A Thought on Trademarks as Keywords

On my Advanced Trademark final during my last semester at Cardozo, there was a question regarding the use of trademarks as keywords for purposes of banner advertising. The cases that exist hinge on whether or not such a sale constitutes a "use in commerce" for the purposes of trademark law. If it is a "use in commerce" then the practice should be considered trademark infringement. When thinking about the issue, I decided to take a step back and ask what the possible effects would be if the practice was prohibited. One of my conclusions was that banning this practice would result in favoring fanciful marks above all other kinds of trademarks.

To illustrate, let's take a fanciful mark like a drug name such as Viagra. In a world where TM as KW sales are illegal, you would type "Viagra" into Google and no banner advertisements would exist. Pfizer would possess a monopoly over the upper portion of the search results because no one could buy advertisements. However, a company that uses a non-fanciful mark, like American Airlines, could clearly not prevent the sale of "American" as a keyword considering the other uses of the word. This example also proves the difficulty of the implementation of such a plan. Would it just be prohibited to sell the words "American Airlines" in conjunction as a keyword? Could competitors buy the rights to have advertisements pop for the word "American" by speculating that a majority of the searchers will be looking for American Airlines? I have of course picked a grossly oversimplified illustration, but I feel that it demonstrates the issues with such a prohibition and its implementation.

From my perspective, it is preferable to retain the TM as KW practice for several reasons. First, as I demonstrated, a prohibition would result in unequal treatment of trademarks. Second, I believe the practice is a direct analogy of the real-world practice of placing generic products next to their legitimate counterparts on a CVS shelf. This is one of the contexts where the Internet should not be treated differently than its closest real-world analogy. Third, just like the CVS scenario, this encourages more direct competition which is theoretically supposed to benefit consumers.