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If You Can't See It, You Can't "Use" It In New York
Jeffrey M. Becker, David A. Bell
On May 9, 2007, the Eastern District of New York issued a ruling that use of another owner’s trademark as either a metatag or in keyword advertising does not constitute “use in commerce” and is thus not actionable under trademark law.
In this case, Site Pro-1 Inc. v. Better Metal LLC, the plaintiff complained of (a) the unauthorized inclusion of its registered mark in the metatags of its competitor’s website, and (b) the competitor’s purchase of the mark as a keyword from Yahoo!. It filed suit for trademark infringement, dilution, and unfair competition under both the federal Lanham Act and New York state law.
Following Second Circuit precedent, the district court ruled that because the defendant neither displayed the plaintiff’s mark on any goods, displays, containers, or advertisements, nor otherwise used the plaintiff’s mark in a way to indicate source or origin, there could be no trademark use in commerce. Put another way, where the trademark is visible to search engines, but not immediately visible to consumers, the mark is not being used under the Lanham Act’s definition of use, according to the court. Therefore, any consumer confusion – even initial interest confusion – that may have resulted from the defendant’s actions was held to be immaterial to the plaintiff’s claims, each which required the plaintiff to first establish that the defendant had “used” plaintiff’s mark in a commercial manner.
As the court noted, several courts outside of the Second Circuit, including those in the Third, Fourth, Eighth, Ninth, and Tenth Circuits, have held that use of another’s trademark in metatags or as a keyword in keyword advertising does constitute trademark use in commerce. (Although not mentioned by the Site Pro-1 court, at least two cases issued by Sixth Circuit courts have likewise held that such constitutes use.) The Second Circuit thus continues to diverge from the majority view under U.S. law.