By Armen Vartian From the Professional Numismatists Guild Newsletter Volume 1, Issue 6

Trademarks, and trade-mark infringement, have been part of commercial life for centuries. But to-day, the technology of the Internet, as well as the time-honored tradition of trying to take advantage of a competitors hard work, have tempted businesses to do things with others‘ trademarks which approach the ethical and legal line, if not cross it.

A few years ago, many companies discovered that their competitors were using their trademarked corporate or products as “meta tags” for the competitors‘ web sites. Meta-tags are those invisible pieces of computer programming code which make search engines such as Google or Yahoo! think that a site is relevant to a particular search request. So, for example, a site which carried a meta tag of “Coke” might show up if somebody was searching using that word which, of course, is a world-famous registered trademark of Coca Cola company. Would a competitor take advantage of somebody else’s hard-earned branding?

It turned out that was happening all the time, and litigations arose in federal courts throughout the U.S. The prevailing rule from the early cases was that use of trademarks in meta-tags was not unlawful under the federal Lanham Act, because it was not a use of the competitors‘ trademark “in commerce”, which is a statutory requirement. These rulings were controversial, of course, and upset many large companies.

At least one state passed legislation banning use of meta-tags which include trade-marks. Perhaps for that reason, a recent trend has been in the opposite direction, finding that certain uses of meta tags are unlawful if they include the competitors full web site address or other identifying information. Courts have also ruled against meta tags containing trademarks if they create “initial interest confusion”, namely capturing consumers‘ attention even though the competitor doesn’t rely on actual con-fusion to make a sale. (more…)