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Court Orders Negative Match on Trademarked Keyword




It appears that US courts are getting more and more savvy about Internet marketing (or US attorneys are getting more and more savvy about their “expert” witnesses in these cases!). Last week, the 11th circuit court ruled that meta keywords aren’t effective for SEO (so trademark infringement in them didn’t really matter anyway), and the US District Court in the middle district of Florida ruled that a trademark infringing AdWords advertiser would have to use negative keyword matches in future searches.

As Eric Goldman reports, in Orion Bancorp Inc. v. Orion Residential Finance LLC, Orion Bancorp (the trademark holder) sued Orion Residential Finance (the accused infringer) for using the trademarked term “Orion” in AdWords ads. Orion Bancorp not only won their case, but also got the judge to issue an injunction against Orion Residential Finance to apply to future search engine advertising campaigns, barring them

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.

Goldman notes that this injunction may become standard in future trademark rulings.

On its face, the ruling may initially seem a little unfair: after all, shouldn’t Orion Residential Finance have a legitimate right to use its own name in search engine ads?

The answer, however, is no, it doesn’t: Orion Bancorp registered the trademark. As an extremely similar business (well, presumably so, based on their names), Orion Bancorp has a right (even a duty) to protect its trademark. Plus, they may not want to be confused for Orion Residential Finance, depending on each of their business practices.

What’s the best course of action for Orion Residential Finance? Obviously, they can appeal the ruling. But if the ruling ultimately stands, I’m thinking it’s probably time for a name change. And this time, use one that’s not already trademarked.

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  • http://www.gadgets4nowt.co.uk PS3

    On the face of it, that sounds harsh but I imagine the devil is in the detail.

    Stelios of EasyJet in the UK started doing something similar a while back. Anyone with Easy in the name or bearing an Orange logo got sued. They didn’t win them all!

  • http://www.thevanblog.com Steven Bradley

    I’ve always thought trademark law on the dumb side. I can understand a trademark on ‘Orion Bancorp,’ but I don’t get how you can prevent someone from using a word like Orion that’s part of the language.

    I suppose the legality comes into play because the two companies are in the same industry. Would a company called Orion Fishing Supplies be allowed to use the word Orion when bidding on AdWords? Am I allowed to use the word on my web page discussing Orion the constellation?

  • http://www.seoresults.co.za Web Marketing Man

    Seems a bit unfair, but when we’re talking about compoeting in a similar market niche, the courts aren’t going to be sympathetic. Seems Orion Residential Finance is due for a name change.

  • http://treatmentsearch.co.uk rishil

    Keeping in mind that trademark owners spend millions on building their brand, I think its a very very fair policy. After all, if you arent allowed to use another brand in offline marketing, why shouldnt that right extend to offline?

    rishil’s last blog post..Treatment Search