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Utah Regulates Key Word Advertising

On March 19, Utah Governor Jon Huntsman, Jr. (pictured below), signed a bill into law that bans some forms of key word advertising. The Trademark Protection Act, SB 236, establishes a new type of mark called an Electronic Registration Mark. Once a mark is electronically registered, the statute prohibits use of the Electronic Registration Mark to trigger advertising for a business, goods, or services of the same class as those represented by the Electronic Registration Mark.

Photo - DeseretNews.com.jpgIn particular, the bill makes a person liable to the registrant of an Electronic Registration Mark if that person, without the registrant’s consent, “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 … 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.”

Is this regulation constitutional? Is it prudent? Will it spawn a new class of cybersquatters? Stay tuned. This statute is sure to be dissected and debated in the weeks to come.

Posted on March 28, 2007 by Registered CommenterMichael Atkins in | Comments2 Comments | References1 Reference

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  • Response
    Response: Trademark lobby picks one up in Utah
    by Ron Coleman at Likelihood of Confusion on March 30, 2007
    I will admit this: For years I have been arguing that this field is so far out from what Congressman Lanham could ever have had in mind when he introduced our modern trademark law shortly after World War II that legislators, not courts, should decide how the Act should apply to keyword advertising. So I don’t have a huge problem with the concept.

Reader Comments (2)

Perhaps that "Dormant Commerce Clause" thing I heard about in law school is asleep on the job! It sounds as though Utah's heart is in the right place in trying to curb what has become a somewhat abusive practice amongst some advertisers, but establishing a parallel trademark system in this fashion is not going to pass federal muster. If I'm wrong on that, I'll register "eat crow" in Utah.
March 30, 2007 | Unregistered CommenterColin Samuels
Um... there already is a parallel system of trademarks in all 50 states. It's called state trademark law. It's been around for two centuries and is specifically contemplated by the Lanham Act. No Dormant Commerce Clause argument if Congress has specifically authorized the states to act, even if one would have existed without the authorization. See Northeast Bancorp., Inc. v. Bd. of Governors, 472 U.S. 159 (1985).

And, if nothing more, this is certainly going to raise the profile of this issue on the Federal level.

Way to go Utah! About time some legislators started paying attention to what amounts to corporate identity theft!
April 2, 2007 | Unregistered CommenterTMLover

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