trademark Complaint Procedure:
http://www.google.com/tm_complaint.html

Please note that there are two sections to the complaint procedure, and both are important in understanding what trademark owners may request:

* Trademark Complaint Procedure – Trademark rights in US and Canada
* Trademark Complaint Procedure – Trademark rights outside US and Canada

AWR

Also, I've seen ads running on Apple and iPod keywords and with those terms in the ad text, so i think you're allowed use those terms.
Unless Apple objects. If Apple sees an ad using terms that are also its trademarks, it can complain and have that ad stopped. That's how it works -- you can use anything to start off with and only get dinged if someone complains.

There's a difference between being an affiliate and being a franchise. If you pay for the franchise then you get to use certain brand names.

There are, I think, many instances when a company will look to affiliates to pick up anything they omit (by accident or design) from their own online campaign. I think there are many more instances when a company gets honestly riled by people riding on the brand name that they may have invested sweat, blood, money and tears into (though I feel this is less of an exploit in an affiliate situation).

There are also instances where I'd want to protect a brand. Many companies avoid the word "cheap". They don't want their products to be seen as cheap. To pick up from Danny's example and to pretend (ahem) that Apple didn't want to be associated with cheap then you can see why Apple would object to AdWords which talked about "cheap ipods".

The correct use of the PlayStation brand name is to keep that capital S. If PlayStation had affiliates then they might find it easier to prevent people bidding on the term at all than have people use "playstation" or "Playstation".

I think you have to remember that you're an affiliate with permission. In many ways the company is doing you a favour by letting you help sell their products and form an association with them. Trademark rulings are only enforced after a complaint and I feel that if a company has complained you have to accept that.

I accept it's a real pain in the arse to have this happen though; especially if the company failed to provide clear affiliate guidelines in the beginning.

I'll make it even more complex. You have affiliates, who I'd say are people specifically enabled by a brand holder/company to bring them traffic on the web. Despite this, brand holders may or may not want to restrict those affiliates.

Then you have authorized resellers, people who are supplied by a company with products. So Toshiba provides its computers to CompUSA. CompUSA then wants to sell those computers online and off. As an authorized reseller, they still could be restricted by the brand holder -- no, you can't target our name in search ads. But it becomes really odd. So you want me to sell your products through my online store, trust yourself to be partnered with me, but then you aren't going to let me actually describe the products I'm selling for you?

Next you've got unauthorized resellers. eBay's an example. Got a used Toshiba you want to sell? Put it up on eBay. And then eBay buys that word and says things like "Get Toshiba computers on eBay." No direct relationship with Toshiba. But how do you describe the product for sale if you can't use the Toshiba name? And legally in the US, the unauthorized resellers don't necessarily lose the right to make use of trademarked terms in other types of ads, to my knowledge.

Finally, you've got, I dunno, second tier suppliers or auxilary companies. They might specialize in repairing Toshiba's or iPod battery replacement, just like a local garage might specialize in BMW repairs. They may have no direct relationship with the company, but that doesn't mean legally they can't perform the business they do or advertise using those terms.

It's a very complicated area!

Oh, well! If you want to /get/ complex...

What about descriptive brand names? Is my advert which sells "orange phones" selling phones coloured orange or phones from the Orange network. Certain words become tricky; "easy" for example, is that a reference to easyGroup or part of your description? There's not really enough space in every AdWord to argue a clear case to the context in which the phrasing is being used.

I the onus is on the /merchants/. They should be clear affiliate guidelines from them. That way the affiliates can't complain if adverts are banned. If there are no guidelines, no warnings, and as an affiliate you invest time and money on a promotion then it is rather foul to have the rug pulled out from under you by you so-called merchant partner.

It's a very complicated area!

Yes indeed.

Here's my own little whine: (Yes I'd like some cheese)

Google have implemented trademark protection on a competitor of ours. They have a complete blanket protection on ANY Adwords ads appearing for their trademark - their company name.

Our legal counsel undertook the steps outlined in the Google trademark complaint procedure to ensure that our trademarked company name received the same protection (I have in front of me a copy of the June 2004 facsimile - before I joined the company) but we have received inadequate action on Google's part.

One issue that our G rep cites is some time after our June 2004 submission, G added a new line in their complaint policy that reads:

"Please indicate if your complaint is limited to specific advertisers/advertisements or if it is a general objection to all advertisers."

Our original June 2004 complaint was targeted against a few specific advertisers/advertisements since there was no guideline to allow for a blanket objection to all advertisers. Now, if this line was added into their legalese AFTER our submission, it stands that our competitor submitted their (blanket) trademark complaint after us, yet they've been protected for a least half a year now while we languish in unprotected purgatory.

So while we twiddle our thumbs waiting for our legal department to resubmit for blanket protection, we've been waiting for almost a year now to see our explicitly stated violators removed for our trademarked term. I find it mildly amusing that we refer to this action as 'company-vs-competitor reciprocation' even though we initiated our complaint earlier.

Personally, I believe that our complaint was left untouched and unnoticed until after the new legalese was entered and on evaluating our complaint it was decided we did not fulfil the complaint policy criteria. So each time someone from the local G team actions upon it, they get rebuffed from the Stateside counterpart. Frustrating.

Summary: It's shocking to see our competitor pull in millions of organic clicks with zero competitive Adwords listings for their trademarked term while we have to put up with their Adwords listing (as well as others) for our own trademark, despite dotting the i's and crossing the t's almost one year ago.

