Trademark Protection Problems

[BrotherAl]

I work for a large UK-based online company. We own the trademark on our brand name, and one variant of it. People search for our name either as one word or two words. For the purpose of this post let's say we are called wibblebobble.com. We have the names 'wibblebobble' (no space) and 'wibble bobble' (with space) trademarked, and we have lodged trademark complaints with Google for both of these.

On an almost daily basis we have other advertisers and competitors targeting our brand name to drive traffic to their own sites. This is something we've had to learn to deal with as and when the ads appear for our name, and a simple email to our Google account manager usually has the ads removed within a couple of days.

Digressing from the point of this post slightly, it's immensely frustrating that these advertisers are constantly able to get ads live on our brand name. We've had some advertisers that have been targeting our brand for well over 18 months - they put an ad live, we ask for it to be removed, it gets removed, a couple of weeks later they're back live again with a new ad. When will Google come up with a system to permanently block advertisers from using certain keywords..?

Anyway, back to the point. One of the advertisers targeting our name has now started using a rather more cunning method of appearing for our trademarked name with the space. They've reversed the two words of our brand and set this up as a keyword on a broad-match; i.e. they have the keyword 'bobble wibble' in their campaign. Because we don't own the trademark on this name, and because it isn't a "miss-spelling", Google are refusing to remove the advert. Has anyone else suffered this problem and found a way around it? Obviously we don't want to go through the lengthy and costly process of trademarking this variant of our name for the purpose of removing one advertiser!

To compound our frustrations, Google seem to have one set of rules for us, and another set for other advertisers. They won't assist us in removing the broad-matched advert because it is not a miss-spelling or a variant of our name (even though it's highly unlikely anyone would search for the two words of our brand name in reverse order). We have tried to put an advert live on another well known two-word UK brand (which happens to be one of the biggest no-frills airlines, not mentioning any names) by adding a space between the words and reversing them on a broad-match keyword. Lo and behold, our keyword according to Google is still 'Active' but we've never had any impressions (even though we've searched for it time and time again), and no other advertisers ever appear for it. How is it this company are able to protect this variant on Google? No record of a UK trademark exists for this variant, and it is no more associated with the "real" brand name as our problem variant ('bobble wibble') is to our "real" name.

Has anyone else ever come up against problems like this? Any thoughts or comments would be much appreciated.

[AussieWebmaster]

I am amzed you are getting ads pulled. I was under the impression that they could use the keyword just not in the actual ad.

[sitecreations]

The way I understood it Google Adwords UK has different rules regarding this. While US / Canada can still use brands in the keyword list (but not the main ad) I understand others cannot.

I was speaking with someone recently who told me that around 30% of Google Adwords reveneues were from brand-name-bounces in US. I'm certain the folks in Mt. View don't want to give that up just yet.

Scott

[AussieWebmaster]

Interesting considering the potential of international advertising from the US.

[sitecreations]

Well, so is eBay violating trademarks in the UK when they do this:

{KeyWord:Products} on Ebay?

...I can type in "Nike" and will get the ad

Nike on Ebay

(and yes, they pass {KeyWord:Product} via the query tags into ebay's search engine, so not only are they displaying the trademark but their engaging in commerce via the trademark.)

~
PS: More discussion here...

http://forums.searchenginewatch.com/...read.php?t=231

[cline]

The solution is simple: Get your lawyers to trademark 'bobble wibble' and 'bobblewibble'.

Until then, you need to accept the fact that Google is playing by the UK trademark rules, and just count your blessings that those rules are less consumer-friendly than the ones in other parts of the world.

[BrotherAl]

I realise the simple solution would be to trademark the variations, but that doesn't answer my original question. Apart from being a laborious and costly process, I don't see why we should have to do it when other companies have managed to get Google to protect variations on their name.

What I would really like to know is has anyone managed to get Google to protect a variation on their trademark? In the example I gave, the airline have somehow managed to protect a variation on their name where the words have been reversed. This variation has not been trademarked, according to the Patent Office website.

Why can they do it, but we can't?

Google don't just seem to be playing by the UK trademark rules - they also seem to be adding their own rules where they see fit.

