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TM Keyword Bidding in Paid Search

TM Keyword Bidding in Paid Search

http://blogs.mediapost.com/performance_insider/?p=17

TrademarkSummary: Story implies that CPA affiliates are somehow "pilfering your brand through paid search".  The premise goes:  Type "Columbia House" at Google and see scores of sites using "Columbia House" (a trademarked term) to draw visitors to their affiliate site making money for leading people back to Columbia House. The problem is, as an affiliate of Columbia House, you need to describe the product/offering somehow and Columbia House wants you to beat the bushes for more people to bring to their door.

Years ago there was a domain dispute for Webergrills.com where a Weber dealer was taken through UDRP for assorted names by the manufacturer. The manufacturer lost because the dealer was given express authority under his licensing arrangement to advertise the Weber brand.  Result, of that precedent?  If you own HondaCars.com and you’re a Honda car dealer,  you’re doing nothing wrong.

Are affiliate relationships relating to paid search really any different? If you sign up as an affiliate of Columbia House,  is that ‘manufacturer’ not giving you express authority to promote their brand? This is a lot different than buying "Columbia House" keyword traffic and selling it to "itunes".

Where is the line relating to domain names? If you run a hypothetical business called DealerDomainNames.com and you’re in the business of supplying and managing domain-names to assorted manufacturer’s dealers (as your usual course of business), could you be acting in good-faith by holding a basket of trademark containing domain names for resale? Could you make a valid legal argument for keeping those names?

I don’t plan to push that envelope, but an interesting thought all the same.

This entry was posted by Frank Schilling on Monday, April 30th, 2007 at 8:57 AM and is filed under IP Issues. You can follow any responses to this entry through the RSS 2.0 feed. Both comments and pings are currently closed.


7 Comments

  1. cathy says:

    these are interesting points, I am not sure were the line is drawn I would be interested in hearing more about this though.

  2. Drewbert says:

    >I don’t plan to push that envelope

    Look into my eyes, Frank, look into my eyes.

    Push the envelope.

    Puuuuuuush theeeeeeee envelooooooooope.

  3. Jamie says:

    I haven’t seen the ruling on that Webergrills.com case, but I’d guess it’d come down to how big of a legal bill you are willing to incur in order to find the boundary ;)

    as far as the Columbia House example, it’s quite likely that Columbia House have either not formulated a ppc policy for their affiliates, or they have decided to let them play on the brand.

    When a new merchant signs onto an affiliate program they typically set up the terms and conditions for the affiliates in all arenas.

    There are some best practices to follow, but at the end of the day a company’s conversion and cost data should be the final arbiter on what policy works best.

    Also, consider the source of the blog. The aurthor is the VP of Bus Dev at Sendtec. They do a lot of direct respose advertising in a lot of channels. They’ve got a good story around TV ads and have been moving into PPC for a couple of years now.

    They (sendtec) are running into channel conflict issues where they are managing the PPC campaign for client, but that client also has affiliates in the PPC world. In this case the agency will view the PPC landscape as a zero sum game. The agency will view any sales that the affiliate generates as a lost/stolen opportunity.

    The client however may view it as revenue from another source and also as a way to push their competitors farther down in the rankings (because they will have multiple listings) Again, they should look at their data and figure out what is the cheapest way to acquire the sales and protect their brand from the real competition.

  4. Great post Frank maybe Keyword buying will ned to be put into affiliate agreements

  5. Jon Pedersen says:

    Frank,

    This pre-dates domains but has the same “human intention” traffic generation that domains have now…

    How about “pilfering your brand thru paid 411″ try dialing 411 in the US and ask for Directv and see how many times you get a Directv corporate # (never) vs. a dealer / affiliate # (they have stuffed the results-directory assistance parked pages?) How many people see a Directv ad on TV and then dial 411 later only to reach a dealer. Directv seem’s to be ok with it as its been going on for longer than the first domains were reg’d.

    Other similar instances -
    KT&T Communications- registering “I don’t care” ” I don’t know” as phone company name’s
    http://www.xent.com/FoRK-archive/summer96/0392.html

    MCI getting $300k per month on a misdial-
    http://www.icbtollfree.com/article_free.cfm?articleId=5853

    ***FS*** Fascinating.. I never considered that.. thanks for posting.

  6. Steve M. says:

    In my own UDRP vs Lego (over legosystem/s.com) of several years ago, one of my arguments was that–as a bona fide, CA-state licensed real estate broker–because I was legally entitled under state laws to sell business opportunities; including when such sales included intellectual property (IP) including the trademarks of companies and/or their dealers/licensed/franchised entities; I was therefore legally also entitled to sell stand alone trademark domains (which are, really, themselves biz opps).

    While I lost the decision (my arbitrator obviously having a tough time making a decision as he was months late); I still maintain that licensed realty agents and brokers–in particular in those states like CA where with such a license you’re entitled to sell biz opps–have the right to sell TM domains.

    Including those owned by licensed agents; as in my case.

    If they’d been worth more and/or I had the time or inclination to get involved in such; I would have filed a US lawsuit to make this argument stick.

    If any UDRPs come up again, I will include the same argument again. Might be a good idea for other licensees to do the same.

  7. Drewbert says:

    I wonder if the registrant being a stockholder in the TM owning company would have an effect on things?