The Kelsey Group has been using AdWords to promote our Global Yellow Pages Report — a massive piece of work on the industry from my colleagues Charles Laughlin and Bobbi Luster — and our ad uses the phrase "Yellow Pages." I was told by our marketing person that Google had pulled the ad because it used a trademarked term (in this case "Yellow Pages").
Problem is: Yellow Pages can't be trademarked in the U.S. (that is not the case elsewhere in the world). My understanding, based on the communication we received, is that someone saw the ad and complained (the purported trademark owner).
Google and Yahoo! have put themselves in the position of being trademark police. I'm told by SEM firms that Yahoo! has historically been relatively strict and diapproved ads using trademarks. Google had previously washed its hands of the issue by saying it was a matter exclusively for private resolution.
However Google, as my anecdotal example suggests, has recently injected itself into the role of trademark enforcer. I spent some time in an SEM/SEO discussion group asking about other people's experiences with trademark enforcement in an SEM context. There was a fair amount of confusion about what the exact policies were and how to respond.
While this is a role that I believe Google is being forced (or eventually would have been forced) to play by all the litigation, my example illustrates the challenges and practical problems of assessment and enforcement on a day-to-day basis. Ours is a perfectly legal use; however, someone else — whether mistakenly or maliciously — has effectively blocked our legal use of the term Yellow Pages in the ad.
For companies that rely heavily on search engine marketing, this kind of thing has potential financial consequences.
Google, apparently, did not conduct its own internal investigation about the claim of an infringement (or if it did, it wasn't very thorough). A quick search on the term "Yellow Pages" reveals its use by all manner of companies. This would and should have been an indication of the potential illegitimacy of the claimant's assertion of ownership.
Google is caught in a kind of double bind. The company must do something, but in undertaking to police improper trademark usage, a new set of problems (suggested above) is created. It is extremely difficult do this in a balanced way — give trademark owners the ability to prevent improper use of their marks, while allowing others the ability to legitimately use them (e.g., brands) in ads where appropriate.
That fine level of analysis is a judgment call that can't really be automated and requires human intervention — and costs money accordingly. For the time being, at least, the company should publish policies and guidelines (as well as redress procedures) that are very clear.