Managing Trademarks in Online Search

March 11, 2013

Trademark SearchThere is an uneasy relationship between trademark owners and online search engines.  Court cases over the years have established basic principles for permissible use of trademarks in online searches.  Recently, the federal district court in the Central District of California added to those principles in the case of, Multi Time Machine, Inc. v. Amazon (Case No. CV 11-09076).

Multi Time Machine (MTM) produces elite watches.  MTM controls distribution of its product, preventing resale of its watches through Amazon and other distributors.

In compliance with the MTM distribution requirements, Amazon does not provide its users with images or descriptions of MTM products, and it does not distribute the MTM watches.  When consumers search Amazon for MTM products, watches from other companies, not MTM, are identified in the search results.  This leads to the situation in which consumers may search MTM trademarked names on Amazon and find only watches produced by other companies.

MTM went to court alleging Amazon’s search system misused MTM’s trademarks.  On February 20, 2013, the court ruled for Amazon, granting summary judgment.

In the MTM case, the court emphasized the issue of customer confusion.  It determined that Amazon’s search process was lawful as it included a clear description of the reason why searches for MTM products generated search results that included only products from other companies.  The court concluded that there was no likelihood of customer confusion as Amazon’s description of the search results provides adequate information to customers.

The MTM case focused on an internal search system, not an open search engine such as Google’s.  The Amazon search system involved review of only Amazon’s content, not the content of the broader Web.  The MTM court’s emphasis on the importance of clear explanation of search result context for consumers is, however, consistent with cases involving open search systems.

The courts have established a basic principle for all online search systems.  That principle is clarity for search users.  Trademark rights are properly protected to the extent that the context for, and meaning of, search results are made clear to users.  Search engine developers are responsible for ensuring that enough information is provided to search users so that those users can understand the actual relationship between their search queries and the results that those queries generate.