Centuries ago, when unscrupulous competitors tried to pass off their wares for the real deal merchant guilds began to affix “marks” to their goods to avoid confusion among customers and to prevent fraud. These “trademarks,” as they became known, let customers easily identify names they could trust and the origin of the goods they wanted to buy.
Today, however, intense competition and the Internet have added a vast new dimension to merchant trade and the unscrupulous have again found ways to divert attention from the real deal.
The virtual world is a combination of things you see on your screen and things you don’t. Included in the netherworld of HTML code are things called “meta tags,” words and phrases that search engines can read and use to identify relevant websites and rank web pages.
When a competitor’s trademark is used as a meta tag or is elsewhere hidden on a web page like a subliminal Internet message, at least one court (the First Circuit Court of Appeals in Venture Tape Corp. v. Mcgills Glass Warehouse) has held that it constitutes a willful infringement of that competitor’s trademark. It’s something you might want to let your webmaster and web designer know because “willful” infringement raises the ante considerably. The penalty for violation ranges up to $1 million per violation.
Similarly, in a recent case (Rescuecom Corp. v. Google Inc.) the U.S. Court of Appeals for the Second Circuit took one step closer to drawing a similar conclusion in a situation where an advertiser purchased a third party trademark as a keyword. What’s particularly controversial is Google’s Keyword Suggestion Tool that actually recommends such keywords.
The purpose of the keyword, of course, is to cause the advertiser’s ad to be displayed whenever that keyword is used as a search term. In Rescuecom, the plaintiff argued that allowing the ad to pop-up in response to the keyword makes the ad “relevant” in the eyes of the user. It creates a misleading and unfair connection with the search term since the connection is really nothing more than a contrived, yet strategically purchased, search term – and therein lies the opportunity for trademark infringement.