Internet Litigation Update: Purchase of Trademarked Term for Key Word Advertising Held Not Actionable


Purchase of Trademarked Term for Key Word Advertising Held Not Actionable: The District of Utah recently held that the purchase of a trademarked term for use as a key word advertising trigger on an Internet search engine was a use in commerce within the meaning of the federal Lanham Act. Nevertheless, the defendant was granted partial summary judgment because the plaintiff was unable to establish a likelihood of confusion.

The court concluded that a use that serves only to trigger advertising is nonetheless a “use” of a mark contemplated by the Lanham Act. “The Lanham Act does not require use and display of another?s mark for it to constitute „use in commerce,?” the court concluded. Even so, the plaintiff?s claim was held barred to the extent it relied on such uses of the plaintiff?s mark. The court reasoned that any “likelihood of confusion” analysis must determine whether consumers viewing a mark would make an improper mental association with the plaintiff or be confused as to the origin or sponsorship of the defendant?s goods or services. It then concluded that only a visible mark could generate such confusion.

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