“Can someone use my name – or my company’s name – in their Adwords campaign?” As a firm that focuses on Internet law issues, we hear that question – a lot. And some folks are surprised to learn that, on occasion, the answer is: “Maybe.”
After all, as they say: Alls A whole lot is fair in love and digital promotion. That established, parameters do apply. Below, we’ll use a recent online trademark lawsuit as a window to explore legalities involved in domain disputes and Google Adwords.
Dissolved Partnership Leads To Adwords War
A recent Florida lawsuit is a good case study to highlight Adwords legalities.
In the late 1990s, Dr. Paul Tartell and Dr. Lee Mandel opened the South Florida Sinus and Allergy Center (SFSAC). But by 2011, the two physicians parted ways.
One Party Bought Google Adwords That Incorporated The Other Party’s Name
According to reports, after the two doctors dissolved their partnership, Dr. Mandel:
- Incorporated under the name of the old partnership practice, SFSAC – allegedly without telling Dr. Tartell.
- Registered a handful of domains, which incorporated Tartell’s name; those domains forwarded to SFSCA.com
- Bought Google Adwords that included his former partner’s name.
Adwords Legalities: Broken Partnership Dispute Leads To Cybersquatting and Online Trademark Lawsuit
Dr. Tartell felt that Dr. Mandel crossed the Legal Rubicon by purchasing Adwords and domains that included names and phrases associated with the defunct partnership.
So, Tartell filed an “Adwords lawsuit.” In it, the good doctor argued:
- False designation of origin,
- Unfair competition,
- False advertising and
- Unauthorized publication of names and likeness.
To Win This Type of Online Advertising Case, Plaintiffs Must Prove…
To win his domain dispute / Adwords lawsuit, Dr. Tartell had to prove that his name had, in lawyer speak, “acquired a recognizable secondary meaning.” Essentially: Tartell had to prove that he was a “famous” ears-nose-and-throat guy in south Florida. (Hey, if “NYC’s acne-fighting Dr. Zizmor can make the New York Top 100 list (#onlyinnyc), Tartell can make celebrity waves in the Sunshine State!)
In deciding whether or not a claimant satisfies the secondary meaning test, judges consider:
- The length, nature and public recognition of use;
- Past promotional efforts involving the phrase or name under consideration;
- “Branding veracity” – how much time and money was spent promoting a public connection between a given name and a given business.
In the initial trial, to support his “secondary meaning” claim, Tartell offered evidence of lectures, industry presentations, articles and patient testimonials.
Trial Court Sides with Plaintiff in Online Trademark Case
The district court ruled for Tartell, deducing that his name had acquired secondary meaning in South Florida. Tartell walked away with a cool $6K in damages.
But Mandel (SFSAC) appealed, and the 11th Circuit Court reversed the lower court’s decision. Advantage, Mandel.
Ultimately, the bench reasoned that Dr. Tartell’s probative evidence didn’t “promote a conscious connection between [his] name and [his] services.”
What Is The Important Adwords Law Takeaway?
What is the most important thing to remember about this Adwords trademark case?
In certain cases, it’s legal to use another company’s or person’s name in promotional efforts. That said, if a party is “famous” in a given niche, it could be deemed a viable “secondary meaning” argument. In those instances, it may not be allowable to buy Adwords using said party’s name, nor buy a domain that includes the party’s name. For example, “Walmart” can’t buy up a bunch of domains with the word “Target.”
Your Best Bet? Chat With An Attorney.
If you’re battling an adversary over Adwords or domains, it’s best to consult an attorney well versed in online intellectual property law. He or she will be able to assess the specifics of your situation and guide you to the best solution.
Daniel Warner: Internet Business Lawyer
Daniel Warner, a partner at Kelly Warner Law, is a very smart guy. Evidenced by a photographic memory, Warner is a lawyer who can quickly identify relevant issues, and then swiftly maneuver his clients into the best position possible.
A straight shooter, Warner is known for letting potential clients know, upfront, whether or not they have a solid case.
If you value your time – and money – go with online business lawyer Dan Warner. Because he won’t waste either.
H.P. Nguyen, T. (2015, August 27). What Does It Take to Trademark Your Name? Retrieved November 4, 2015, from http://www.natlawreview.com/article/what-does-it-take-to-trademark-your-name#sthash.RXMHkGfM.dpuf