[AussieWebmaster]

I have to think that they only insert the "do not run" order when requested. Otherwise it would be a major labor intensive job finding all possible trademarks etc. and blocking them for searches in specific countries... then the trademark also have to be registered in those countries!!!

[farees]

Why can they do it, but we can't?

Well most probably that Airline marketing/branding dept must have convinced a policy expert at Google to protect variations on their name.

Case Point: GEICO V. Google
GEICO had also named Overture in this complain, but it has since been resolved out of court. The case was first filed in May 14th 2004, but you still see other companies showing ads for the search term GEICO and its variations, so it looks like an obvious victory for Google here. GIECO could not prove that these tactics were causing confusion among prospective customers who were looking up for information or contact the insurer. Nor they can prove that everybody searching for the term GIECO has intentions of buying insurance from them. On the other hand if they can prove that this has caused major loss in revenues to the company then they might have something solid to argue with. These companies are basically capitalizing on the GEICO brand name (majority of US consumers know the very familiar Gecko).


This is still a grey area in PPC advertising, and I wouldn't be surprised if some sort regulations are brought about here.

Here is what I think you should do

1. Send out cease and desist notices the moment you find companies using your brand name (wouldn¡¦t help much; but hey at the least this can help in future if regulations are enforced).

2. Open a dialog with Google reps and explain how this is affecting your margins and hurting your brand.

3. A little tit for tat wouldn¡¦t hurt, create a separate site and advertise for the same keywords with the message on Landing Pages talking about the unscrupulous activities these other companies are undertaking to deceive YOUR innocent prospective customers. Explain how doing business with these fly-by-night operators can harm the customers. Though this can really start a flaming war and if you don't have dedicated staff- don't do it.

4. Document any customer messages that show that they were confused by seeing these other ads when they expected to only your site.

5. If you can really prove that this has significantly affected your revenues then I think you might have a good case. i.e. if you want to take on Google Inc. --- Good thinking I wouldn't do it either.

- Farees

[cline]

The cease and dissist letter is a good idea. Copy Adwords on it. Lots of companies reflexively take action on these, even when they feel that they are in the right, because it's cheaper to give in than to risk fighting it.

[MarZ]

I have a different problem and it's really killing me.
we just started a campaign for a very well known company, which clearly owns their trademark. we have used the name in every adwords ad, because it's sure to generate clicks and because our client owns the trademark. The advertising is being done in Google UK. After 3 days, I have received notice that basically all ads have been rejected. You can imagine what this is doing to the campaign right now, since practically all ads contain the company name.

I don't want to remove the company name, because it's the most attractive part of the ad, because it's coming from the company everyone knows.

Any suggestions?

(I've contacted Google, but am in panic mode nonetheless, since everything is on hold).

[AussieWebmaster]

Originally Posted by MarZ

I have a different problem and it's really killing me.
we just started a campaign for a very well known company, which clearly owns their trademark. we have used the name in every adwords ad, because it's sure to generate clicks and because our client owns the trademark. The advertising is being done in Google UK. After 3 days, I have received notice that basically all ads have been rejected. You can imagine what this is doing to the campaign right now, since practically all ads contain the company name.

I don't want to remove the company name, because it's the most attractive part of the ad, because it's coming from the company everyone knows.

Any suggestions?

(I've contacted Google, but am in panic mode nonetheless, since everything is on hold).

If you have authorization from the comapny you should just have to fax them a copy and they will let you run using it.

[MarZ]

Originally Posted by AussieWebmaster

If you have authorization from the comapny you should just have to fax them a copy and they will let you run using it.

I have contacted the company to get an authorization letter immediately.
Although faxing Google should not be easy. I"m not sure where to contact them.
Google US or Google UK?

Is it for sure that the authorization will suffice? how long will they take re-approve the ads?

Such a nightmare, I'm sure it will be on hold the entire weekend!

[MarZ]

What form should this authorization be in? (sorry for being so meticulous)

[AussieWebmaster]

A notarised one from the holder of the trademark and a copy of that trademark certificate would help.

Also go through this :
http://groups.google.com/group/adwords-help/