Although contacting the search engine can be a helpful starting point, the process can take some time, and the search engine will not mediate disputes if there is a disagreement over whether the ad copy violates the trademark owner’s rights. Accordingly, trademark owners should consider having legal counsel send a cease and desist letter to the advertiser. Many advertisers will agree to make changes upon receipt of a formal cease and desist letter, and the letter is often an important step in negotiating an amicable resolution.

Third, if the advertiser refuses to discontinue its activities, the trademark owner may file a lawsuit for trademark infringement. The trademark owner may use the cease and desist letter in the infringement proceedings to show that the advertiser was on notice of the claim and willfully disregarded the trademark owner’s rights. In some cases, this and other evidence of egregious misconduct can persuade a court to award three times the actual damages and attorney fees to the trademark owner.

Finally, some trademark owners may wish to pursue claims against the search engine that hosts the infringing advertisement. In both Playboy Enterprises v. Netscape Communications and Rosetta Stone v. Google, the courts suggested that search engines can be held liable for trademark infringement in certain contexts based on their keyword advertising practices. Most search engines, however, have adapted their keyword advertising policies based on the guidance outlined in prior decisions. Therefore, suits against search engines are unlikely to be successful. 

The case law addressing trademark infringement in keyword advertising is continuing to evolve and some of the applicable principles vary by jurisdiction. Nonetheless, by following the steps outlined here, trademark owners can put themselves in the best position to stop unlawful use of their marks and fulfill their duty to police.