Contextual Advertising on the Internet: The Evolving Trademark Challenge

Strategies to Protect Brands and Avoid Liability for Infringement

Recording of a 90-minute premium CLE webinar with Q&A

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Conducted on Tuesday, July 14, 2009

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Course Materials

The teleconference/course format offers two options for participation: audio only via telephone (download speaker handouts prior to the program) or audio via phone plus online viewing of speaker-controlled PowerPoint presentations.

This seminar will examine how the courts are addressing trademark infringement claims arising from online contextual advertising. The panel will provide strategies for companies to take advantage of contextual advertising's benefits while avoiding liability for infringement.


In recent years, online contextual advertising has become a powerful, cost-effective marketing tool for companies. Contextual advertising—ads targeting Internet users based on the users’ online behavior—is a multibillion-dollar business for adware companies and Internet search engines.

The surge in online contextual advertising has raised questions of whether contextual ads violate competitors’ trademarks. Litigation arising from contextual advertising yields inconsistent results, as the determination of trademark infringement tends to be fact-specific.

On April 3, 2009, the Second Circuit issued an instructive ruling in Rescuecom Corp. v. Google Inc. The ruling highlighted potential liabilities due to a companies’ use of competitor trademarks in contextual advertising and the increasing likelihood of future infringement lawsuits.

Listen as our panel of intellectual property attorneys examines how the courts are addressing online contextual advertising. The panel will outline best practices for companies to leverage the business benefits of contextual advertising while avoiding liability for trademark infringement.



  1. Online contextual advertising — overview
    1. Metatags
    2. Pop-up advertising
    3. Keyword advertising
    4. Click-through advertising
  2. Court treatment of contextual advertising
    1. Rescuecom Corp. v. Google Inc. (2d Cir. 2009) and other recent “use in commerce” cases
    2. Likelihood of confusion/initial interest confusion
  3. Best practices for avoiding liability for infringement


The panel will review these and other key questions:

  • How are the courts responding to trademark infringement cases arising from the increase in contextual advertising on the Internet?
  • What lessons on "use in commerce" can IP counsel glean from the recent Rescuecom Corp. v. Google Inc. ruling?
  • How will courts likely deal with the "likelihood of confusion" issues surrounding contextual advertising on the Internet?


Terence P. Ross
Terence P. Ross

Gibson Dunn & Crutcher

He has broad experience in various types of intellectual property disputes, including patent and copyright...  |  Read More

Jessica L. Rothstein
Jessica L. Rothstein

Senior Counsel
Goodwin Procter

She concentrates her practice in the counseling, protection and licensing of intellectual property rights, with an...  |  Read More

Norman C. Simon
Norman C. Simon

Kramer Levin Naftalis & Frankel

Mr. Simon works on all aspects of commercial litigation, at both the trial and appellate levels, as well as in the...  |  Read More

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