Stop Competitors Diverting Web Traffic: How to Prevent Misuse of Your Trademarks

Author:Mr David Kelly
Profession:Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Co-authored by Daniel Binstock

Originally published in International Technology Law Review, June 2001

Metatags are crucial to any internet presence. They are words in the form of HTML tags used to describe the content of a website. Although not readily visible to web surfers, metatags perform an important function by helping search engines analyze which websites should be listed in search results.

The greater the number of times a term appears in metatags and in the text of the webpage itself, the greater the chance that:

a) a search engine will choose that website in its search for the particular word; and

b) the website will be listed higher on the list of search results.

The use of metatags can therefore affect how often a website is accessed on the internet.

Metatag misuse

It comes as no surprise that unscrupulous traders use others' trademarks as metatags to trade off of the goodwill of the trademark to attract users to their websites. The resulting lawsuits are the easy metatag cases for courts to decide.

For example, in Niton Corp. v. Radiation Monitoring Devices, Inc. (D. Mass. 1998), the plaintiff and the defendant both manufactured products to detect lead in paint. Although there was no relationship between the parties, the defendant used the metatag 'The Home Page of [the plaintiff] Niton Corporation, makers of the finest lead, radon, and multi-element detectors.'

An internet search for 'The Home Page of Niton Corporation' turned up hits for the defendant's website as well as the plaintiff's. The court held that there was sufficient evidence to warrant the issuance of a preliminary injunction on the plaintiff's claim for trademark infringement. It enjoined the defendant from using its website in a manner likely to suggest that the parties were affiliated or that the defendant manufactured products marketed by the plaintiff.

Similarly, in New York State Society of Certified Public Accountants v. Eric Louis Associates (S.D.N.Y. 1999), the plaintiff, a non-profit organization for certified public accountants, used the trademark 'NYSSCPA' and operated a website at ''.

The defendant, a personnel placement firm featuring accounting professionals, used not only the domain name '' to identify its website but 'NYSSCPA' in its metatags.

The court held that the defendant's actions constituted both false designation of origin and dilution. In reaching this conclusion, the court noted that 'many persons searching for [the plaintiff's] website, but unaware of its precise address, would . . . attempt to access it by typing [the plaintiff's] NYSSCPA mark into a search engine'.

The more difficult cases are those where the defendant arguably has a legitimate right to use the plaintiff's trademark in its metatags. These cases generally arise under three scenarios:

a) nominative fair use, where the defendant needs to use the plaintiff's trademark in its metatags because it accurately advises users that the content of its website has something to do with the plaintiff;

b) descriptive fair use, where the defendant needs to use the plaintiff's trademark in its ordinary descriptive sense to describe the defendant's products or services; and

c) legal right to use, the defendant has independent rights in the same trademark for different products or services.

Nominative fair use

The doctrine of nominative fair use entails a defendant's use of a plaintiff's mark to identify the plaintiff's products or services and/or their relationship to the defendant's products or services.

To raise this defence successfully, the defendant must show three things:

a) an inability to identify the defendant's product or service without referring to the plaintiff's mark;

b) use of only as much of the plaintiff's mark as necessary to identify the defendant's product or service; and

c) an absence of conduct by the defendant suggesting endorsement or sponsorship by the plaintiff.

For example, a newspaper conducted a money-making survey encouraging fans of the music group New Kids on the Block to call a 1-900 number to vote for the 'best kid on the block'. The newspaper could then use the mark 'New Kids on the Block' without incurring liability for trademark infringement. There was no other way the newspaper could identify the musical group, it used only what was necessary to describe the group, and it refrained from suggesting any endorsement by the trademark owner. See New Kids on the Block v. News America Publ'g (9th Cir. 1991).

Nominative fair-use cases involving metatags can be divided into five factual scenarios:

a) a formal business relationship exists between the parties;

b) no formal business relationship exists, but the defendant's business relates to the plaintiff's trademarked goods or services (retailers for example);

c) a past business relationship existed between the parties;

d) comparative advertising; and

e) criticism websites.

Formal business relationships

In Trans Union LLC v. Credit Research, Inc. (N.D. Ill. March 26 2001), the plaintiff Trans Union, a leading credit reporting agency, sought a preliminary injunction against two local credit bureaus for misusing...

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