Trademarks as Search Engine Keywords: Much Ado About Something?

66 Pages Posted: 7 Sep 2012 Last revised: 28 Jan 2014

David J. Franklyn

University of San Francisco School of Law

David A. Hyman

Georgetown University

Abstract

Disgruntled trademark owners have filed more than one hundred lawsuits in the United States and Europe, claiming that their trademarks should not be sold by search engines for use as keywords. Despite the volume of litigation, there has been little independent empirical work on consumer goals and expectations when they use trademarks as search terms; on whether consumers are actually confused by search results; and on which entities are buying trademarks as keywords. Instead, judges have relied heavily on their own intuitions, based on little more than armchair empiricism, to resolve such matters.

We report on the results of a two-part study, including three online consumer surveys, and a coding study of the results when 2,500 trademarks were run through three search engines. Consumer goals and expectations turn out to be quite heterogeneous: a majority of consumers use brand names to search primarily for the branded goods, but most consumers are open to purchasing competing products. We find little evidence of consumer confusion regarding the source of goods, but only a small minority of consumers correctly and consistently distinguished paid ads from unpaid search results. We also find that the aggregate risk of consumer confusion is low, because most of the ads triggered by the use of trademarks as keywords are for authorized sellers or the trademark owners themselves. However, a sizeable percentage of survey respondents thought it was unfair and inappropriate for one company to purchase another company’s trademark as a keyword, independent of confusion as to source.

Although we do find some evidence of confusion, the types of confusion we document do not map neatly onto the categories recognized by U.S. trademark law. Our findings suggest that the development of the doctrine in this area has not been well served by the reliance of judges on casual empiricism in resolving these disputes. Much remains to be done to ensure that trademark doctrine “fits” the on-line context, and that it is applied in ways that are empirically grounded.

Keywords: trademark keywords, infringement internet, search engine

JEL Classification: D23, K11, O34

Suggested Citation

Franklyn, David J. and Hyman, David A., Trademarks as Search Engine Keywords: Much Ado About Something?. Harvard Journal of Law and Technology, Vol. 26, Number 2, 2013; Illinois Program in Law, Behavior and Social Science Paper No. LBSS12-15 ; Univ. of San Francisco Law Research Paper No. 2012-20; 7th Annual Conference on Empirical Legal Studies Paper. Available at SSRN: https://ssrn.com/abstract=2110364 or http://dx.doi.org/10.2139/ssrn.2110364

David J. Franklyn

University of San Francisco School of Law ( email )

2130 Fulton Street
San Francisco, CA 94117
United States
(415) 422-6229 (Phone)
(415) 422-6433 (Fax)

HOME PAGE: http://www.usfca.edu/law/faculty/fulltime/DavidJFranklyn.html

David A. Hyman (Contact Author)

Georgetown University ( email )

Washington, DC 20057
United States

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