-by Douglas Jackson

With the advent of the Internet, more and more businesses are creating web pages.  Indeed, most businesses will not be able to compete without this type of online advertising.  Additionally, some businesses are completely virtual.  In e-commerce, a business retail outlet is substituted for a web page.  However, all website users should proceed with caution because using a website could lead to trademark infringement.

A website is only allowed to use the trademark of another entity if it was done so under the nominative fair use doctrine.   Courts consider the nominative fair use doctrine to have three prongs.  According to Designer Skin LLC v. S&L Vitamins, Inc., those three prongs are the following: (1) “the product or service in question must be one not readily identifiable without use of the trademark;” (2) “only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and”  (3) “the user must do nothing that would, in conjunction with the use of the mark, suggest sponsorship or endorsement by the trademark holder.”

This basically means that the trademark can only be used to describe a product that is too difficult to otherwise describe.  For example, in New Kids on the Block v. News American Pub. Inc., the newspaper was conducting a survey on the band, New Kids on the Block.  Because there was no other way to reasonably describe this group, the court held that this type of usage fell within the nominative fair use doctrine.

Although this seems simple enough, a problem arises when trademark names are used in Meta tags.  Some courts, such as the Australian Gold v. Hatfield Court, have held that using a trade name in your Meta tag can be trademark infringement.  This court reasoned that using a Meta tag with attempt to detour traffic onto your site is trademark infringement because such an action makes it difficult for the actual trademark owner to sell its product.  Therefore, try not to use trade names if it is not necessary.

Your goal should by to get traffic to your website because your product is good.  You don’t want to trick traffic to coming by advertising products that your website doesn’t offer.  However, if you do feel tempted, just remember, this can end in a lawsuit that potentially costs you millions of dollars.

Cases:

Designer Skin LLC v. S&L Vitamins, Inc.,  2007 U.S. Dist. LEXIS 19506 (Dist. Ariz. 2007)

New Kids on the Block v. News American Pub. Inc., 971 F.2d 302 (9th Cir. 1992)

Australian Gold v. Hatfield 436 F.3d 1228 (10th Cir. 2006)

Brought to by From the Ground Floor

-This information is for academic purpose only. Nothing in this article purports to be legal advice.  For any advice on any of the matters in this article, you  should contact a licensed attorney in your area.-