Bass, Berry & Sims attorneys Brian Iverson and Roee Talmor authored an article for Adweek offering insight on the intellectual property legal implications of a tried-and-true digital marketing strategy.

Advertisers often purchase a competitor’s trademark as a search engine keyword so that their content appears when a user searches for the competitor. Trademark owners have a duty to police their own trademarks to retain their rights, which means they may be highly motivated to seek out advertisers using their marks and to take legal action to stop it when the use of their trademark teeters into infringement.

“The primary question in any trademark infringement analysis is whether the advertiser’s use of the mark is likely to confuse customers as to the source of the goods or services,” Brian and Roee said. “This ‘likelihood of confusion test’ is highly fact-intensive and includes several factors, such as the content and context of the advertisement, the strength of the trademark, the sophistication of the target customers, the similarity of the goods and services, and any instances of actual confusion.”

While the infringement analysis can get complicated, the attorneys identified four key questions a trademark owner should ask when determining whether a competitor’s use of trademarked keywords merits action:

  1. Does the third-party advertisement include your trademark?
  2. How sophisticated are your consumers?
  3. Does the website linked to the ad clearly identify the advertiser as the source of the goods or services?
  4. Are there any instances of actual confusion?

For the full article and how answers to these questions might guide a trademark owner’s response, please visit the Adweek website to read the article, “Key Trademark Infringement Principles Marketers Need to Know,” that was published on April 4.