Don’t Even Think About It: Negative Ad Words and Trademark Injunctions

Orion_constellation_Hevelius.jpgA U.S. District Judge has enjoined a defendant from using a term for its business. That is not an unusual result. The one part of the order that may be of note is that the defendant is not allowed to purchase ad words using the plaintiff’s mark and the defendant must use negative adwords as well on search engines. Here is the pertinent language:

[Defendant is enjoined and restrained] from purchasing or using any form of advertising including keywords or “adwords” in internet advertising containing any mark incorporating Plaintiff’s Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term “ORION” as negative keywords or negative adwords in any internet advertising purchased or used.

So here the mark is Orion. The defendant has been found to have infringed. The normal range of prohibited future activities is in place. But in addition, the defendant must take steps to prevent its appearance on a search engine results page when someone is looking for the plaintiff’s services. The court explains:

For purposes of this court order, a “negative keyword” or “negative adword” shall mean a

special kind of advertiser keyword matching option that allows an advertiser to prevent its advertisement from appearing when the specific terms are a part of a given user’s internet search or search string. It does not infer that the Defendant may use the specified negative keywords or adwords for any other purpose.

Now it seems the defendant was rather blatantly trying to use the plaintiff’s mark (counsel appeared but an answer was not filed). Yet, if the plaintiff’s mark and business match the litany of strength that the court offers (“ranked fourth in the nation among community bank holding companies and thrifts for outstanding performance,” “In June of 2006, Plaintiff was ranked as Florida’s Top Performing Community Bank for the second consecutive year, and was also ranked among the nation’s top performing bank holding companies,” “In June of this year, American Bankers Association’s (ABA) Banking Journal, ranked Orion Bancorp, Inc., fifth in the nation for outstanding financial performance”), wouldn’t a competitor want to be able to appear when someone searched for the premiere bank of the region? Shouldn’t that be allowed?


Given the facts of this case, the defendant may have behaved so badly that such an option is not merited. Still as a general matter, one might infringe but still be allowed to compete. Requiring active steps so that one’s business does not appear in a search result goes a bit far. In a world of virtual shopping, attention is a key lever in building business. Many of the facts of this case point to infringement. But the negative adword limitation essentially stops someone from competing online. The concern is that the smaller player will barely be able, if at all, to get in someone’s face and say yes the larger company exists but so do we.

As larger matter, the Dinwoodie/Janis Dogan/Lemley use debate may inform this issue. Still, if I remember correctly, Dinwoodie and Janis think comparative advertising is a good thing but that use is not the way to protect it. Rather they offer that better injunctions will address the contextual issues. Rebecca Tushnet’s Gone in 60 Milliseconds: Trademark Law and Cognitive Science also merits a read as it questions harms based on association which seems to be part of the negative adwords solution here.

cross-posted at Madisonian

Image: Orion constellation in Uranographia

Source: WikiCommons

Author: Johannes Hevelius

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4 Responses

  1. A.J. Sutter says:

    “But the negative adword limitation essentially stops someone from competing online” — isn’t this true only when the potential customer uses “Orion” as part of his or her search string? If I’m searching for “community bank” or “bank”, wouldn’t the defendant’s name be able to appear?

    “Wouldn’t a competitor want to be able to appear when someone searched for the premiere bank of the region? Shouldn’t that be allowed?” — (1) isn’t this a bit of a non sequitur? Why should what a competitor wants determine what is allowed? (2) Even if we accept that in general a competitor’s name should be allowed to appear when someone searches for the premiere bank in the region, when the competitor goes out of its way to be confusing, shouldn’t it be penalized? I think your “big picture” question loses the focus on the facts of this case.

  2. Deven says:

    A.J.

    Technically yes, it stops use of Orion. But the question is why should this solution be the case?

    No it is not a non sequitor. The competitor wants to compete. And yes I suppose the phrase may be better put as we want to let them compete (fairly). In a search engine world, the way to find customers is to be found on the web.

    The facts of the case, as I said, do not really support the defendant’s behavior. That does not mean the general notion of negative ads is coherent.

    If you want to engage with what I am talking about, as a general matter saying one must be sure that one’s ads do not appear when someone searches for a competitor is overbroad. The court is not saying one must shut down the business. So if one wants to compete with in the sector, one needs to reach the customer. Yes there is some goodwill at play. But if you wanted to appear when someone searched for say Coke, how is that a problem? The position asserted in the comment takes more of a dilution view which is why I suggest Tushnet’s article.

  3. A.J. Sutter says:

    Sorry, I must be denser than usual today, but you lost me.

    In general, I don’t have a problem if your cola comes up when someone is searching for mine, as long as your mark isn’t confusing. But I feel quite differently if it’s confusing, and especially if it’s so confusing as to be infringing.

    If the mark is infringing, or awfully confusing anyway (as I think it was), I don’t see why the judge’s solution is so bad. Nor do I see what dilution has to do with it if there is actual infringement or even confusion; dilution relates only to nonconfusing uses (see Tushnet at 509).

    If the accused mark is infringing, I don’t see why the defendant should be allowed to compete *using that mark*. In the present case, the defendant wasn’t prevented from appearing in search engines when *any* competitor was sought, but only when the string ‘ORION’ is input. The defendant has plenty of opportunities to come up in other searches.

    Now, where I do think you have a point is here: under paragraphs a) through c) of the order, Defendant is forbidden to use ‘Orion’ in connection with its services. So let’s suppose it changes its name to ‘Taurus’. In that case, why shouldn’t the name ‘Taurus’ be able to come up if someone searches for ‘Orion’? As I understand paragraph d) of the order, this would also be forbidden. As to that feature, I do think the order may be overly broad.

    If I am missing something, please help me out here.

  4. If competitors are allowed to purchase each other’s trademark keyword(s), it is a disadvantage to advertise and promote your brand as your competitors can merely purchase your keywords to redirect consumers to their website. Why spend money advertising in print, radio, or TV when your competitors can pick off your costumers when they search? Suppose the phone company gave out the name and number of your competitors as well when consumers searched for your business via 411 or directory assistance?

    It would appear that search engines can reap the fruits of of these trademarks rather than the trademark owners. Businesses must redirect dollars to buy their own trademarked keywords to compete with competitors who are also bidding on the company’s keywords. Hence, the search engines profit from this at the expense of the trademark owners as well as conventional advertising mediums as more advertising dollars flow from conventional advertising to search engines.

    The courts need to give this a closer look so we can achieve more clarity with this issue.

    David Gorman