Minnesota Court Says Keyword Advertising is TM Use in Commerce–Hysitron v. MTS

By Eric Goldman

Hysitron Inc. v. MTS Systems Corp., 2008 WL 3161969 (D. Minn. Aug. 1, 2008)

In a brief and pedestrian opinion, another court outside the Second Circuit said that buying a trademarked keyword is “use in commerce” under the Lanham Act even if the trademark doesn’t appear in the ad copy. The court says:

This Court adopts the majority view that using a trademark to generate advertising constitutes a “use in commerce” under the Lanham Act. This approach adheres to the plain meaning of the Lanham Act’s definition of “use in commerce.” The language used in the definition suggests that a “use in commerce” is not limited to affixing another’s mark to one’s own goods but also encompasses any use of another’s mark to advertise or sell one’s own goods and services.

The court is right about the majority vote, but it’s hardly a strong majority. According to my count, the vote was 7-to-6 before this ruling. However, all 6 no votes are in the 2d Circuit, so geographically there is a stronger basis to characterize the rule as the majority rule.

The court also denied the defense SJ motion because more discovery is required to determine consumer confusion.

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