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Old 09-22-2004   #1
zetetic
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Rescuecom sues Google

Google's being sued again...this time by Rescuecom for TM infringement based on sales of the "Rescuecom" brand as an Adword. Case coverage comes from the UK firm Mason's and they offer a link at the bottom to a PDF of the complaint (filed 9/6/2004).

Rescuecom sues Google
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Old 09-22-2004   #2
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Quote:
Originally Posted by zetetic
Google's being sued again...this time by Rescuecom for TM infringement based on sales of the "Rescuecom" brand as an Adword. Case coverage comes from the UK firm Mason's and they offer a link at the bottom to a PDF of the complaint (filed 9/6/2004).

Rescuecom sues Google
I wonder how many companies sue Google just to get in the news? Its has got to be a cheap way to build link popularity, etc.
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Old 09-22-2004   #3
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Nothing cheap about it...

Rest assured no one is filing these suits against Google and Overture for cheap link popularity. There's a five figure sunk cost just to get your complaint researched, written & filed.

I have to wonder, however, if the general PR of a relatively unknown brand like Rescuecom taking on Google is positive regardless of the outcome of the case. After all, look what fighting Goliath did for SearchKing.com--it brought a ton of publicity and new clients to his door.
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Old 09-22-2004   #4
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What is funny about this is that I don't see it as necessary to sue Google for something like this.

I have a similar ordeal with "SearchRank" which is a federally registered trademark. Search for this word at Overture and no ads. Search for it at Google and ads appeared.

Our first move was to contact the advertisers and order them to "cease and desist". Then we reported it to Google. The advertisers response was that they were not targeting that specific term but rather "search rank" which is not registered (as two words).

Then we asked Google to look into the fact that possibly broad matching is the reason why ads are being triggered for our trademark.

They did look into it, confirmed that no advertisers were using that term but that their spell checking software was bringing up ads related to "search rank". They said they were going to eliminate "searchrank" as one of the words that would trigger the spell check software which will eliminate ads showing for that term. This task is in queue to be completed shortly.

So my point is, what is the reason to sue? How can Google know every possible trademarked word, especially something as generic as "rescuecom". I think if companies will simply contact Google, then Google is more than happy to work with them and then avoid another frivolous lawsuit. I commend them for working with me to resolve my issue.
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Old 09-22-2004   #5
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Freedom of Broad Match Information

David--your scenario with "searchrank" seems to fly in the face of Google's own stated policy that it is not the arbiter of TM disputes. By pulling "searchrank" from the broad match for "search rank," they are opening the door (again) to a very ad hoc, and, therefore costly, approach to TM policy.

According to their policy, they shouldn't be policing who bids on "searchrank" at all. Your direct cease & desist approach with the advertisers is a wise one that seems to have worked in this situation. However, if a hard-ball advertiser refused to stop bidding on "searchrank," what course of action will you take? Sue the advertiser? Sue Google? That's the problem faced by the Adwords plaintiffs.

Google's in the crosshairs of these suits because they control the inventory and keep way too much of their ad data close to the vest. Why, for instance, did it take a call to Google to learn that "search rank" was being broadmatched to "searchrank." Wouldn't it be much easier for Google to offer an accurate tool (as opposed to the mercurial Keyword Sandbox) that showed advertisers EXACTLY which broad match searches their ads will target?

Moreover, shouldn't your Adwords reports show you exactly those broad match phrases that Google mapped to your keyword bids? Right now, advertisers are in the dark on what broad keywords are triggering their ads. As a result, you have situations, such as yours, where it takes a call to Google to get an answer--if you are so lucky.

I can't imagine that Google investors will want to maintain such a manual process in the long-term. It's simply not cost-effective.

And you are correct, neither Google nor Overture can know all the TMs out there today (federal and state). However, a lawsuit goes a long way to educate them about your particular mark. And until the underlying legal issues are resolved either legislatively or by the Supreme Court, you can look for a lot more TM owners to jump into the legal fray.
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Old 09-22-2004   #6
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Originally Posted by zetetic
However, if a hard-ball advertiser refused to stop bidding on "searchrank," what course of action will you take? Sue the advertiser? Sue Google? That's the problem faced by the Adwords plaintiffs.
Probably the advertiser but if I had contacted Google and they essentially said, "Screw you, we don't care!", then I may go after them as well.

