The internet has transformed everything from information access and communication (email, social media, etc.) to shopping, but in the process, it has also pushed the boundaries of trademark law as well. One of the ways this has occurred involves what is known as keyword advertising — a form of online advertising whereby the advertiser pays to have an advertisement appear in a search results listing when specific words or phrases are used in the search. It makes sense that advertisers would want to use such a mechanism — it gets their brand in front of consumers who are searching for such goods or services right then and there. When the search terms bid on by advertisers involve the trademarks of another party (especially a competitor), however, things get a bit harder to nail down, and trademark owners have been none too happy about it.
As you can appreciate, trademark owners did not take too kindly to the use of their trademarks by search engine programs in keyword advertising, and they have sued not only the search engines selling search terms incorporating their trademarks but the advertisers who have purchased such keywords as well. The problem is that the courts have not really sided with the trademark owners in such keyword cases. Why? It really comes down to likelihood of confusion — whether an ordinary consumer shopping online would be likely to be confused as to the source of origin of the goods from the keyword-served advertisement. From trademarks involving contact lenses to software, the circuit courts have generally held no likelihood of confusion over ads generated from keyword advertising based on another’s trademarks. That said, likelihood of confusion can occur under certain circumstances where trademarks are used in other contexts as well as in keywords, such as in advertisement text or domain names. I fully realize that this scratches the surface as a summary of the law in the area, but the point is that trademark infringement involving keyword advertising is not an easy nail to drive so to speak, which make the most recent case all the more intriguing.
Many of you have seen ads for personal injury lawyers, but if any of you have spent any time in Texas whatsoever, you have probably seen the ads for Texas personal injury attorney Jim Adler. Advertising himself as “The Texas Hammer,” as well as “The Hammer” and “El Martillo Tejano,” his ads for personal injury legal services are legend in Texas, and he has become quite well known as a personal injury attorney as a result. He owns federal trademark registrations for the trademarks “The Texas Hammer,” Reg. No. 3,503,851 and its Spanish translation “El Martillo Tejano,” Reg. No. 3,503,852, both alleging use since 2002, and “The Hammer,” Reg. No. 3,730,395, alleging use since March 2009. He also has a federal trademark application pending based upon intent-to-use for “The Hammer Lawyer,” Ser. No. 8,8572,196 (collectively, these trademarks are referred to in this article as the “Adler Marks”). Needless to say, Mr. Adler has spent a great deal of time and money to establish his unique legal services brand under the Adler Marks, so it should come as no surprise to see lawsuits filed on behalf of his law firm and himself in the U.S. District Court for the Northern District of Texas against four different defendants alleging trademark infringement for use of his trademarks in keyword advertising on mobile devices.
Unlike other cases, the facts underlying these near-identical complaints appear to go beyond mere comparative advertising. Here is an excerpt from the Statement of the Case in one of the cases, Jim S. Adler, P.C. and Jim Adler v. Alliance Industry Group, et als., Civil Action No. 3:19-cv-2023, that outlines the allegations succinctly:
This lawsuit arises out of Defendants’ intentional use of Plaintiffs’ registered trademarks to knowingly deceive and confuse consumers who are searching specifically for Plaintiffs using a mobile device. Defendants’ fraudulent scheme involves buying keyword ads using Plaintiffs’ registered marks for Google searches made from mobile devices, and using them in conjunction with confusingly similar or generic “click-to-call” ads. “Click-to-call” ads are a relatively new tool for search engine advertising. The “click-to-call” ads target mobile devices and users, and instead of linking to a website, once tapped by a consumer, the ad causes the device to call a predetermined phone number.
The complaint goes into greater detail involving the allegations, but the gist is that the defendants operate legal referral services that use call centers to refer cases called in to the call center to law firms/lawyers with whom they have a legal relationship (such as a referral agreement). By purchasing keywords including the Adler Marks, the complaints allege that the competing “click-to-call” ads on mobile devices can cause confusion to the consumer doing the search, not realizing that the number they are clicking to call on their mobile device is not Mr. Adler’s law firm. In essence, the complaints allege that the defendants are trading upon the goodwill behind the Adler Marks (as well as Mr. Adler’s reputation) to ostensibly induce calls to their call centers. In addition, the complaints allege that the defendants’ practice is bidding-up the cost for the Adler Marks’ fun keyword advertising, resulting in Mr. Adler’s law firm apparently getting “hammered” itself by increased costs for its own internet advertising. Ouch.
As you can see, these cases involve more than just simple keyword ad servicing — they are specific to the use of trademarks in keyword advertising on mobile devices to allegedly confuse consumers seeking a personal injury lawyer into calling a competing lawyer on their mobile device. It will be interesting to see how the plaintiffs overcome the hurdles presented by existing caselaw on likelihood of confusion, given that the ads generated by the defendants appear general to personal injury legal services for vehicle accidents and do not use the Adler Marks within them. How these cases will turn out is anyone’s guess, but existing caselaw is not necessarily on Mr. Adler’s side. That said, the facts alleged involve more than your typical trademark infringement/keyword advertising case, and the nature of the “click-to-call” ads may be enough to tilt the issues presented in his favor. These cases are definitely worth watching. You never know — when it comes to evolving the law regarding trademark infringement in keyword advertising on mobile devices, these cases may just hit the nail on the head.
Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.