Tuesday, January 19, 2016

Trademark - Google Adwords and Distinctiveness

      A colleague shared a Google AdWords trademark complaint story with me.  My colleague's client saw that a competitor was using their registered trademark in their Google advertisement.  My colleague followed Google's trademark complaint procedure, and received the following response:

"We're unable to process for your trademark ****** at this time because your trademark has been marked 2(f) by the U.S. Patent and Trademark Office. This designation means that there are potentially descriptive uses of this term or phrase, and therefore we cannot process or prevent all instances of this term." 

    This response is interesting because it pulls back the curtain, a little, on how Google processes Google AdWord trademark complaints.

    First, it reveals that Google is examining trademark registration certificates and looking for a "SEC. 2(F)." designation.  If Google finds such a designation, it probably will reject the complaint.

    Second, it reveals that Google's doesn't consider all registered trademark the same.  Rather, Google views registered marks granted with an acquired distinctiveness argument under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), as a "lesser" registered mark and, therefore, deserving of less protection.  This is an interesting position for two reasons.  First, the registrant successfully persuaded the trademark examiner that there was sufficient evidence that its mark had acquired distinctiveness with regard to its goods and services.  Second, under US trademark law, there is no distinction between a registered mark on the Principal Register with or without a Section 2(f) designation. 

    Given this knowledge, what should a trademark owner do when its registered trademark has a Section 2(f) designation?  In the Clarifications section of the trademark complaint form, you will want to argue affirmatively that your mark acquired distinctiveness as to the registered goods and services, and that the USPTO was persuaded by the evidence you had submitted.  Additionally, if your mark is incontestable, 15 U.S.C. § 1065, then you should state that you have the exclusive right to use the mark with the registered goods and services.

- Henry Park

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