Dealing with Infringing Online Advertisements

Lucas S. Michels, Attorney, Ironmark Law Group, PLLC

As Internet advertising becomes the primary channel for promoting goods and services, businesses increasingly encounter the copying (aka the infringement) of their brands in competitors’ online ads. This unauthorized use of trademark-protected company and brand names in online ads is used (knowingly or innocently) to divert business and increase the recognition of a competitor’s goods and services. This is trademark infringement. It is unlawful. The question is what can an average business owner do about it?

Fortunately, many major search engines such as Google, Bing and Yahoo! as well as social media sites such as Facebook and Twitter, maintain internal policies that allow trademark owners or their agents to submit complaints to remove infringing ads. However, before you start filing online complaints, there are a few things to note:

First, your business generally needs a federal trademark registration to submit a complaint for unauthorized use of the trademark. A federal trademark registration establishes a presumption of your business’ ownership and exclusive rights in the trademark, giving search engines and websites assurances that a filed complaint is valid.

Second, search engines and social media sites have their own track records for responding to complaints. For example, Bing and Yahoo! will often remove an infringing ad upon evidence of a federal trademark registration, while Google generally declines removing ads infringing descriptive trademarks, even if they are federally-registered.

Third, some search engines and sites require the submission of multiple complaints against an infringer before all infringing ads will be removed. This can be due to the ineffectiveness of the complaint system, or (more likely) because an infringing advertiser has made multiple ad purchases, meaning that a successful complaint may only remove one or a few of several purchased ads. In short, you may need to “rinse and repeat” until all the infringing ads are removed.

Lastly, (and most importantly) an online advertising complaint will impact the infringing advertiser’s online reputation as well as yours. Before submitting an advertising complaint, you should consider reaching out to the alleged infringer, either directly or through an attorney, to see if the infringement was innocent and if the disputed ad can be removed amicably.

Those with further questions about registering, monitoring and protecting their brand portfolios should contact a qualified trademark attorney.