• In the US:  under “certain criteria,” an advertiser can use trademarks in its ad text even if the advertiser doesn’t own that trademark or have explicit approval from the trademark owner to use it. 
• In 188 geographies (mostly non-European Union):  an advertiser can use a trademark owned by another party as a keyword to trigger an ad when searches are conducted on those trademarks.  This new policy is consistent with Google’s trademark policy for 4 other countries, including the U.S. 

A complete list of the 192 countries in which Google will not investigate the use of trademarks as keywords, but will continue to investigate the use of trademarks in ad text, can be found here.  

The U.S. policy change will begin appearing in Google search ads on June 15, 2009.   The trademark policy impacting the 188 countries took effect on June 4, 2009.

HOW DO THE POLICIES DIFFER FROM BEFORE?

Previously in the U.S., an advertiser could only purchase a trademark as a “keyword” to trigger an ad, but the advertiser could not use it in the ad text unless the advertiser was, or had permission from, the trademark owner. 

Previously in the 188 geographies, if advertisers purchased a trademark they didn’t own as a keyword to trigger an ad, trademark owners could submit a complaint to Google to have it disapproved or disabled.  It should be noted that Google did not proactively prevent ads triggered by the trademarks of others in these countries, but instead was willing to review complaints and take appropriate action.

WHAT ARE THE “CERTAIN CRITERIA” IN THE NEW U.S. POLICY?

The certain criteria that must be met are that the advertiser’s website must:

• Resell the trademarked goods and services
• Sell components, replacement parts, or compatible products relating to the trademark
• Provide information relating to the trademarked goods or services (without promoting or selling competitive offerings)

At the same time, Google’s U.S. policy does not allow ads that:

• Do not lead to a landing page which clearly facilitates the sale of either the trademarked goods and services OR parts or components related to the goods and services corresponding to the trademark
• Are competitive or critical about the goods and services corresponding to the trademark
• Do not lead to a landing page which provides substantive information about the trademarked goods and services
• Sell or promote counterfeit goods

WHY THE CHANGES?

Google claims the U.S. policy change will improve ad quality and the user experience.  For example, a site that sells several brands of sporting goods would now be able to highlight the actual brands they sell in their ad text, rather than generically referring to the goods. 

Google’s other trademark policy change brings most of the world in line with Google’s existing policies to allow keyword buying in 4 other countries:  U.S., Canada, United Kingdom and Ireland

HOW DO THESE POLICY CHANGES IMPACT BRAND OWNERS?

Google’s lifting of policy restrictions places more responsibility on brand owners to police whether their trademarks are being infringed upon in Google search ads.   Many brand owners fear that the U.S. policy change will support more gray market selling – that is, the selling of authentic product through unauthorized sellers – as the policy now will allow any seller to use the names of the brands it sells in Google ads.  If a seller does use the trademark of a brand owner without permission, the brand owner can now only request Google to remediate the ad if the advertisement does not meet the “certain criteria” listed above.

Some brand owners have also expressed concern that the new international policy will create more opportunities for others to inappropriately leverage their brands, as any third party – including competitors – can now use others’ trademarks to trigger ads in these 188 geographies. 

WHAT CAN BRAND OWNERS DO?

Google does provide a complaint procedure that allows brand owners to file a trademark complaint.  Google will then determine whether the ad(s) are compliant with the trademark policy for that geography and take appropriate action, which may include disapproving or disabling the ad and/or terminating the advertiser.  Google has a similar complaint procedure for ads selling or promoting counterfeit goods.

Brand owners can also contact the advertiser directly, such as through a Cease & Desist letter, to remedy a trademark infringement.  Google actually recommends on its website that “trademark owners …resolve their disputes directly with the advertiser” as “Google is not a third-party arbiter.”

Given Google is relaxing its trademark policy, it makes it even more imperative that brand owners proactively monitor sponsored links to ensure that third parties are not abusing their trademarks in search ads.  While Google is lifting restrictions on who can use trademarks in search ads and how trademarks are used, it does not allow ads that are competitive or critical in nature or that sell or promote counterfeit goods.  So, brand owners can – and should – continue to enforce their IP rights on Google search ads.

FOR MORE INFORMATION

Google Updates to U.S. Trademark Policy

Updates to AdWords Trademark Policy

68 Regions Google Will Investigate the Use of Trademarks in Ad Text, in Keywords, or Both

192 Regions Google Will Investigate the Use of Trademarks in Ad Text (but Not in Keywords)