Help! My Competitor is Using my Company Name in Google AdWords!

 

QUESTION:  I just discovered one of my competitors is using my company name in its Google AdWords advertising campaign.  What should I do?

ANSWER:  Your company has likely developed common law trademark rights to the use of its name, and if you have gone through a formal trademark registration process, you may have also received statutory trademark protection.  Therefore, you have several options for responding:

a)  Contact your competitor directly to persuade him or her to relinquish use of your company name in Google AdWords.

Despite being a lawyer (and all the stereotypes to the contrary), I think it is almost always preferable for businessmen and women to take the direct and honest approach.  Your competitor may not realize there is anything wrong with his actions.  Reminding your competitor that his actions likely infringe upon your trademark rights, and may also violate applicable state or federal laws on deceptive advertising, fraud, or misrepresentation, may persuade him to change the metrics he purchased through Google Adwords.

b)  Follow Google AdWords’s specified trademark complaint process.

Google has a formal complaint process for handling complaints of trademark infringement in Google AdWords.  Unfortunately, Google does not make it easy to find the trademark complaint form, at least in my opinion.  I had to search the Google search engine for the terms “Google AdWords trademark” to find a link to the Google AdWords terms and conditions, which state that trademark and/or intellectual property infringement is prohibited.  I also found a link to an article on “What is Google’s AdWords and AdSense trademark policy?” on Google’s support forum.  If you are patient enough to read or skim most of the article, there is a link to the trademark complaint form towards the bottom of the article.  The complaint form will ask you to identify yourself, the trademark, and explain how you have obtained rights to use of the trademark.  You will have to specifically state whether your trademark rights were obtained through registration, are subject of a pending application for registration, or were acquired through use of the mark itself.

Google’s response to your complaint will depend on the information you submit.  I have never acted as legal counsel for Google, so I cannot comment with certainty regarding its trademark dispute policy.  However, I would predict its team of lawyers has advised the company to avoid making legal determinations as to which party in a trademark dispute has prevailing rights.  Therefore, I would expect your complaint to be more likely to succeed if you can (1) clearly show that the violating party has no claim to your company name and has only used it deceive Google users; or (2) clearly demonstrate your trademark rights to your company name through record of a trademark registration.

Complaints made on other bases may also be successful, but those complaints will be more difficult for Google to resolve, and therefore it is harder to predict whether they will be successful.

c)  Pursue legal remedies for trademark infringement or another legal claim.

Your lawyer will be able to assist you with determining whether your competitor’s actions constitute trademark infringement, fraud, misrepresentation, deceptive advertising, tortious interference with a business relationship, or some other actionable legal infraction. Your lawyer will then outline a variety of strategies for enforcing your right.  The strategies may include sending a cease-and-desist letter, seeking injunctive relief, commencing legal action for monetary damages, or other approaches.  If you have questions about strategic options appropriate for your situation, contact ES Swanson Law.

Conclusion:  A competitor who has purchased your company’s name in Google AdWords may claim that “everyone is doing it.”  However, the “everyone is doing it” defense doesn’t work for kids in elementary school, and it is not a valid legal defense that allows your competitor to violate your rights.  The options above, or some combination thereof, will put you on the right path to enforcing your rights.

 

If you have questions about how to protect your trademark rights, whether registering a trademark is right for your company, or some other aspect of trademark or internet law, please contact ES Swanson Law.