A New Battle Is Beginning in Branding for the Web

A New Battle Is Beginning in Branding for the Web

Issue 1: Search Engines Selling Ad Space For Keywords That Happen To Be Trademarked Brands

Search engines, including Google, commonly sell Internet ad space on searches that are particular to the keywords used in the search.  When the keyword is an actual trademarked brand, a competitor to that brand may purchase the ad space to that keyword. 

France and Utah have tried to prevent this process.   However, Utah backtracked partially due to concerns the law may be constitutionally invalid because it extends novel trademark rights. 

The reason it may be considered a novel trademark right is because creating “Confusion” is a key element in infringement both Canada and the US.  Courts have accordingly held this does not constitute infringement.  Since the mere appearance of an ad for a competitor is unlikely to cause any confusion on the part of the consumer, the use of keywords has not been held to infringe.

Admittedly, this seems unfair towards the trademark rights holder, since their name is being used by competitors in an attempt to attract consumers.  But since the attempt is not rooted in creating confusion, trademark law, as currently constructed, may not be capable of protecting brands in this way.  

Issue 2: Using Trademarks to Realize The Branding Potential Of Novel Web Terms

As web and computing technologies progress,  they are sometimes accompanied by new terms or buzzwords.  The popularity of these terms create profitable branding opportunities, which are accompanied by trademark law issues.  Two recent examples include Dell’s failed attempt to trademark the term “Cloud Computing” and Microsoft’s attempt to trademark the term “Live Mesh”.  Cloud Computing and Mesh-ing already exist as emerging Web terms that describe general processes. 

This creates an interesting policy dilemma.  There is potential for companies to mischievously exploit the inherent branding value of an emerging Web/High-Tech term.  The product created may be a means used to acquire trademark rights to exclude competitors from use of the term.  This is clearly not an objective of trademark law.  In fact, trademark law already has mechanisms that substantially address this issue.

In both Canada and the US, there is a requirement that a trademark refers to a product either in commercial use, or soon to be in commercial use. 

Furthermore, trademarks must be “Distinctive”.  It will not be valid if the term/mark is “Descriptive”, meaning that it describes the type or the quality of the product, unless the term/mark acquires a “Secondary Meaning” to the public that associates the term/mark with the particular product.

Since the term Mesh-ing refers to general processes, a Trademark would not protect these terms unless “Live Mesh” were to acquire a “Secondary Meaning” to the public at some later point.  In the case of “Cloud Computing”, since the term is the exact same as an existing process, it would likely be deemed “Generic”.  Thus, it could not be the subject of a trademark even if it were to acquire a “Secondary Meaning”.