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Can Use of Another's Trademark in an AdWord Constitute Infringement?



By Lisel M. Ferguson and Heather A. Cameron of Procopio, Cory, Hargreaves & Savitch LLP

Lisel M. Ferguson and Heather A. Cameron litigate and advise clients in IP counseling as members of Procopio’s Intellectual Property Litigation team.

You have just negotiated a settlement between your client and a trademark infringer. The bad guy has admitted infringement, and you are drafting a settlement agreement when a dispute arises. The bad guy refuses to agree not to purchase AdWords containing your client’s trademark to advertise his products through various search engines, arguing that the purchase of AdWords containing your client’s trademark does not constitute infringement. You are skeptical, believing that the infringer is attempting to engage in further nefarious behavior. Your client wants to know: can a trademark owner prevent others from purchasing AdWords or “Sponsored links” containing his trademark?

To find your answer, it is important to first understand a few principles of U.S. trademark law. The legislative intent of the Lanham Act, 15 USC §1051 et seq, is to give trademark owners broad latitude to protect their trademarks from would-be infringers. A fundamental objective guiding this intent is to protect American consumers from fraud. Consumers readily identify particular brands with quality, based on a reputation built through a history of consistency, integrity and honesty. Consumers place their trust, and thus, their purchasing power, in c...

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