In most of these cases, the advertiser is the offender. I kind of liken it to getting caught doing 120 miles per hour in a Viper. Who is at fault? Me because I chose to exceed the speed limit or Dodge because they provided me a means to do that kind of speed?

Now in my case, it is Google that is at fault because none of the advertisers that were contacted were using my term but rather Google was "broad matching" it. However, because they are willing to remedy it for me, I am a happy camper.
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Old 09-23-2004   #7
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If you would like to read the full text of the complaint filed by Rescuecom I've made on my server at:
http://www.resourceshelf.com/resvgoogle.pdf
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Old 09-23-2004   #8
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Thumbs up hi

Hello,

Yes, many companies want more link popularity. That is the reason I think it is!
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Old 09-23-2004   #9
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As a follow up to my story above, I just received news today that Google will not be fixing their spell check feature because they do not monitor US or Canadian trademarks but if I have a registered trademark outside of the US or Canada, that they would disable it.

Now what kind of BS is that?

We have established that advertisers are not to blame for the infringing but Google is. I was satisfied that they were going to fix it and now they are not.

Pertaining to our discussion, I can now see if this type of situation why a company like Rescuecom and Geico would sue Google for trademark infringement.

I sure hope Google changes their stance on this or we could see literally thousands of such cases go to court, myself included, which would not be a good thing for them or even those who are sueing. It will be good for lawyers for sure but it would be much better if Google simply changed their policy and began to monitor US and Canadian trademarks.

I'll definitely be keeping my eye of the Geico suit as well as this new one.
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Old 09-23-2004   #10
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Now you see the violence inherent in the system...

David--sorry to hear Google isn't fixing your issue, but I had a feeling that might happen. You're not the first person I've heard of who got one answer from customer phone support and another via email.

And as for the US/Canada vs. the world policy, it is ridiculous, but it's also based on an interpretation of what international TM law requires. After Geico/American Blind/Rescuecom and others, we might end up with a singular policy. But don't hold your breath...this issue truly won't be resolve until it winds its way through the courts (2-4 years). We may very well have an issue of law worthy of Supreme Court consideration here.

Oh, and by the way, there is a trademark that you can't bid on via Adwords.

Google.

Ownership has its benefits.
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Old 09-24-2004   #11
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Well,

Google does what's best for Google, not for its customers. By only removing such text in Non-US and Canada market contradicts their policy like its going out of style.

Since Google's spell checking software can be manipulated, does this mean there is room for inside jobs? Sounds fishy to me.
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Old 09-24-2004   #12
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Quote:
Originally Posted by zetetic
Moreover, shouldn't your Adwords reports show you exactly those broad match phrases that Google mapped to your keyword bids? Right now, advertisers are in the dark on what broad keywords are triggering their ads. As a result, you have situations, such as yours, where it takes a call to Google to get an answer--if you are so lucky.

I can't imagine that Google investors will want to maintain such a manual process in the long-term. It's simply not cost-effective.
As a larger advertiser who has been on multiple calls with Google on this topic, I couldn't agree more. On a basic level you should know what you are paying for via AdWords, and whether or not you're ok with those matches. On a more legal/ethical level Google shouldn't be making it hard, if not impossible, to protect yourself against trademark infringement. I don't want to appear for any trademarks not my own, it opens my company to legal risk, and we would not like to see the same happen to us, but good luck to me keeping track of that if we have broad match.

The alternative is to change over to exact match, something I can't imagine Google, or most advertisers, want this to come to. Its just ridiculous that they can't tell you what you're purchasing.
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Old 09-24-2004   #13
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Oh, and by the way, there is a trademark that you can't bid on via Adwords.

Google.

Ownership has its benefits.
Actually that is not the case. Did a search for "Google" today out of curiosity and an ad for googleprofits.com appeared. So Google does not even protect their own trademark or at least doesn't care in the case of this advertiser.
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Old 09-27-2004   #14
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Why is Google at fault here?

I was just wondering what role Google has to play here? There seems to be some consensus that Google has allowed this to happen so they are part of the infringement that has taken place. Does this mean that on television or in the newspapers, if someone infringes trademarks then those mediums can be held responsible?

I also wonder if the Keyword tool gives trademark suggestions then Google are encouraging the advertiser to choose keywords that might be disallowed?

