News
Academy
Editorial PodcastsEditorial VideosProfiles in Medicine
Conference CoverageConference Listing
Pharmaceutical Executive
Partner Perspectives
Content Engagement HubsE-BooksEventsSponsored PodcastsSponsored VideosWebcastsWhitepapers
Subscribe
Corporate CommunicationsCorporate CommunicationsCorporate CommunicationsCorporate CommunicationsCorporate Communications
Direct-to-ConsumerDirect-to-ConsumerDirect-to-ConsumerDirect-to-Consumer
Emerging BiopharmaEmerging BiopharmaEmerging Biopharma
IR Licensing and PartnershipsIR Licensing and PartnershipsIR Licensing and Partnerships
Market AccessMarket AccessMarket AccessMarket Access
Medical AffairsMedical AffairsMedical AffairsMedical Affairs
OperationsOperationsOperationsOperationsOperations
Patient EngagementPatient Engagement
RegulatoryRegulatoryRegulatoryRegulatory
Sales & MarketingSales & MarketingSales & MarketingSales & MarketingSales & Marketing
Spotlight -
  • Pharmaceutical Executive APEX Awards
  • Latest Executive Roundtables
  • Asembia 2025
IS1
  • Applied Clinical Trials

  • BioPharm International

  • Cannabis Science and Technology

  • Chromatography Online

  • Nutritional Outlook

  • Pharmaceutical Commerce

  • Pharmaceutical Executive

  • Pharm Tech

  • Spectroscopy Online

  • Turbo Machinery Magazine

Corporate CommunicationsCorporate CommunicationsCorporate CommunicationsCorporate CommunicationsCorporate Communications
Direct-to-ConsumerDirect-to-ConsumerDirect-to-ConsumerDirect-to-Consumer
Emerging BiopharmaEmerging BiopharmaEmerging Biopharma
IR Licensing and PartnershipsIR Licensing and PartnershipsIR Licensing and Partnerships
Market AccessMarket AccessMarket AccessMarket Access
Medical AffairsMedical AffairsMedical AffairsMedical Affairs
OperationsOperationsOperationsOperationsOperations
Patient EngagementPatient Engagement
RegulatoryRegulatoryRegulatoryRegulatory
Sales & MarketingSales & MarketingSales & MarketingSales & MarketingSales & Marketing
IS1
  • Applied Clinical Trials

  • BioPharm International

  • Cannabis Science and Technology

  • Chromatography Online

  • Nutritional Outlook

  • Pharmaceutical Commerce

  • Pharmaceutical Executive

  • Pharm Tech

  • Spectroscopy Online

  • Turbo Machinery Magazine

    • Academy
    • Partner Perspectives
    • Subscribe
Advertisement

Legal: Keyword: "Infringement?"

November 1, 2006
Article

Pharmaceutical Executive

Pharmaceutical ExecutivePharmaceutical Executive-11-01-2006
Volume 0
Issue 0

When one company purchases another's branded trademarks as keyword search terms, the goal is to lure consumers to the buyer's site.

Pharma advertisers have come to rely on sponsored ads on Internet search engines, such as Google, Netscape, and Yahoo!, to personalize their marketing messages. In this effort, the industry is not alone: Google says it derives more than 90 percent of its revenue from keyword-linked sponsored advertising.

Craig Mende is a member of Fross Zelnick Lehrman & Zissu. He can be reached at cmende@frosszelnick.com

Companies pay search engines to associate certain keyword search terms with their ads. For example, a pain-reliever manufacturer might purchase the keyword "headache." The company's ad and Web site link will then appear in an area of the results page, labeled "sponsored results," when consumers type these words into the search box of Google or other search engines. So far, so good: This use of keywords allows advertisers to target consumers who express interest in their products through the use of specific search terms.

But the controversy arises when the keyword being used to trigger an ad is not a generic term, like "headache," but rather, the trademark of a competing manufacturer. The manufacturer of Brand X pain reliever, for example, might purchase as a keyword its competitor's trademark, "Brand Z." As a result, the most prominent result from a search for "Brand Z" may be a sponsored link to the Web site of its competitor, Brand X. The intended result, of course, is that the consumer searching for Brand Z pain reliever will instead buy the Brand X product.

