Trademark Use on the Internet

The manner in which trademarks may be used on the Internet has changed as the Internet has changed. What has remained the same is the need to protect your trademarks from infringement, to protect your reputation, and the fact that it is always a bad idea to attempt to profit from someone else’s name, reputation, and goodwill.

Competitor Trademarks Within Internet Metatags

Metatags are terms written in hypertext mark-up language code within a website, intended to describe the contents of the website. Although they are generally not visible to most users of the website, it is possible to view them by selecting “view page source” from your Internet browser. The tags are primarily intended to provide information to search engines.

In the early days of search engines, the likelihood that a web page would be placed high on a list of websites by an Internet search engine searching for a specific key word was proportional to the frequency with which that term appeared within the metatags and within the text of the website. Some websites included competitor trademarks as metatags in an attempt to place the website in results for searches for that competitor. Liability for such conduct was imposed by courts on the basis of initial interest confusion.

Search engine algorithms today are significantly more sophisticated, focusing on a variety of indicators of the quality of the content, as well as the likelihood that the page contains the information or items which are being searched. Today, no search engine relies on metatag key words to determine relevancy. Since using a competitor’s trademark in one’s metatags will not provide any advantage in the search results, courts recognize that no damage is done. However, if a trademark infringer has taken other infringing actions, it may remain possible for the use of competitor trademarks in metatags to be an indicator of intent or willful infringement.

Competitor Trademarks Within Adwords

AdWords are terms for which advertisers on search engines bid to have their advertisement displayed when the term is used in a search query. The bid will be for a certain number of searchers choosing to view the web page connected to the advertisement per day. Trademarks are purchased as AdWords by trademark holders, those selling the product or service associated with the trademark, those selling complimentary products or services intended for use in connection with the product or service associated with the trademark, and competitors.

Although the sale of trademark AdWords to competitors has been the subject of litigation, courts have generally found that the use of trademark AdWords is unlikely to result in consumer confusion or diversion.

Trademarks Within Domain Names

Use of a domain name as an Internet address is not trademark use. However, if the domain name is also used as a trademark on the web pages having that domain name, then the domain name can be protected as a trademark.

Regardless of whether a domain name is also used as a trademark, use of a domain name which is confusingly similar to a pre-existing trademark for related goods or services is trademark infringement. Consumers who are searching for the trademarked product will often type the trademark into the address field of their Internet browser, potentially leading them to the infringing website rather than the correct website.

Nominative Fair Use of Trademarks

Nominative fair use: is the limited use of a trademark when the product or service represented by the mark is not one readily identifiable without use of the mark, only use as much of the mark as is reasonably necessary to identify the products or services, and the user does nothing that would suggest sponsorship or endorsement by the trademark holder.

Use the trademarks of others within your own website only for the purpose of truthfully identifying the goods or services associated with that trademark's owner. Such legitimate uses include truthful statements that you sell the trademarked products, truthful statements that you sell complimentary products or services which are intended to be used with the trademarked products, truthful statements that you repair the trademarked products, and truthful comparisons between one's own goods and the trademark owner's goods.

Limit the number of times that any trademark owned by another entity appears on your website, in your sales listings, and in other advertisements. The greater the number of times the other entity's trademark appears, the more likely a court will find that you attempted to lure in the trademark owner's potential customers. Avoid using the stylistic design elements of trademarks owned by others. Instead, use these trademarks in standard character format.

Be careful to avoid the appearance of affiliation with, endorsement by, or sponsorship by the trademark holder unless you are actually authorized by the trademark holder to provide goods or services in connection with the trademark.

As trademark issues frequently involve substantial legal technicalities, you should seek advice from a trademark lawyer.  Please do not hesitate to contact me with your questions.