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.