Different Styles, Similar Threat

In April 2004, Google began allowing advertisers to purchase keywords of other companies' trademarks, and other search engines soon followed suit. Google's policy bars the use of trademarks in ad text—the blurb that accompanies the link in the search results—but places no restraints on the use of trademarks as keywords.

Zoe Hilden is a former associate of Fross Zelnick Lehrman & Zissu.

Yahoo! takes a different approach. It permits the use of a trademark as a keyword, but only by advertisers that make fair use of that trademark—like in legitimate comparative advertising. Thus, Yahoo! would permit a keyword-linked ad containing the claim "Brand X relieves headaches faster than Brand Z," whereas Google would not.

Early Rulings

Several companies have already filed lawsuits challenging the sale of their trademarks as keywords, alleging that the practice unfairly exploits the goodwill companies build in their brands and constitutes trademark infringement and dilution, and unfair competition. Multiple actions are pending against both the search engine companies selling the keywords and the advertisers that have purchased them.

In order to prevail in such an action, a trademark owner must prove that the use of its trademark as a keyword (1) constitutes "use in commerce" under the US Trademark Act, which usually requires that the trademark is actually used on the labels for goods traveling in interstate commerce, and (2) either creates a likelihood of confusion among consumers or causes the trademark to lose its unique identification.

The courts have not yet provided clear guidance on any of these issues, but some early rulings do not bode well for brand owners. After a court in a different case ruled that the sale of keywords could constitute trademark infringement, a Virginia district court held in August 2005 that Google had not violated the trademark rights of Government Employees' Insurance Company (GEICO) by selling the search term "GEICO" as a keyword to trigger the ads of competing insurance companies. The court found that GEICO failed to present evidence that the use of "GEICO" as a keyword, standing alone, caused confusion among consumers.

In May of this year, a federal judge in New York dismissed a claim by Merck against owners of online pharmacies that purchased the keyword "Zocor." The judge ruled that the use of "Zocor" as a keyword did not constitute use in commerce, but rather, was "akin to the product-placement marketing strategy employed in retail stores, where, for example, a drugstore places its generic drugs alongside similar national brands to capitalize on the latter's name recognition."

Cases have now gone both ways. But a key question remains: Will Internet users understand that sponsored links aren't necessarily owned by the brand for which they are searching? If consumers get this, trademark owners' claims of infringement and unfair competition—based on the premise that the practice confuses consumers—will become even more difficult to establish.

Articles in this issue

i3_t-382545-1408688086074.jpg
Back Page: The Case for Diversity
i1-382532-1408688123085.jpg
Opinion: AARPeeved
i2-382531-1408688126488.gif
Thoughtleader: Martin Mattingly, Ambrx
Direct to Consumer: Emotional Connection
Direct to Consumer: Emotional Connection
Man in a Hurry
Man in a Hurry
Global Style
Global Style
i3-382534-1408688117148.gif
Washington Report: Waiting for Advice
Unraveling the eSource
Unraveling the eSource
i1-382533-1408688119137.jpg
Legal: Keyword: "Infringement?"
Roundtable: Deficit Reduction Act
Roundtable: Deficit Reduction Act
From the Editor: Under Revision
From the Editor: Under Revision
Alternative Media: Time to Change the Channel
Alternative Media: Time to Change the Channel
Marketing to Professionals: Penetrate the Point of Purchase
Marketing to Professionals: Penetrate the Point of Purchase
Recent Videos
Marcel Botha, 10XBeta
Matthew Yelovich, Cleary Gottlieb, Theranos Case
Marcel Botha, 10XBeta
Gameto - Addressing Regulatory Hurdles in iPSC-Based Fertility
Related Content

FDA Grants Full Approval to Novavax’s Nuvaxovid COVID-19 Vaccine

FDA Grants Full Approval to Novavax’s Nuvaxovid COVID-19 Vaccine

Don Tracy, Associate Editor
May 20th 2025
Article

Previously granted Emergency Use Authorization, Nuvaxovid is now available for individuals over 12 years of age.


Peter Ax, UpScriptHealth

Tariffs and Drug Prices: Understanding the Impact on Pharmaceuticals

Miranda Schmalfuhs
March 24th 2025
Podcast

Peter Ax, founder & CEO of UpScriptHealth, discusses the impact of tariffs on the pharmaceutical industry and how digital health platforms could potentially help offset them.


