Competitor Keyword Bid Could Bring Lawsuits
The issue of whether bidding on a competitor’s trademark keyword for search advertising constitutes "use in commerce" isn’t one that is settled yet, and may not be settled for some time. That’s not going to stop the lawsuits, though.
Or seemingly duplicitous behavior.
There have been several Second Circuit court rulings that it’s okay to bid on your competitor’s keyword in search advertising and that it does not constitute use in commerce.
That’s probably why 1-800 Contacts sued LensWorld in the Tenth Circuit federal court in Utah, where precedents have been put down with substantial jury awards that this practice is a trademark violation. Utah’s also the place where the infamous (and temporary) ban on using competitor trademarks in keyword advertising pooped out of the state legislature.
So it’s reasonable to think 1-800 Contacts will find more sympathetic ears than it did in it’s case against WhenU. In that same case, as Eric Goldman reports, 1-800 Contacts sued for trademark infringement despite admitting the company did the same thing for its own advertising.
They even joined the uproarious chorus when the Utah legislature tried to ban the practice. Perhaps marketing and legal need to get together on this one.