End rant
:mad:

Hi everyone,

As a current E-commerce marketing manager, I see that there are multiple things to consider here:

First, to address the iPod issue, the law has been defined (with regard to fair use) as follows:
Where the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

This gives Michelin the "right" to advertise a certain tire to fit on, say a 1972 Chevy Blazer, or a Universal remote the ability to show compatibility across multiple manufacturers.

Second, If this were not legal, you would see things being advertised much the same way GNC operates. If you have ever been into a GNC, or any vitamin reseller for that matter, you will hear something like this:

Customer: What should I take to strengthen my joints?
Employee: A lot of people like the "Shark Cartilage with Oyster shell"
Customer: Oh, so that will help strengthen my joints?
Employee: We get a high amount of success stories from previous customers using that very product.
Customer: Is this product regulated by the FDA?
Employee: People were taking Aspirin for thousands of years before the FDA realized that is was a useful medicine.

Notice how there is never a distinct answer on any of the questions. It reminds me of how every pyramid scheme starts out... " I have an opportunity for you" .....because "jobs" pay money, taxes and insurance, "opportunities" are your very own hobby without any liability.

If a manufacturer sells you a product as a reseller, not a consumer, you have every right to use the name of the product in the advertising of that product.

I am selling over 20,000 products online right now, so I run across this sort of thing every now and then. Mostly, it is when a product is sold directly from a manufacturer to the reseller, but the manufacturer is also selling online to the consumer and wants to monopolize the internet marketing channel.

What I do in this situation is remove the supplier/manufacturer from our product line, then, find a competitive product and use their brand in a comparison or other form of legal advertising containing their brand and terminology. They just need to learn that they are a manufacturer and have resellers for just that reason (to resell their product). Each one has a core competency that should be identified. If you are a manufacturer that does both, then you have no need for resellers.

I would much rather drop a product or product line than waste my time dealing with the mental midget who chooses to cut off his/her nose to spite his/her face.

Although I don't agree with Google taking initiative on the removal of the problem rather than addressing the issue, I can, however, understand why they chose to do it.

Great Post!

Just because a company owns a trademark does not mean that they own it for its use in every situation. You need to own a specific trademark for the specific class of goods and/or services you provide. Two entirely different companies may actually own the same exact trademarked term, but for different uses. Most people do not realize this. Search the www.USPTO.gov yourself for some major brands and you will find that some small businesses and / or individuals own their trademark for a completely different purpose. Also look at Google's own term. They own multiple trademarks for multiple purposes.

So here is my issue with Google stepping in. If they are going to disallow Trademark terms when a complaint is made, they should do research to ensure that the trademark term is being violated according to the actual trademark description and product/service classification.

Example, Best Buy. They have a Trademark for both their stores and their web site - 76161057 & 75936029 respectively. If they only had it for their stores and not for the web, then they should have no rights to complain to Google or any other online marketing company.

Google should ensure that the trademarks are being violated before pulling the plug.

I'll make it even more complex. You have affiliates, who I'd say are people specifically enabled by a brand holder/company to bring them traffic on the web. Despite this, brand holders may or may not want to restrict those affiliates.

Then you have authorized resellers, people who are supplied by a company with products. So Toshiba provides its computers to CompUSA. CompUSA then wants to sell those computers online and off. As an authorized reseller, they still could be restricted by the brand holder -- no, you can't target our name in search ads. But it becomes really odd. So you want me to sell your products through my online store, trust yourself to be partnered with me, but then you aren't going to let me actually describe the products I'm selling for you?

Next you've got unauthorized resellers. eBay's an example. Got a used Toshiba you want to sell? Put it up on eBay. And then eBay buys that word and says things like "Get Toshiba computers on eBay." No direct relationship with Toshiba. But how do you describe the product for sale if you can't use the Toshiba name? And legally in the US, the unauthorized resellers don't necessarily lose the right to make use of trademarked terms in other types of ads, to my knowledge.

Finally, you've got, I dunno, second tier suppliers or auxilary companies. They might specialize in repairing Toshiba's or iPod battery replacement, just like a local garage might specialize in BMW repairs. They may have no direct relationship with the company, but that doesn't mean legally they can't perform the business they do or advertise using those terms.

It's a very complicated area!
Or, let's say, popular publishers of information about certain products -- like xxx for dummies. Or a tech newsletter publisher who writes articles about a bug in MS Excel and wants to describe that article in an ad as a way to grow his subscriber list...

Yes, I can see it now, that new bestselling title, "Popular Spreadsheet Software Made By Major Software Manufacturer For Dummies."

Could be worse. I just got a disapproval notice from Adwords for a bunch of ads because of:

Ad Status: Suspended - Pending Revision
Ad Issue(s): Ad Text Trademark Term

The term in question is owned by my client. It's also their domain name.

cline, I guess the word that comes to mind is "ironic", eh? :eek:

Without knowing any details, I'd guess it falls out this way:

Your client, the trademark owner, has formally requested that their trademark be handled in a particular way in AdWords ads. However, they have not formally informed the AdWords team that there are to be exceptions to their request - of which you are one.

So, I'd ask them to follow up with AdWords and say that you may use their trademark in your ads.

Off Topic Aside: Pardon me for piggybacking on your post, cline - but I wanted to mention that I'll be away from the office starting late this evening - and extending thru Tuesday. Back to posting on this Forum on Wednesday. ;)

AWR