FDA Approves Merck’s Welireg for Advanced, Unresectable, or Metastatic Pheochromocytoma, Paraganglioma

FDA Approves Merck’s Welireg for Advanced, Unresectable, or Metastatic Pheochromocytoma, Paraganglioma

Don Tracy, Associate Editor
May 15th 2025
Article

Welireg marks the first FDA-approved non-surgical treatment option for locally advanced, unresectable, or metastatic pheochromocytoma or paraganglioma in patients over 12 years of age.


Navigating Distrust: Pharma in the Age of Social Media

Navigating Distrust: Pharma in the Age of Social Media

Miranda Schmalfuhs
February 18th 2025
Podcast

Ian Baer, Founder and CEO of Sooth, discusses how the growing distrust in social media will impact industry marketing strategies and the relationships between pharmaceutical companies and the patients they aim to serve. He also explains dark social, how to combat misinformation, closing the trust gap, and more.


Stock.adobe.com

NAMI Responds to Potential Cuts to Medicaid

Mike Hollan
May 15th 2025
Article

The organization believes that the proposed cuts will be harmful to Americans suffering from mental illnesses.


FDA, CDC Recommend Pause on Valneva's Chikungunya Vaccine for Seniors

FDA, CDC Recommend Pause on Valneva's Chikungunya Vaccine for Seniors

Don Tracy, Associate Editor
May 14th 2025
Article

The decision follows ongoing investigations into serious adverse events primarily reported in elderly individuals who received the Ixchiq chikungunya vaccine.

Related Content

FDA Grants Full Approval to Novavax’s Nuvaxovid COVID-19 Vaccine

FDA Grants Full Approval to Novavax’s Nuvaxovid COVID-19 Vaccine

Don Tracy, Associate Editor
May 20th 2025
Article

Previously granted Emergency Use Authorization, Nuvaxovid is now available for individuals over 12 years of age.


Peter Ax, UpScriptHealth

Tariffs and Drug Prices: Understanding the Impact on Pharmaceuticals

Miranda Schmalfuhs
March 24th 2025
Podcast

Peter Ax, founder & CEO of UpScriptHealth, discusses the impact of tariffs on the pharmaceutical industry and how digital health platforms could potentially help offset them.


FDA Approves Merck’s Welireg for Advanced, Unresectable, or Metastatic Pheochromocytoma, Paraganglioma

FDA Approves Merck’s Welireg for Advanced, Unresectable, or Metastatic Pheochromocytoma, Paraganglioma

Don Tracy, Associate Editor
May 15th 2025
Article

Welireg marks the first FDA-approved non-surgical treatment option for locally advanced, unresectable, or metastatic pheochromocytoma or paraganglioma in patients over 12 years of age.


Navigating Distrust: Pharma in the Age of Social Media

Navigating Distrust: Pharma in the Age of Social Media

Miranda Schmalfuhs
February 18th 2025
Podcast

Ian Baer, Founder and CEO of Sooth, discusses how the growing distrust in social media will impact industry marketing strategies and the relationships between pharmaceutical companies and the patients they aim to serve. He also explains dark social, how to combat misinformation, closing the trust gap, and more.


Stock.adobe.com

NAMI Responds to Potential Cuts to Medicaid

Mike Hollan
May 15th 2025
Article

The organization believes that the proposed cuts will be harmful to Americans suffering from mental illnesses.


FDA, CDC Recommend Pause on Valneva's Chikungunya Vaccine for Seniors

FDA, CDC Recommend Pause on Valneva's Chikungunya Vaccine for Seniors

Don Tracy, Associate Editor
May 14th 2025
Article

The decision follows ongoing investigations into serious adverse events primarily reported in elderly individuals who received the Ixchiq chikungunya vaccine.

About
Advertise
Contact Us
Editorial Board
Editorial Submission Guidelines
Do Not Sell My Personal Information
Privacy Policy
Terms and Conditions
Contact Info

2 Commerce Drive
Cranbury, NJ 08512

609-716-7777

© 2025 MJH Life Sciences

All rights reserved.