April 24, 2001, 9:02 AM — TRADEMARK INFRINGEMENT, thanks to the Internet, isn't always as easy to identify as it used to be. Invisible uses of a competitor's service or trademarks in the metatags of another company's Web site can form the basis of trademark infringement claims, says Michael Bevilacqua, a senior partner and co-chair of the technology transactions and licensing group with the law firm Hale and Dorr, in Boston. "Many Web site operators have assumed that by avoiding use of a trademark in the text of a Web site, they are avoiding liability for trademark infringement," Bevilacqua says. "That's not a safe assumption anymore."
Web sites add and change trademark use
Historically, trademark infringement was based on the visual use of a service mark or trademark, Bevilacqua says. If a competitor used a company's mark in a manner likely to confuse customers and divert business away from the company and to the competitor, the company would take action to protect its trademark. In most instances, the corporate attorney would send a strongly worded "cease-and-desist" letter to the competitor wrongfully using the mark. If the competitor continued to use the mark, the company would then file a lawsuit.
The "invisibility" of metatags put a new wrinkle in determining trademark infringement, Bevilacqua says. Using a trademark in a metatag (the HTML code that lays out for display a site's content) is an invisible use of the mark. "Most Internet search engines hit the metatag field when conducting searches. A Web site may therefore attract hits by placing terms within its metatags, even if such terms are not used in or relevant to the Web site content," Bevilacqua says.
"Use of trademarks in metatags is interesting because you don't see the mark. The federal district courts haven't arrived at the same conclusion on this issue," Bevilacqua says.
Trademark infringement finding in the Prozac metatag case