Attorneys – Advertising With Adwords Targeting Your Competitors Ruled Illegal

By attorney Anthony Castelli – Recently I noticed that a lawyer was using my name as a keyword in his Google adwords campaign. In other words when someone would search on my name his ad would show on the same page. A recent Court decision found an arguably analogous situation as this to be a trademark violation, among other things, in my opinion under somewhat similar circumstances and a huge damage award was made.

Here is a screen shot of my search in Google for Anthony Castelli. I apologize for its blurriness

Attorneys – Advertising With Adwords Targeting Your Competitors Ruled Illegal

Here is what Google says when you click on the icon about why they showed his add:

Why these ads?

Find out why we showed you these ads when you searched for “anthony castelli.”

Blake R. Maislin

– www.blakemaislin.com/

Search terms

Matches the exact term you entered: “anthony castelli”

Bear in mind that this is not the only place my competitor’s ad shows up. Search on Anthony Castelli in maps. Wow there he is again. I called this attorney months ago about this and he pretty much blew me off. Maybe this time my call will bring different results. Maybe he will argue my facts are different. My name I do business under Anthony Castelli Attorney has not been trademarked. I guess I should. Maybe we all should.

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Apparently this is a tactic used by Seo folks that think since google permits it then it’s “white hat.” But just because Google permits it does not mean its right. When I sent an inquiry about this through my social channels no one responded until now. A contact through Linkedin sent me a link that cited the case. The federal district in California in the case of Binder et al v Disability Group Inc et al rendered the decision in a trial to the Court. This decision is of limited authority and is not controlling though it can be termed persuasive. For more detailed study of keyword law click here and see citations below.

The Facts

In Binder the defendant Disability group used Binder’s trademark for about 6 months in an advertising campaign through Google Adwords. Defendants used “Binder and Binder” as adwords linked to their web site. Google adwords allows advertisers to pay to place targeted “sponsored Links” on the results page of a Google search. In order to have their ads appear on the search results page of a google search, google advertisers select and bid on adwords 9purchased keywords) so that their ad might be displayed on the search results.

Claim For Infringement of Registered Trademark

Binder claimed that the defendant: 
1. used a mark 
2. without the registrant’s consent 
3. in commerce, 
4. in connection with advertising for services, 
5 where such is likely to cause confusion, or to cause a mistake or to deceive. 

In evaluating the likelihood of confusion these items were considered.

the similarity of the mark
the strength of the mark
the proximity or relatedness of services
the defendant’s intent in selecting the mark
evidence of actual confusion
the marketing channels used
the likelihood of expansion into other markets
the degree of care likely to be exercised by purchasers of the service

In the context of the internet the Court noted the most important factors are :similarity of marks, relatedness of services, and simultaneous use of the marketing channel. The court found that there was a strong likelihood of confusion.

False Advertising Claim and State Law Unfair Competition

The Court also found Binder prevailed under its false advertising claim and its claim under California law for unfair competition

Damages

The defendants got 188 submission forms by individuals who searched for Binder and Binder. Binder retained 18.78% of the cases submitted. The average fee per social security disability cases was $3576.93. Ultimately for lost profits the court awarded $146,117.60. The Court found that the conduct was willful and doubled the damages under the Lanham act . The court also awarded attorneys fees. It is important to note that under the Lanham act the trademark must be registered and the defendant must be on notice of the registration. However the other two causes of action did not rely on the fact of registration of the trademark. By the way do not expect any help from google on this . ( See Eric Goldmann’s article below)

Sources and Citations:

15 U.S.C. Sec 1125 a

Binder et al v disability Group US District Court California 07-2760 (full opinion)

Buying Another’s Trademark deemed Infringement from BVR’s International property Blog

Article by Eric Goldman in Forbes on Google’s impunity

About The Author

Anthony Castelli Attorney is a Cincinnati personal injury lawyer with over 30 years experience in accident injury law. He is a founding donor to the Circle of Legal Trust .