Intellectual Property Law

Utah Repeals Keyword Advertising Ban

By Michael Atkins

Last year, STL reported on Utah’s Trademark Protection Act, which potentially prohibited advertisers from purchasing trademarks owned by others as search engine keywords (see posts here and here). As the Google Public Policy Blog explained, “[I]f a department store like Macy’s wanted to advertise that they sell Nike shoes, under the Utah law they would not have been able to use the term ‘Nike’ to trigger an ad for their store.” (As would be expected, Google Inc. criticized Utah’s regulation.)

That one state purported to regulate the Internet illustrated the problems localized regulations can cause for users of a system that knows no borders.

Though the statute was never enforced, it is now officially dead. A March 5 amendment repealed the provisions allowing for the registration and enforcement of an “electronic registration mark,” the means the statute used to prevent advertisers from purchasing third parties’ trademarks as keywords without permission.

The Technology and Marketing Blog’s eulogy: “[T]he Utah legislature is the Dr. Frankentein of Internet regulation. With their track record, I consider the Utah legislature the flagship example of why Internet federalism doesn’t work.

“And among the bad experiments by the Utah legislature is the Utah Trademark Protection Act, one of the worst pieces of legislation of all time. Fortunately, the Utah legislators responsible for the act ultimately realized the errors of their ways and decided to repeal the substantive provisions.”

With the last year’s language stricken, the “infringement” section of the statute falls back in line with the Lanham Act and International Trademark Association’s Model State Trademark Bill: 

70-3a-402. Infringement.
(1) Subject to Section 70-3a-104 and Subsection (2), any person is liable in a civil action brought by the registrant for any and all of the remedies provided in Section 70-3a-404, if that person:
(a) uses a reproduction, counterfeit, copy, or colorable imitation of a mark registered under this chapter:
(i) without the consent of the registrant; and
(ii) in connection with the sale, distribution, offering for sale, or advertising of any goods or services on or in connection with which that use is likely to cause confusion, mistake, or to deceive as to the source of origin, nature, or quality of those goods or services; or
(b) reproduces, counterfeits, copies, or colorably imitates any mark and applies the reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale or other distribution in this state of goods or services[; or]
[(c) uses an electronic registration mark to cause the delivery or display of an advertisement for a business, goods, or a service:]
[(i) of the same class, as defined in Section 70-3a-308, other than the business, goods,or service of the registrant of the electronic registration mark; or]
[(ii) if that advertisement is likely to cause confusion between the business, goods, or service of the registrant of the electronic registration mark and the business, goods, or service advertised.]

Full post as published by Seattle Trademark Lawyer on March 09, 2008 (boomark / email).