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TheDomains.com

Another Federal Courts Says Purchasing Trademarked Keywords For PPC Ads Is OK

November 4, 2012 by Michael Berkens

A story appearing in Lexology.com, today discssed the case of CollegeSource, Inc. v. AcademyOne, Inc.,. which was decided by The Federal Court for the Eastern District of Pennsylvania in the case of .

The Court dismissed the plaintiff’s claim for trademark infringement and unfair competition holding that the plaintiff failed to demonstrate that the defendant’s purchasing trademark terms of its competitor in keyword advertising was unlikely to result in consumer confusion.

In this case the defendant purchased the plaintiff’s COLLEGESOURCE and CAREER GUIDANCE FOUNDATION trademarks as keywords, even though the defendant did not use the plaintiff’s trademarks in the text of its advertisements.

The court stated that four factors highlighted by another case, the Ninth Circuit’s landmark Network Automation decision,  (1) the strength of the mark, (2) evidence of actual confusion, (3) the types of goods and degree of care likely to be exercised by the typical purchaser, and (4) the labeling and appearance of the advertisement(s).

First, the court found the plaintiffs COLLEGESOURCE and CAREER GUIDANCE FOUNDATION marks were suggestive and commercially strong.

The court found there was “little evidence” of actual confusion. Specifically, it noted that 65 visitors typed the plaintiff’s trademark into a search engine, but when they saw the defendant’s keyword advertisement, they went to the defendant’s website instead.

Rather than finding this was evidence of confusion, however, the court said such instances could show that consumers were persuaded by the advertisements, rather than confused by them.

The court also noted that the events all occurred in a one-month period.

“in the AdWords context, the likelihood of confusion ‘will ultimately turn’ on what the consumer saw on the screen, including labeling and overall appearance.’” Such language emphasizes the crucial role that this factor played in both the Ninth Circuit’s decision and the present case.

The defendant’s ads appeared in separate “sponsored” search results, which were labeled as sponsored advertisements, and which often were set apart from the other results by a shaded text box.

The court noted that the defendant did not use the plaintiff’s business name or trademarks in the text of the advertisements themselves.

The court found that Internet users are becoming more discerning in their searching, and with time are becoming less likely to be confused by keyword advertisements.
The court also found that because the transfer of college credits is very important to students, they are likely to use a high degree of care when purchasing the relevant services.
Notably, the court stated that “modern Internet users, particularly ones who are interested in credit distribution in higher education institutions, are not likely to be confused by Internet advertising.”
Lexology.com concludes that:
“It is becoming increasingly clear that courts across the country are finding the use of a competitor’s trademarks in keyword advertising to be non-infringing as long as the text of the advertisements is not confusing. Thus, companies should pay particular attention to the language they use in such advertisements, and should consider refraining from using competitors’ trademarks in the text of the advertisements, as a way to reduce potential liability.”

Filed Under: Legal

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

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Comments

  1. HELP.org says

    November 4, 2012 at 10:11 pm

    Many UDRP’s would probably be dismissed if the Complainants had to show proof of actual confusion.


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