A Florida District Court made headlines last week when a judge signed an order requiring a company to use ‘negative keywords’ to avoid infringement on a competitor’s trademark.
Orion Bank owns the names Orion, Orion Bank and Orion Bancorp. In the housing finance field, another company named Orion Residential Finance (ORC) has been causing them concern, as the names of and services provided by both companies are strikingly similar.
Orion Bancorp sued ORC and the case went directly into settlement negotiations. Normally the plaintiff in such cases seeks to prohibit the defendant from using their name, and such injunctions generally include all traditional media in the ban.
A typical, boring infringement case – except for one interesting twist.
The order signed by the judge in this case included a provision pertaining to keyword advertising. The order highlights a prohibition against ORC using the name Orion in any form of advertising, or from purchasing any internet keywords without activating the word ‘Orion’ as a negative keyword.
In layman’s terms, ORC must register ‘Orion’ as a negative keyword when purchasing online advertising, and any search including the word ‘Orion’ will NOT allow any ads paid for by ORC to appear.
This is an enormous step in the SEO world. Currently, most consumer oriented websites purchase rights to certain keywords to ensure their ad will be displayed when those words are used in a search. For example, many companies use other brand names in media advertising, such as one cola company taste-testing its diet version against another.
Online, however, Pepsi could theoretically buy advertising rights to the name ‘Coke’ and use it in web advertising statements such as “Coke beaten by Pepsi in taste-test.” A subsequent search for Coke products would pop Pepsi’s ad. This is all well and good, but some unscrupulous companies will brand their product with an almost identical name, and walk very close to the line of impersonating the original product. (Suppose Pepsi came out with a product called ‘Cokke’? Misspellings are a favored trick.)
The custom of buying competitors’ keywords out from under them has become common, and many are wondering how this ruling will affect this policy. Several cases over the past few years have brought the issue of trademark infringement via keyword advertising to the front page. Is a keyword to be considered part of a trademark? So far the answer has been negative.
There is a precedent for relief, however, if you can prove another company is using keywords to deliberately manipulate the system and thus infringing on your rights. If a company is stealing your business by branding themselves with the same name, that is a cause for legal action. This is being expanded in the courts to cover names that are similar enough to cause ‘confusion’ – though what constitutes confusion remains vague.
Many courts are slowly coming to agree that there are indeed cases where there is deliberate obfuscation by using a similar name and keywords to divert people away from their intended destination. Some form of injunction is clearly needed, and that one was imposed in the Orion case may signal to others that such behavior is not going to be accepted.