Is it illegal to advertise with a competitors name is your ad?

One of my google ads online says "tired of (insert competitor)? Try (insert my company)"

I received an email from the competitors lawyer to take the ad down or they will persue legal action. Are they trying to scare me or do they actually have a case? This would be similar to verizon vs at&t ads.

I have until the 27th to comply so I thought I would see if anyone has experience with this scenario.

The Apple ads directly poke fun at Microsoft and the history of Windows

I would ask you if their name-logo is copyrighted and have you marked it accordingly.

Are you and competitor trading in USA only?

xoneinax said: The Apple ads directly poke fun at Microsoft and the history of Windows

The Apple ads don't mention microsoft by name. It's Mac and PC

depalma13 said: xoneinax said: The Apple ads directly poke fun at Microsoft and the history of Windows

The Apple ads don't mention microsoft by name. It's Mac and PC
They mention Windows, which is copyrighted.

depalma13 said: xoneinax said: The Apple ads directly poke fun at Microsoft and the history of Windows

The Apple ads don't mention microsoft by name. It's Mac and PC

They have said windows though.

scrouds said: I would ignore them. Wait till they send you something on paper before even thinking about doing something.This is just about the worst thing you can do.

IANAL, but I do work in a field that requires passing knowledge of first-amendment law. You have to mount an affirmative defense to protect any rights that you may have. Our lawyers would cheerfully murder us if we ignored a notice like this.

blok said: depalma13 said: xoneinax said: The Apple ads directly poke fun at Microsoft and the history of Windows

The Apple ads don't mention microsoft by name. It's Mac and PC

They have said windows though.

Not sure Windows is copyrighted or trademarked anymore. It may have gone the way of xerox and qtip which are not.

Did you search? Here's a link that might help.

taxmantoo said: blok said: campervanman said: Are you and competitor trading in USA only?

I am in the us only, they are multi national and the email came from germany.

They make over $25 million a year so fighting it in court is not an option for me, I will probably take the ad down on the 26th.

I wonder if you have an anti-SLAPP statute that would apply here, forcing them to pay YOU damages if you win.

Otherwise, it's a lose-lose to fight it. If you win, you owe a ton of attorney fees. If you lose, you owe a ton of attorney fees and have a judgment against you.Anti-SLAPP only applies to speech intended to influence a government decision or other public-policy commentary, like consumer advocacy). (SLAPP stands for Strategic Lawsuit Against Public Participation.) Every anti-SLAPP law I've seen has a specific exemption for commercial speech. Basically, if your statement is intended to benefit your business in some way (except as content) you've automatically lost the protection of anti-SLAPP laws.

I entirely agree with your last paragraph, though. It's highly unlikely that a judge in a copyright infringement case (which is what this would be) would order either side to pay fees unless bad behavior was proven, and that's a high burden to meet. Furthermore, anti-SLAPP doesn't protect you at all if your ISP decides to take down your site for suspected DMCA violations - most often, it's "guilty until proven innocent" in those cases. You have to convince your ISP to put you back online, and your ISP won't do it if they think they're going to incur legal liability.

To me, it boils down to "change the wording in one ad" vs. "hiring an attorney and risking the derailment of a business for an indeterminate amount of time." No contest, really.

Ignoring the letter would be idiotic. I just can't stress this enough. At the very least, the OP should draft a response that says he believes his ad is protected by fair use and asserting jurisdiction under U.S. law. But I wouldn't even do that without a lawyer's help.

depalma13 said: The Apple ads don't mention microsoft by name. It's Mac and PCThey mention many of the Windows versions by exact name (Vista, XP, 98, 2.0, etc), and they were all copyrighted and trademarked up the Wazoo

xoneinax said: depalma13 said: The Apple ads don't mention microsoft by name. It's Mac and PCThey mention many of the Windows versions by exact name (Vista, XP, 98, 2.0, etc), and they were all copyrighted and trademarked up the Wazoo
that might be a difference. the sound "windows" may not be copyrighted as Windows logo. one may say [windows] word in an ad as long as there is no visual association with a copyrighted product. Fruit company may have as many lawyers advising them as the PC target company

Just to clarify, did the email from the other company's attorney say "Dis ad be stank"?

I ran into this once when I was bidding on adwords for a PC repair company I was working for. We had an ad that said something like "Save over 50% off Geeksquad rates." We got a take down and the bosses consulted an attorney. The end results is that while our ad probably wouldn't confuse a copyright protected brand, it was likely not worth fighting the army of lawyers that could come our way. We even proposed changing the ad to say something more like "We are cheaper than Geekquad" and the attorney said, while clearer in intent, and even if we were fully complying with copyright law... it was a fight not worth having. We then changed it to something like "You don't need a geek". That was fine because BestBuy (or whoever owned them then) never copyrighted the word "geek", and probably couldn't since it was common usage.

I look now, and tons of geeksquad bidders use the same strategy.

myadvice said: blok said: campervanman said: Are you and competitor trading in USA only?

I am in the us only, they are multi national and the email came from germany.

They make over $25 million a year so fighting it in court is not an option for me, I will probably take the ad down on the 26th.

Big-pocket intellectual property bullying against the small guy. Even if you are 100% right, you still lose because you can't afford to win.

