Can Internet Search Results Cause Trademark Infringement?

Mikael Kolehmainen,

Organic internet search rankings can get you sued...

Imagine this—you're a small business owner in Florida, and you are looking for help promoting your next live event. You remember talking with a colleague about an organization that specializes in promotions, but you can't quite remember the name. "Was it Uber...?"

A quick search reveals Uber, the international ride-sharing service as the top result. Since you live in Gainesville and drive your own car you are not familiar with the company that urbanites across the country depend on.

The company you are looking for is actually called Uber Promotions.

But you don't know that. You wonder if this could be the same company before becoming distracted and moving onto something else. This is what happens when two businesses use the same name in the same region.

It's called "consumer confusion"—and it's grounds for trademark infringement.

When Internet Search Results Cause Trademark Infringement

As you have probably already guessed, this story is not a work of fiction. In recent years, modern search engines have made the topic of national trademarks infringing upon regional trademarks a hot debate. How can you police the "Wild Wild West" that is the Internet?

Uber Promotions owns a regional trademark that trumps the more familiar Uber in Gainesville. The smaller Uber took the bigger Uber to court in early 2016 and was granted a preliminary injunction stating:

Defendant must ensure that a search conducted with the Leading Internet Search engines using the keywords “Uber Gainesville phone” or “Uber Gainesville phone number” returns a result containing Defendant’s 352-area-code number along with words clearly indicating that the result is associated with Defendant. Such words may include “driver partner,” “app,” or “ride.”

Defendant must ensure that this result, while prominently displayed on the search results page, does not replace the result for Plaintiff’s phone number that is currently returned when a search is conducted using these keywords. Compliance may entail using the search engines’ paid advertisement features.

In summary, the judge ordered Uber (the international ride-sharing service) to not pre-empt Uber Promotions in search results conducted in Gainesville for the term "Uber Gainesville."

There's just one problem: Uber doesn't control the Internet.

Thus, the order is nearly impossible to comply with except through further clarifying PPC ad keywords. But that doesn't eliminate the confusion resulting from organic search.

Organic search results are the result of continually tweaked algorithms. These algorithms take into account more than 200 clues before delivering the most relevant answers to search queries. Key terms on websites, freshness of content, page authority, and region are all instantly evaluated behind the scenes. Unfortunately, though, it's not perfect.

How This Will Affect Your Brand

The current stance on using trademarks as keywords is clearly set out by internet search engine providers. They won't investigate or restrict the selection of trademarks as keywords even upon receipt of a trademark complaint. Currently, companies can buy their competitors' trademarks as Adwords. But if the Uber case is any indication of what's to come, we expect search engines to mandate stricter guidelines in the future.

Building software that complies within existing legal frameworks is complex. But it will become increasingly necessary with continued economic globalization in the years to come. And the tech giants who have previously seen themselves as outside of analog regulations will be pressured to comply.

How to Avoid Trademark Infringement

As they say, the best offense is a strong defense. And in this case, that means avoiding choosing trademark names with high risk levels in the first place. TrademarkNow is the only trademark clearance and protection solution capable of delivering a complete picture of marketplace risk within seconds. Search, track, and monitor as many names as you like for one low subscription-based price.

Our revolutionary artificial intelligence system allows companies to evaluate names both in U.S. regions and abroad based on traditional class categories, item names, and other characteristics. Choosing the right name—and protecting it for years to come— has never been this easy.