KEYWORD SEARCHING AND THE UTAH TRADEMARK PROTECTION ACT
As I noted yesterday, the Utah Trademark Protection Act is creating quite a stir. I agree with most commentators that the act will likely be struck down as an improper interference with interstate commerce. The law has one benefit - it is getting the country to talk about the issue.
In most countries, a company cannot do keyword advertising with its competitor's trademarks. In one sense, it is like entering taking out a telephone book listing in your competitor's name, or in the name of their product. People calling you would initially believe that you are your competitor or the source of your competitor's product. This is the very situation which the Lanham Act (15 U.S.C. 1051 et seq. - a.k.a. Federal trademark law) was designed to avoid.
The use of trademarks as keywords in search engines raises similar, but slightly different issues. If I am MAZDA and buy POINTIAC as a keyword, everyone will know that they have reached the website of a competitor. However, for less well known marks - or for less brand aware consumers, there is a likelihood that the consumer may wrongfully believe the companies are related. If UTAH BUSINESS buys CONNECT as a keyword, consumers looking for CONNECT may very well believe that CONNECT is owned by other otherwise affiliated with UTAH BUSINESS. Avoiding this type of harm is at the heart of Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)).
Where you stand on the issue probably depends on your business. Obviously, GOOGLE is making piles of cash selling the words - so of course it is - out of an abundance of altruism - interested in protecting the public's right to comparison advertising. However, what about the up and coming business that suddenly finds itself drowned out by larger competitors bidding on its name as a search term. The company is then virtually forced to outbid its competitors to keep potential customers from being siphoned off. Google, in the meantime, rakes in the cash.
As a consumer, I find it pretty annoying when I am looking for a particular product and end up on site after sight that sell competing products, but not the product I am looking for. Furthermore, I occasionally am misled into believing that company A is the source of the product I am looking for, even though it is actually made by company B.
Unfortunately, the court decisions do not add a lot to resolve the situation. Some courts have held that use of another's trademarks constitutes per se infringement. Others have held that keywords are not use of the marks in commerce and therefore found it legal.
On top of all of this, there are certain trademark owners who enforce their marks even when the should not. Try using the word SUPERBOWL if you are selling tickets to the big game and you are likely get a cease and desist letter. (Its called functional use guys - get over it).
As much as I hate to say this, maybe Congress needs to address the issue. Having courts deciding the issue in opposite directions only invites parties to forum shop. Trademark owners - come to Utah (or another 10th Circuit state). Those who use other's trademarks try to litigate the issue somewhere else. It will be a difficult balance between protecting the rights of trademark owners and protecting free speach/comparison advertising and Google's right to make piles of cash.
In most countries, a company cannot do keyword advertising with its competitor's trademarks. In one sense, it is like entering taking out a telephone book listing in your competitor's name, or in the name of their product. People calling you would initially believe that you are your competitor or the source of your competitor's product. This is the very situation which the Lanham Act (15 U.S.C. 1051 et seq. - a.k.a. Federal trademark law) was designed to avoid.
The use of trademarks as keywords in search engines raises similar, but slightly different issues. If I am MAZDA and buy POINTIAC as a keyword, everyone will know that they have reached the website of a competitor. However, for less well known marks - or for less brand aware consumers, there is a likelihood that the consumer may wrongfully believe the companies are related. If UTAH BUSINESS buys CONNECT as a keyword, consumers looking for CONNECT may very well believe that CONNECT is owned by other otherwise affiliated with UTAH BUSINESS. Avoiding this type of harm is at the heart of Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)).
Where you stand on the issue probably depends on your business. Obviously, GOOGLE is making piles of cash selling the words - so of course it is - out of an abundance of altruism - interested in protecting the public's right to comparison advertising. However, what about the up and coming business that suddenly finds itself drowned out by larger competitors bidding on its name as a search term. The company is then virtually forced to outbid its competitors to keep potential customers from being siphoned off. Google, in the meantime, rakes in the cash.
As a consumer, I find it pretty annoying when I am looking for a particular product and end up on site after sight that sell competing products, but not the product I am looking for. Furthermore, I occasionally am misled into believing that company A is the source of the product I am looking for, even though it is actually made by company B.
Unfortunately, the court decisions do not add a lot to resolve the situation. Some courts have held that use of another's trademarks constitutes per se infringement. Others have held that keywords are not use of the marks in commerce and therefore found it legal.
On top of all of this, there are certain trademark owners who enforce their marks even when the should not. Try using the word SUPERBOWL if you are selling tickets to the big game and you are likely get a cease and desist letter. (Its called functional use guys - get over it).
As much as I hate to say this, maybe Congress needs to address the issue. Having courts deciding the issue in opposite directions only invites parties to forum shop. Trademark owners - come to Utah (or another 10th Circuit state). Those who use other's trademarks try to litigate the issue somewhere else. It will be a difficult balance between protecting the rights of trademark owners and protecting free speach/comparison advertising and Google's right to make piles of cash.
Comments