I agree in principle, but the sticky issue is that while your ad might be fair use, and not confusing, by delivering the ad you're receiving tangible benefit from a trademarked term when a consumer types it into a search engine. It's an interesting legal question, and as stated earlier, the courts have not fully ruled on this yet. So in the meantime, unless you have a in-house legal staff, probably not worth fighting.

An excerpt from the link in my above post, Q&A Should You Bid on Your Competitor’s Name or use Their Name in Ad Copy? follows. There are other interesting sections of the post. Quick Summary: If you want to use your competitor's trademarked name in your ad, consult a lawyer first.

The post said: Can you use your competitor’s name in ad copy?

Fist, let us revisit the fair use of trademarks in the United States. A trademark does not give you absolute protection over a word; it gives you limited protection.

In the US, you can use someone else’s trademark (Fair Use) if (this is US law, not search engine policy)

* Identifying the owner
* Describing own products

Example: Comparisons

Mercedes could say they are rated higher than BMW (according to some study) because they are using the BMW trademark to identify the owner.
Example: Newspaper Ad:

* Best Buy show an image and use the word ‘Apple iPod’ in a newspaper ad because the trademark usage identifies the trademark owner.

Example Describing Products:

* Powered by Intel

The second example, newspaper ad, is one of the reasons’ Google gave when announcing their change to US policy.

In the US, the government recommends the ‘sniff test’ as the first line of determining infringement. The sniff test is:

* Does the the use of the trademark confuse the customer?

Confusing to customer:
Official Apple Store
Buy the iTouch and gain
access to the app store.
Not-an-apple-website.com

Not confusing to customer:
Best Buy Shopping
Buy the iTouch and gain
access to the app store.
BestBuy.com


the above example, the use of ‘official Apple Store’ in an ad copy that goes to a non-apple owned website is definitely confusing. The ad makes a claim that is not true. This would fail the sniff test.

In the Best Buy Example, the use of the trademark iPod Touch would be considered non-confusing as the word is identifying the trademark owner, which is a ‘fair use’ of a trademark.

If you use your competitor’s name in ad copy and claim to be the competitor then you would be confusing the customer and should not use the word in ad copy. This is by far the most common question I’m asked. Someone is using our name in ad copy, our name is not trademarked, what should I do? Obviously, you should trademark your company name. However, this is where many companies decide to sue other companies outside of Google’s influence. Be careful of identifying your company as your competitor’s company with confusing ad copy.

Using your competitor’s trademarked name in an ad copy as a comparison, “Mercedes is rated higher than BMW” is not allowed by the search engines even though it does fall under one of the fair uses of trademarks in the US. However, if your competitor’s name is not trademarked, then you could write an ad copy making that claim. Please note, if you make that claim you must have 3rd party verification on the landing page.

Overall, using your competitor’s name in the ad copy is not a good idea at the moment. Personally, I’m waiting for Google to adopt the all of the ‘fair use’ for trademarks before going down this route. However, if you consult with your lawyer, and feel protected, then you could do it (if your competitor’s name is not trademarked). Just note, you could be sued, however, there’s a good ‘fair use’ defense available. And furthermore, this is my opinion – I’m not a lawyer, just trying to help out the marketers. Talk to the lawyer first.

glxpass said: Did you search? Here's a link that might help.

That link really helped, thanks you.

PMonkeyDishwasher said: Just to clarify, did the email from the other company's attorney say "Dis ad be stank"?

It said- "ur enternetz stank"

A link was already posted that talked about using competitors names in Adwords. Legal or not legal in google eyes doesn't really matter. If they got deep pockets and want to play with you they can always file suit. Unless you have deep pockets to defend (even if they lost the case) it's gonna be lose-lose for you either way. Is it really worth it?

There are multiple issues to deal with regarding trademarks and paid search ads. Usually if the keyword is trademarked then you cannot put it in your ad copy. BUT, you can bid on that keyword and have YOUR ad show up (say you are APPLE but you want your ad to show up everytime someone searches microsoft, not including their trademark in your ad). Not really a point to doing this, as the searcher already has intent on the keyword they searched for, your ad most likely won't be relevant to their search. Thus resulting in a lower CTR and lower Quality Score and a higher cost.

Now I have found that this works in the OFFLINE, brick and mortar world. I do online search marketing for local businesses and I have found that bidding on local competitors terms (say I am doing marketing work for ABC bar in the local town, I bid on keywords for XYZ's bar). But there are a lot more factors that go into paid search (conversions, etc..). Just have to test and test some more and see if the ROI is worth it.

blok said:

I am in the us only, they are multi national and the email came from germany.

This is a very important point. Generally in Europe (EU), advertising may not mention competitors in a negative light, while the USA does permit this, with a lot of restrictions. The cola wars were a very foreign concept (more ways than one) to Europe. That doesn't mean that you are right or that you have to follow German law though. You could certainly try to get more information from this "lawyer." How do you know the sender was even a lawyer or had any authority to send anything? Both the lack of an official communication (e.g. letterhead, company officer signature) and a lack of description of the law(s) they feel you have violated is a red flag to me. They can send you emails all day long requesting you to stop doing something because they don't like it, but that in itself doesn't mean much.