What would be the scenario under the old rules where Google knew that the keyword was a trademark and had agreed not to show it and then showed it anyway? Who is to blame then? Is it the advertiser still or would it be Google because they had not stopped using the keyword like they had promised? Why is / was their system not fail proof?

There seems to be huge grey areas that might be costly for search engines in general, not just Google. I believe Overture has a much more stringent policy. Is this true?

Thanks for your help in my research
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Old 09-27-2004   #15
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Well in my case, Google is to blame because it is their spell correcting software that is serving up ads for my registered trademark. They are not just "part" of the infringement but they are actually creating it. Whether a court would see it that way is yet to be determined which is why the Geico/Google suit will an interesting one to watch.

However if an advertiser is bidding on someone else’s trademark, even if Google suggested it, then the advertiser is to blame IMO.

As far as Overture goes, I have had nothing but success in getting them to honor trademarks as on a few occasions we have reported advertisers that were using our client's trademarks to trigger ads and Overture removed the ads everytime.
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Old 09-27-2004   #16
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Thinking, Thinker...

To Thinker's post...

It's all grey matter as far as this issue goes. Google and Overture are different from print publications because they are actually trafficking in trademarked terms. Let me explain...

In a TV or print advertising situation, I come across the ads by fortuitous browsing. I simply scan through the channels or flip the pages.

With Google and Overture (search distribution), however, I enter very specific terms to locate information. My intent is largely unknown, but if I enter a word that only exists because it is a trademark, say "Verizon," one can reasonably assume that I want information about that company and its products. If Google and Overture run competitors' ads on "Verizon" searches, then they clearly are in the potential, and I emphasize potential, liability chain.

Now let's take that example a step further...

What if the search was for "Verizon alternatives"? Then, Google and Overture have a fair use defense since the user's intent to find competitive products can be discerned on the face of the search.

One of my current problems (I have many) is that Google and Overture are currently arguing that the assumption should be made that any search, no matter how TM specific, should be read as uncertain as to user intent--thereby, allowing them to serve up competitor's ads.

As for liability, if there is any, the advertiser is definitely in the cross-hairs as they directly benefit from the TM infringement. Google's and Overture's liability, if any, will depend on a variety of factors that are likely to be case-specific. Did their keyword tools encourage bidding on the term? Did their broad matching technology actually force the advertising to unwittingly bid on the term? Did they give the advertiser sufficient notice of the potential TM issues involved with PPC advertising?

Again, I don't know the answers. I just raise the questions.
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Old 09-28-2004   #17
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My intent is largely unknown, but if I enter a word that only exists because it is a trademark, say "Verizon," one can reasonably assume that I want information about that company and its products.
Yes, but we don't know whether you want that information from Verizon itself. For all we know, you dislike Verizon. You've had a dispute with them. You've entered the term to see what people have to say about them.

There's no doubt that many, many people entering that term will want to reach Verizon directly. However, it's equally true that not everyone of them will. Trademark law gives trademark holders specific rights over the usage of a word in a trademark sense. It remains entirely unclear that this means ultimate control over what information shows up in response to a search.

Set aside the trademark issue. It's fair to say that from a usability standpoint, it makes sense for Google and other search engines to ensure that if someone searches for "verizon," the official verizon site shows up free of charge. Doing this might also help counter the issue of Verizon feeling like Google and Overture are making money off of ads linked to the Verizon name. But ultimately, there's still going to be someone dissatisfied with whatever the search engines do, and it's going to be a legal case that will settle the issue once and for all.
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Old 09-28-2004   #18
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My mother warned me never to assume...

Were definitely in agreement that this is an unclear legal issue that will ultimately have to be resolved by the courts.

However, I want to dig in on this assumption issue. The search engines would have us believe that the assumption of intent should always fall in their favor. Thus, they want us to assume that when a searcher just enters "Verizon," their intent is unclear and than critical or competitive ads can be displayed because the searcher MAY actually be looking for such information.

But why should the assumption automatically fall in favor of the search engines? I know that they want it to because they make tons more money if it does.

But isn't the truest expression of searcher intent found in the terms they actually use? And don't the surveys point to the fact that searchers are using more terms in their search queries?

Thus, what if the assumption is that the searcher isn't looking for critical or competitive ads unless such intent is found in their search terms.

A search for "verizon" would lack such intent.
A search for "verizon alternative" would have such intent.
A search for "verizon consumer complaints" would have such intent.

Under this scenario, the TM owner would have a stronger complaint in the first search than under #2 and #3.

