Seattle Trademark Lawyer

The August issue of InsideCounsel discusses Utah’s Trademark Protection Act, which prohibits the use of trademarks in key word advertising that another party has registered in the state as an Electronic Registration Mark. The Act, which was controversial from its inception in March (see STL posts here and here), remains controversial today.

The main problem appears to be that a state is trying to regulate what inherently is interstate commerce. Since search engines do not stop at state lines, Utah’s statute could suddenly make Google and other search engine providers liable for a new form of trademark infringement. Law blogger and professor Eric Goldman explains in the article that “The Utah law requires perfect geo-location technology, and no one has such technology.”

For this reason, the statute could slow interstate commerce, which leads Prof. Goldman to conclude that it violates the dormant Commerce Clause on its face. As a practical matter, he also thinks impeding search engines ultimately could hurt consumers.

“It might cause consumers to view a reduced set of materials in search results, which would channel their behavior to trademark owner-controlled options, reducing competitive options and causing consumers to pay higher prices.”

The article reports that Utah legislators met with critics in April to discuss a compromise but the two sides remain “far apart.” Utah House majority leader David Clark, who sponsored the bill, says that without such a compromise, “the referee in our system is the courts.”