Trademark "Use" in Metatags and Keywords: The Split Widens

By Pete Salsich III

Mike Kahn had a post recently about the growing split among courts in different Circuits regarding whether use of a competitor's trademark in metatags or keywords was a "use in commerce" under the Lanham Act.  Discussing a recent Northern District of California case that found such a use to be actionable, Mike argued persuasively that if the trademark does not appear in the sponsored link or anywhere else in relation to the competitor's products or services, it is not "used" as defined under the Act. 

Today a judge in the Eastern District of New York weighed in on Mike's side of the argument.  In Site Pro-1, Inc. v. Better Metal, LLC, No. 1:06-cv-06508, EDNY, May 9, 2007, the court found that the defendant's use of the plaintiff's trademark in both metatags and key words in a sponsored search on Yahoo! did not violate the Lanham Act because the trademark did not appear on the defendant's sponsored link, or website, or anywhere else in connection with any products or services offered by the defendant: 

"The key question is whether the defendant placed plaintiff's trademark on any goods, displays, containers, or advertisements, or used plaintiff's trademark in any way that indicates source or origin.  Here, there is no allegation that Better Metal did so, and therefore no Lanham Act "use" has been alleged.  Indeed, the search results submitted as an exhibit to the complaint make clear that Better Metal did not place plaintiff's SITE PRO 1 trademark on any of its goods, or any advertisements or displays associated with the sale of its goods.  Complaint, Ex. B.  Neither the link to Better Metal's website nor the surrounding text mentions SitePro1 or the SITE PRO 1 trademark.  The same is true with Better Metal's metadata, which is not displayed to consumers."

As with Mike's analogy to beer billboards near baseball stadiums in St. Louis and Milwaukee, the court found such use to be simply the latest version of side-by-side advertising.  Quoting another district court case from within the Second Circuit, Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 431 F. Supp. 2d 425, 427 (SDNY 2006), the court concluded: 

" . . . this use is more akin to the product placement marketing strategy employed in retail stores, where, for example, a drug store places its generic products alongside similar national brand products to capitalize on the latter's name recognition.  The sponsored link marketing strategy is the electronic equivalent of product placement in a retail store."

Once you get past the initial reaction that use of one party's trademark to drive traffic to a competing website somehow just seems wrong, this holding makes sense and is more consistent with traditional trademark principles.  This reasoning has not yet taken hold outside of the Second Circuit, however, so for now, at least, the geographic divide on this issue continues. 


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