Trademarks as Online Keywords: Monetizing Them

Case Study: #2, 2018

I. Title. Trademarks as Online Keywords: Monetizing Them

II. Introduction. Presently, we send case studies discussing matters we’ve been involved with that you may find useful for your own business. In one recent court case involving a competitor attempting to “take” our client’s trademark, we found it necessary to provide a monetary valuation for our client’s trademark in order to establish a “floor” for damages. Our client’s mark was mainly used online, and there were no extensive sales relating to the mark. But, relying upon online metrics and a proprietary formula, we calculated the “online valuation” of the trademark. The opposition quickly made haste and quit the case, not willing to engage our valuation. This win made us further want to research the question: Can online use a trademark create monetary value in the mark? Apparently, the answer is yes.

III. Background. Online, trademarks can be bought and sold as keywords used in search engines-such is the business of Google and Bing. Keywords are used to trigger paid advertisements on a web page following a search query. Tax filings show the keyword sales markets are large, currently over $30 billion annually. However, many, and we think most, trademark owners remain unaware of the value of their marks within the online business model. Several legal cases show the use of trademarks as keywords to be the exclusive right of the trademark owner. For example, in December 2017, Birkenstock won a battle against Amazon when the district court in Dusseldorf, Germany ordered Amazon to stop using typo-targeting to direct shoppers to Birkenstock’s competitors duringonline searches. Here in the U.S., cases such as Rescuecom Corp v. Google, 562 F.3d 123 also support a trademark owner’s exclusive right to use their trademark as a keyword.

IV. The Problem. Even though trademarks as keywords have been recognized as a legal right for owners, we were unable to locate a model or method of calculating the value of a trademark used online. Our solution was to make one.

V. Proposed Solution.

Img.1 – Online Trademark Valuation calculator- http://dewittyip.com/aprvalue/

Image 1 is a screenshot of our online application to value a trademark as it is used online. At this time, we invite trademark owners and other interested parties to test it free-of-charge. Powered by an industry-specific algorithm known as the “L” factor, and metrics supplied by Google AdWords API, the application takes into consideration a trademark used as a keyword and the industry in which the trademark will be used.

VI. Applicability to future Cases. We hope trademark owners will be able to use the application when considering which trademarks to pursue, i.e., comparing the cost of registering a trademark vs. its current online valuation. In its beta-stage, the application is applicable to the Consumer Electronic industry only. In coming weeks and months, we will be adding additional industry databases. Please provide us feedback so we may improve the tool.