Search Engines and Trademarks
Pike, George H., Information Today
Let's talk about the word "playboy." My Webster's New Collegiate Dictionary defines it as "a man who lives a life devoted chiefly to the pursuit of pleasure." "Playmate," its more innocent cousin, is defined as "a child's companion in play." However, in the minds of many, both of those terms will first conjure up Playboy magazine and the featured "Playmate" model of the month.
During the last couple of years, the words "playboy" and "playmate" have also been at the center of several challenges over the use of trademarked terms in Internet search engines. In 1999, Playboy Enterprises filed a federal trademark-infringement lawsuit against Netscape and Excite for using those terms to match banner advertisements to search results.
Search Engine Advertising
Search engine advertising involves the identification of specific search terms that trigger related ad banners. Internet advertisers pay a premium to search-engine companies for such ads. Their presumption is that the banner advertisement will relate to the searcher's interest and be more likely to result in a click-through.
Searchers who entered "playboy" or "playmate" were provided not only with their search results--which included links to Playboy Enterprises' various Web sites--but also with banner advertising for other adult-oriented sites. Playboy sued on the grounds that the search engines' use of its trademarks to provide links to competing Web sites violated federal trademark law. In January, a federal appellate court agreed with Playboy's legal position and set the case for trial.
Since then, similar suits have been filed, including two against Google by the American Blind and Wallpaper Co. and GEICO Insurance. Notably, Netscape, Excite, and Playboy settled their lawsuit within a few days of the appellate court's January ruling.
Primary and Secondary Meaning
The Playboy situation brings up other trademark issues. Words like "GEICO" (originally an acronym for Government Employees Insurance Co.), "Buick" (named after company founder David Buick), or "Kodak" (a term completely invented by George Eastman) have no traditional dictionary meaning and are exclusively recognized as trademarks for insurance, cars, and camera equipment, respectively.
Other trademarks may have a traditional dictionary meaning as well as a commercial meaning. In trademark law, these are known as the primary and secondary meaning. Words like "American," "blind," and "wallpaper" have primary meanings not covered by any trademark that American Blind and Wallpaper might own. However, when these words are combined and are in the context of "retail mail-order services in the field of wall and window coverings," American Blind and Wallpaper holds Trademark Registration No. 2022925.
It's wrong to believe that any use of trademarked words is infringement. Donald Trump may have trademarked the phrase "You're fired!" (Trademark No. 78361836), but I can certainly use it when dealing with my staff. (Fortunately, I've never needed to.) Trump's trademark is limited to Games, Playthings, and Casino Services. I can use trademarks in this article as long as I'm not attempting to market insurance, cameras, cars, or wallpaper. What distinguishes a trademark from mere words is tying those words to a specific commercial use. …