How sophisticated are your consumers? Customer sophistication often plays a significant role in the likelihood of confusion analysis. An advertisement may create a likelihood of confusion where it relates to a low-price consumer impulse product, whereas the same advertisement may not create a likelihood of confusion for a pricier business-to-business product. For example, in Select Comfort Corp. v. Baxter, the Eighth Circuit discussed how the level of sophistication among web-based mattress purchasers could be critical to the likelihood of confusion analysis under an initial interest confusion theory.
Does the website linked to the ad clearly identify the advertiser as the source of the goods or services? Courts have found that an advertiser’s failure to name itself as the source may indicate that the advertiser intends to confuse consumers. Intent to confuse can weigh heavily in favor of infringement liability in the likelihood of confusion analysis. For example, the Fifth Circuit found that the generic nature of a defendant’s advertisements enhanced, rather than dispelled, the likelihood of confusion.
Are there any instances of actual confusion? As with intent to confuse, instances of actual consumer confusion weigh heavily in favor of trademark infringement. For example, in Rosetta Stone v. Google, the Fourth Circuit held that the district court should not have ruled in favor of the defendant where the record included evidence of both survey and anecdotal evidence of actual confusion.
These questions are not exhaustive, nor do they all need to weigh in favor of liability. Instead, by balancing the answers to these questions, trademark owners can make a preliminary assessment of a trademark infringement case to inform whether to seek relief for a third party’s use of their trademarks in keyword advertising.
If the analysis outlined above suggests that an advertisement has infringed on your trademark, the first step may be to contact the search engine. For example, although Google allows advertisers to purchase their competitors’ trademarks as keywords, its advertising policies include restrictions on using trademarks in ad text. A trademark owner may submit a complaint through Google’s online form. Upon receipt of a complaint, Google will investigate and, if the advertisement violates its policies, Google will remove it.