A company's failure to vigorously protect its trademark on the Internet hurts its ability to stop infringers. In Snap-On Tools Co. v. CNET, Inc., 1997 U.S. Dist. LEXIS 14581 (N.D. Ill Sept. 22, 1997), Snap-On Tools failed to obtain an injunction against C/NET's use of "Snap! On-line" on an Internet site. In denying the injunction, the court found that Snap-On's failure to use a trademark application watch service suggested a lack of diligence in Snap-On's efforts to protect its mark. Snap-On Tools, 1997 U.S. Dist. LEXIS 14581 at *17.
Protecting one's trademark on the Internet requires more than merely ensuring the mark is not used by someone else as a domain name. Unauthorized use of trademarks within a web page is a significantly more common source of trademark infringement. Web pages may be created in a matter of minutes, and once placed on a server, are quickly available to anyone in the world with a web browser. Furthermore, the contents of new pages are indexed and reported by popular search engines (Yahoo, AltaVista, Lycos, etc.) within a week, making them easily locatable by persons searching the Web for that trademark.
Other trademark usage on web pages, although perhaps not technically "infringing," may still concern trademark holders. Some examples of this type of use include:
1. Generic use of the trademark
Use of a trademark to refer to a type or class of goods or services, and not to identify the source of the goods or services, may eventually invalidate the trademark due to generic use. For example, use of the word "rollerblade" as a verb, instead of identifying a particular brand of in-line skates, would be a generic use of the "Rollerblade" mark. "Aspirin" and "cellophane" are two former trademarks which have been deemed generic, and their trademark protection has been invalidated.
2. Association of the trademark with non-mark related topics
Trademark holders often have strong feelings about their mark not being associated with the remaining contents of a particular web page. For example, a trademark holder might be upset to see their mark used, even in a favorable manner, on a web page which also contain links to sites associated with groups espousing extreme political views.
3. Disparaging use of the mark
Web pages can be the source of many disparaging comments that include references to trademarks.
4. Use of the mark as a "meta tag"
Web page authors may specify key words for their pages, known as "meta tags." Meta tags may contain key words completely unrelated to the web page contents, and are not visible to web page browsers. Internet search engines will retrieve pages if the specified search term matches a meta tag. For example, a site advertising a particular product could include their competitors trademark as a key word for that page to lure web browsers searching for information on the competitor to their web site. This is known as "word stuffing" or "word spamming." A web site was recently enjoined from using a trademark as a meta tag. Playboy Enterprises, Inc., v. Calvin Designer Label, 1997 U.S. Dist. LEXIS 14345 (N.D. Cal. Sept. 8, 1997).
5. Use of the mark which diverts traffic from the trademark holder's web site
This may be the most controversial of the trademark uses. Some trademark holders (generally those in the entertainment industry) have mounted campaigns to shut down unofficial "fan club" web sites, presumably in the hopes of increasing the number of visitors to their own, official web sites. However, this type of approach can backfire as the fans they are attempting to attract to the official site are alienated by closure of the unofficial sites. At a minimum, trademark holders should always request that users of the marks on other web sites provide a hyperlink to the trademark holders site.
Locating web pages containing unauthorized trademarks requires conducting regular sweeps of web pages using an Internet search engine. The search engine will generate a list of sites containing the terms entered as search parameters. Each site listed must be individually visited and reviewed. Once a web page containing an unauthorized trademark is located, the party responsible for the content of that web page must be identified. Occasionally, the web page will contain contact information. More often, additional searching is required to link the web page with a person or entity. After the initial complete trademark search has been conducted, incremental searches can be performed in the future, restricting the search to web pages containing the mark which have been added or modified since the date of the previous search.
The Thelen Reid Report is published as an information service to clients and friends. Please recognize that the information is general in nature and does not constitute legal advice.