Volume VI

Issue : 10: May 15, 2008

• U.S. Court Sets Formula for Online Music Royalties
• Court Issues Split Decision In Lucent Microsoft Patent Row
• Manitoba Teen Charged with Impersonating Teacher on Facebook
• Amazon Sues New York State over Requirement to Collect Sales Tax
• Apple Settles Canadian iPod Class Actions
• Social Networking Websites Effective Tools of Communications in Emergencies
• Court Rules No Likelihood of Confusion with Use of Competitors Trademarks in Metatags
• Bell Canada Hit with Privacy Complaint over Deep Packet Inspection
• Plaintiffs Facebook Use Undermines Her Litigation Position
• Ontario Court Issues Decision on E Discovery Citing the Sedona Principles

Home > Volume VI > Issue 10: May 15, 2008 > Court Rules No Likelihood of Confusion with Use of Competitors Trademarks in Metatags

Court Rules No Likelihood of Confusion with Use of Competitors Trademarks in Metatags

The United States District Court for the Eastern District of Wisconsin recently ruled that, with respect to the sale of trademarked goods over the Internet, trademark use in metatags will not substantiate a finding of initial interest confusion absent some direct competition.

Standard Process, Inc. (“SP”), a company which manufactures and sells dietary supplements to health care providers and retailers approved by the company, commenced the action against Dr. Banks, one of its former customers, alleging trademark infringement and false designation of origin in violation of 15 U.S.C. §§1114(1) & 1125(a).

SP terminated its contract with Dr. Banks when it discovered he was selling SP products over the Internet, which was in direct contravention with SP policy. After the contract was terminated, Dr. Banks nevertheless continued to sell unaltered SP products through his website. He also continued to use SP trademarks and photographs of SP products on his website. As a result of SP’s objections, Dr. Banks removed all photos of SP products and SP logos from his website. He also placed a disclaimer on his website which notified his customers of the fact that he was not an authorized seller of SP products and was not affiliated in any way with SP. However, he continued to use SP trademarks in the metatags of his website.

SP claimed that the use of its trademarks in the metatags of Dr. Banks’ website created “initial interest confusion.” That is, by using SP trademarks in the metatags of his website, Dr. Banks confused customers into believing that he was an authorized retailer of SP products. However, the Court rejected this argument, stating that keyword metatags do not create initial interest confusion, in part because keyword metatags are no longer used by modern search engines and so do not influence search results. In any event, the Court ruled that even if search engines still made significant use of metatags, and consumers who enter the words “Standard Process” in a search engine are diverted to Dr. Bank’s website, they are actually given an opportunity to purchase unaltered SP goods. Thus, Dr. Banks is not a direct competitor to SP, and the likelihood of consumer confusion is not present in this situation.

For a copy of the decision (United States District Court, Eastern District of Wisconsin), visit:

http://www.scribd.com/doc/2719759/Standard-Process-v-Banks