March 11, 2008

It was recently announced that Utah has amended its state law that limited the ability for internet search engines from using trademarked items as the basis for triggering online advertisements. As summarized by the Google Public Policy Blog article (link below), last year the Utah State legislature passed a law “that essentially prohibited search engines like Google from allowing trademarks from being used as keywords to trigger ads,” noting that, “at the time, this law ran counter to the precedent of federal trademark law, which has consistently upheld comparative advertising as being good for consumers, competition and free speech.” According to the ClickZ article (link below), Utah’s revised Trademark Protection Act was passed late last Wednesday night, in part because as noted by Utah State Senator Dan Eastman, “[t]he state didn’t want to get into a lawsuit” against a number of large search engine companies. As noted by ClickZ, “[t]he law adopted last year bans advertisers from using the trademarked terms of their competitors to target ads to Utah users, and particularly affects search marketers,” and “[t]he search firms and many search industry execs have argued the law as originally written was unconstitutional and established an unprecedented set of rights for Utah trademark owners inconsistent with traditional trademark law recognized throughout the U.S.” Amendments to the law removed the punitive damages provisions and provisions regarding enforcing the law against companies using their competitor’s trademarks in their advertisements, but retain provisions allowing for civil actions to proceed. As summarized by the recent Search Engine Land article (link below), “[t]his reversal now puts Utah in sync with the precedent set forth by the federal trademark law,” and “[i]n short, you can now legally bid on trademarked terms in Utah, assuming you comply with the search engine's trademark policy in your country.”

Google Public Policy Blog Article: LINK
Search Engine Land Brief Article: LINK
ClickZ Article: LINK


Post a Comment

WIPO Press Releases

WIPO General News

Patent References

Click HERE to search issued U.S. Patents

Click HERE to search published U.S. Patent Applications

Click HERE to browse the MPEP (E8r6 in HTML and PDF, and E8r7 in PDF)

Click HERE to search patent assignments recorded with the USPTO

Click HERE to search Title 37 of the Code of Federal Regulations (rev. 7/1/08)

Click HERE to browse Title 35 of the U.S. Code

Click HERE to view current USPTO fees


Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

EPO Updates

Trademark References

Click HERE to search issued and pending U.S. Trademarks

Click HERE to search TTAB proceedings (via TTABVUE)

Click HERE to search trademark assignments recorded with the USPTO

The DDIP Author

Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


Click HERE to join the e-mail list for my blog

Click HERE to provide feedback on the DDIP blog

Fellow Blogs/Bloggers

AwakenIP (Kuester)
Counterfeit Chic (Scafidi)
I/P Updates (Heinze)
Internet Cases (Brown)
Likelihood of Confusion (Coleman)
Patent Baristas (Albainy-Jenei)
Patent Docs (Zuhn et al.)
Patently-O (Crouch)
The 271 Patent Blog (Zura)
The Ice Loop (Ice Miller LLP)
The Indiana Law Blog (Oddi)
The Invent Blog (Nipper)
The Patent Prospector (Odom)
The TTABlog (Welch)