The Eleventh Circuit Court of Appeals recently ruled on an important case regarding trademarks and metatags. In North American Medical Corp. v Axiom Worldwide, Inc., (11th Cir. 2008) NAM alleged that Axiom used two of NAM’s registered trademarks on Axiom’s website within metatags in an effort to influence search engine results. One of the major issues the Court was faced with was whether Axiom’s use of the metatags constituted “use in commerce” sufficient to trigger liability under the Federal Trademark law (the Lanham Act). The Court explained:
However, we readily conclude that the facts of the instant case do involve a “use” as contemplated in the Lanham Act — that is, a use in connection with the sale or advertisement of goods. In deciding whether Axiom has made an infringing “use,” we focus on the plain language of § 1114(1)(a), which, as noted above, requires a “use in commerce . . . of a registered mark in connection with the sale . . . or advertising of any goods.” 15 U.S.C. § 1114(1)(a). The facts of the instant case are absolutely clear that Axiom used NAM’s two trademarks as meta tags as part of its effort to promote and advertise its products on the Internet. Under the plain meaning of the language of the statute, such use constitutes a use in commerce in connection with the advertising of any goods. Accordingly, we readily conclude that plaintiffs in this case have satisfied that (1) they possessed a valid mark, (2) that the defendant used the mark, (3) that the defendant’s use of the mark occurred “in commerce,” and (4) that the defendant used the mark “in connection with the sale . . . or advertising of any goods.”
The Court also discussed a key element of almost every trademark infringement action, whether there is a likelihood of confusion between Axiom’s unauthorized use and NAM’s rights.
[W]e ultimately conclude that a company’s use in meta tags of its competitor’s trademarks may result in a likelihood of confusion. However, because NAM and Adagen have demonstrated a likelihood of actual source confusion, we need not decide, as those courts did, whether initial interest confusion alone may provide a viable method of establishing a likelihood of confusion…. Because Axiom’s use of NAM’s trademarks as meta tags caused the Google search to suggest that Axiom’s products and NAM’s products had the same source, or that Axiom sold both lines, or that there was some other relationship between Axiom and NAM, Axiom’s use of the meta tags caused a likelihood of actual source confusion.
This is the first discussion of initial interest confusion by the 11th Circuit Court of Appeals. One of the more interesting developments in this case is found in a footnote wherein the Court limits its their opinion and opened the door to additional litigation in the trademark/metatag world.
We note that our holding is narrow, and emphasize what kind of case and what kind of facts are not before us. This is not a case like Brookfield or Promatek where a defendant’s use of the plaintiff’s trademark as a meta tag causes in the search result merely a listing of the defendant’s website along with other legitimate websites, without any misleading descriptions. This is also not a case where the defendant’s website includes an explicit comparative advertisement (e.g., our product uses a technology similar to that of a trademarked product of our competitor, accomplishes similar results, but costs approximately half as much as the competitor’s product). Although we express no opinion thereon, such a defendant may have a legitimate reason to use the competitor’s trademark as a meta tag and, in any event, when the defendant’s website is actually accessed, it will be clear to the consumer that there is no relationship between the defendant and the competitor beyond the competitive relationship. Resolution of the foregoing, as well as other factual situations not before us, appropriately await the day that such factual situations are presented concretely.
Ultimately the Court affirmed the district court’s findings with respect to the likelihood of success on the merits for the trademark and false advertising claims, but vacated the lower court’s preliminary injunction order.