I have no idea if this argument will surface in any of the pending case. I just feel strongly that we shouldn't automatically assume that all searches create uncertainty about user intent. And we certainly shouldn't give all the benefit of the doubt to the search engines.
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Old 09-28-2004   #19
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However, I want to dig in on this assumption issue. The search engines would have us believe that the assumption of intent should always fall in their favor.
No, not just the search engines would have you believe this. Those who want to appear in reponse to certain terms might also argue it. For example, a non-profit consumer group has filed a brief support the search engines in the Geico action. Why? They want to ensure that protest sites that might spring up in response to particular companies have the right to advertise themselves using the company name or terms combining it.

Quote:
But why should the assumption automatically fall in favor of the search engines? I know that they want it to because they make tons more money if it does.
The assumption is falling in favor of reality. Both sides in these cases will agree that the intent of the searcher is not know exactly. Both sides will agree many searchers may be wanting to navigate to a particular web site. But both sides will also agree that not everyone has this intention. I've been involved in such cases. This is what happens. It's not a matter of favoring one assumption over the other. It's actually a case that people agree that the exact intent is uncertain.

The key question really is, when these ads appear, do they mislead consumers into thinking they are getting something that isn't what they wanted. If you're Pepsi, you put up and ad saying "Learn why Pepsi is better than Coke," it will be hard to argue you've mislead the consumer (and possibly violated trademark law). Put up an ad saying "Learn more about Coke" or "Official lowdown on Coke" when you are Pepsi, and the misleading argument is stronger.

Quote:
But isn't the truest expression of searcher intent found in the terms they actually use? And don't the surveys point to the fact that searchers are using more terms in their search queries?
Barely -- like from 2.5 to 2.75.

Quote:
A search for "verizon" would lack such intent.
Yes, and given all the controversy over SEMPO recently, can we assume that everyone typing in SEMPO is just looking for the official web site? No. The same is true for any company or anything. We simply don't know the intent. We can assume and guess at many things, but we don't know it perfectly.

I have no idea if this argument will surface in any of the pending case. I just feel strongly that we shouldn't automatically assume that all searches create uncertainty about user intent.
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Old 09-28-2004   #20
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Originally Posted by zetetic
A search for "verizon" would lack such intent.
A search for "verizon alternative" would have such intent.
A search for "verizon consumer complaints" would have such intent.
.

Would, or might? A search for [verizon] might be by a student doing research for a term paper about the wireless industry. It might be by someone who had read an article in the newspaper or product review about Verizon, and they are so clueless, they don't know who Verizon is five minutes after they finished reading it (and if you don't believe there are such people ... then how did they put together the O.J. jury?). It might be a search by someone looking to see what kind of information a search engine can tell you about a big company... and they plan to just "take it from there" once they see what's on the page. It could be someone who had a long-lost lover named Verizon, Googling them. Whoever said a privately-held search engine technology company was supposed to be a shortcut-service to facilitate marketing for big trademark holders, at no cost?

The point is, it's an open-ended, no-particular-rules SEARCH and Google has technology that "dumbly" brings up algorithmic results in response to a query. It's their prerogative as to how that happens.

In so doing, they also have an area that is marked off for ads. Instead of irrelevant, run-of-site banners, they try to show ads that are similar in meaning so that their advertisers, and Google, can maximize their profitability. Would Verizon be happier if Google showed terribly irrelevant advertising near such a SERP, say a banner about Caribbean Holidays? Maybe, but doing so might bankrupt Google. The fact that Verizon's wish to see certain types of listings on Google on certain queries (yes, even those on terms which are trademarks) might remove Google's right to operate a profitable publishing business.

If Verizon had its way, you can bet they'd try to stop any of the technologies that showed competitors' banner ads on content pages containing mentions of Verizon -- technologies which, contrary to current belief, have been all the range since about 1998-2000 (ish) when Business 2.0 was thick with full-page ads from companies promising that they were perfecting this genre of technology. The rights of all parties need to be weighed with an eye to the damage that might be done to fair commercial speech if large corporations can decide how online publishers display content and ads.

Taking this commercial right away from Google (and other publishers) and their advertisers should not be done lightly, IMHO. It should only be done where there is clear infringement of trademark in the sense of a particular advertiser deceiving consumers through their use of the trade name. I would say that happens in fewer than 1% of cases.
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