The Trademark Tango Redux
The Kelsey Group has been using AdWords to promote our Global Yellow Pages Report — a massive piece of work on the industry from my colleagues Charles Laughlin and Bobbi Luster — and our ad uses the phrase "Yellow Pages." I was told by our marketing person that Google had pulled the ad because it used a trademarked term (in this case "Yellow Pages").
Problem is: Yellow Pages can't be trademarked in the U.S. (that is not the case elsewhere in the world). My understanding, based on the communication we received, is that someone saw the ad and complained (the purported trademark owner).
Google and Yahoo! have put themselves in the position of being trademark police. I'm told by SEM firms that Yahoo! has historically been relatively strict and diapproved ads using trademarks. Google had previously washed its hands of the issue by saying it was a matter exclusively for private resolution.
However Google, as my anecdotal example suggests, has recently injected itself into the role of trademark enforcer. I spent some time in an SEM/SEO discussion group asking about other people's experiences with trademark enforcement in an SEM context. There was a fair amount of confusion about what the exact policies were and how to respond.
While this is a role that I believe Google is being forced (or eventually would have been forced) to play by all the litigation, my example illustrates the challenges and practical problems of assessment and enforcement on a day-to-day basis. Ours is a perfectly legal use; however, someone else — whether mistakenly or maliciously — has effectively blocked our legal use of the term Yellow Pages in the ad.
For companies that rely heavily on search engine marketing, this kind of thing has potential financial consequences.
Google, apparently, did not conduct its own internal investigation about the claim of an infringement (or if it did, it wasn't very thorough). A quick search on the term "Yellow Pages" reveals its use by all manner of companies. This would and should have been an indication of the potential illegitimacy of the claimant's assertion of ownership.
Google is caught in a kind of double bind. The company must do something, but in undertaking to police improper trademark usage, a new set of problems (suggested above) is created. It is extremely difficult do this in a balanced way — give trademark owners the ability to prevent improper use of their marks, while allowing others the ability to legitimately use them (e.g., brands) in ads where appropriate.
That fine level of analysis is a judgment call that can't really be automated and requires human intervention — and costs money accordingly. For the time being, at least, the company should publish policies and guidelines (as well as redress procedures) that are very clear.
Greg,
They did the same thing to the Yellow Pages Commando ads and those run by Alan Saltz promoting his book for YP advertisers.
I noticed this as well. It was pretty shocking to see the ads disappear, for the reasons mentioned in your article… but for those same reasons, it can't last long.
I wonder how much of this action is fueled by Google's legal fight with Geico over trademarks in AdWords.
There's a great deal of speculation going on — as well as confusion. Google (and Yahoo) have a role to play in trademark enforcement, given the importance of search as a marketing vehicle. But the process needs to get more clear and there need to be controls that don't result in wrongly declined ads.
YellowPages.com has some trademark protections enforced by a Federal Court – however, against spammers only. This may be confusing Google. The defense Google has fallen back on in the tradmark imbroglio is that while they felt they knew unfair use was happening, they were simply a media outlet and such responsibility lay at the feet of users of the marks, not them as the platform, let alone forcing them to become an arbiter of ownership; that role lays with the USPTO and is extremely complex â€" too complex according to Google. In this, however, with the loss of GEICO, they must be girding themsleves for potential liability.
Silicon Valley embodied the easy money mindset that has emulated all landgrabs â€" so they need to line up for the punishment as well. While we all agree that the role of arbiter of ownership should not be vested in Google, Yahoo, and others, when a company seeks to generate revenue in this manner, the “its too hard†defense should not make it to their lips.
In regard to the yellow pages domain name, is it possible to use another word attached to the yellowpages.com name such as othernameyellowpages.com for example and legally operate a website offering yellowpages services as an affiliate of yellowpages.com?
Mike
PS
Is yellowpages as a word trademarked so one cannot add to beginning or end of words and do business with the words legally??
My email address is now hyperlinked to my name mike.
i forgot to list it in my above question 12/04.