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Just as what you don’t know may hurt you, what you don’t see may hurt you. Metatags are terms written in hypertext mark-up language code within a Web site, intended to describe the contents of the Web site. The likelihood that a Web page will be placed high on a list of Web sites by an Internet search engine searching for a specific key word is proportional to the frequency with which that term appears within the metatags and within the text of the Web site. On October 18, 2002, the 7th U.S. Circuit Court of Appeals held that Equitrac Corp. had infringed the COPITRAK trademark of Promatek Industries Ltd., solely by using the mark in metatags on its Web site. Equitrac, a seller of cost recovery equipment, instructed its web designer to include the term COPITRAK in the contents of Equitrac’s Web site as a metatag, although the actual metatag used was COPITRACK. COPITRAK is a trademark used on cost recovery equipment sold by Promatek. Equitrac believed that it was entitled to use the term as a metatag because it provides maintenance and service on COPITRAK equipment. In analyzing the likelihood of confusion created by Equitrac’s use of the COPITRACK metatag, the 7th Circuit focused on initial interest confusion. Initial interest confusion occurs when a customer is lured to a product by the similarity of the mark, but later realizes that the true source of the goods is different than originally believed before the sale is completed. Initial interest confusion was discussed in an earlier 9th Circuit case, wherein the plaintiff sued to enjoin the defendant from using the plaintiff’s registered trademark, “MovieBuff”, as its domain name. The defendant also used the term “MovieBuff” within its metatags. The 9th Circuit explained that, after the searcher selected defendant’s Web site from the list of search results, the searcher would find the defendant’s name prominently displayed on the Web site. However, the searcher would find information very similar to that of the plaintiff on the defendant’s Web site, and therefore may simply use the defendant’s services instead of the plaintiff’s services. For this reason, both the 7th and 9th Circuits explained that “using another’s trademark in one’s metatag is much like posting a sign with another’s trademark in front of one’s store.” Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 813, 63 U.S.P.Q. 2d 2018 (7th Cir. 2002) (quoting Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036, 1064, 50 U.S.P.Q. 2d 1545 (9th Cir. 1999)). Following this reasoning, the 7th Circuit explained that consumers who are directed to Equitrac’s Web page will, in all likelihood, learn more about Equitrac and its products before beginning another search for Promatek. The 7th Circuit also pointed out that it is acceptable to use a trademark as a metatag when the trademark is used to truthfully identify a competitor’s product. For example, it is perfectly acceptable to advertise that one is capable of servicing products made under another’s trademark, to place truthful comparison claims on a Web site, or to use the trademark within a press release describing litigation between the two parties involved in the trademark dispute. Furthermore, other cases have held that nominative use of another’s mark within one’s metatags is acceptable. In one case, the 9th Circuit did not find it objectionable for a former Playboy Playmate to use the terms “Playboy” and “Playmate” within the metatags of her own Web site to truthfully describe her past achievement. Equitrac may have reasonably believed that it was using a COPITRAK mark in just this manner: identifying itself as one who can service Prometek’s goods produced under the COPITRAK mark. The 7th Circuit, however, found that Equitrac used the COPITRACK mark in a manner that was specifically calculated to deceive consumers into thinking that Equitrac was Promatek. In so finding, the court seems to rely on Equitrac’s admissions that it meant to use the exact, incorrect spelling used by Promatek within its metatags, and the fact that Equitrac and Promatek were direct competitors. In another case, the 7th Circuit found the use of plaintiff’s trademark within defendant’s metatags as evidence of wrongful intent on the part of the defendant. Given the particularly dim view taken by courts of the use of another’s trademark within the metatags of one’s own Web site, even if the Web site owner believes there is a legitimate basis for doing so, Web site owners should stay within the following guidelines to minimize the likelihood of liability for trademark infringement when using trademarks owned by others in their metatags. 1) Use the trademarks of others within a Web site only for the purpose of truthfully identifying the goods or services associated with that trademark’s owner. Such legitimate uses include truthful comparisons between one’s own goods and the trademark owner’s goods. 2) Limit the number of times that any trademark owned by another appears in a Web site’s metatags. The greater the number of times the other’s trademark appears, the more likely a court will find that the Web site owner attempted to lure in the trademark owner’s potential customers. 3) Conform the use of another’s trademark to the standards for nominative use: i) The product or service represented by the mark is not one readily identifiable without use of the mark; ii) Only as much of the mark as is reasonably necessary to identify the products or services is used; and iii) The user does nothing that would suggest sponsorship or endorsement by the trademark holder. 4) If the Web site owner repairs or services goods made under a trademark owned by another, the owner should not rely on this as a basis to include that trademark within his or her Web site metatags, unless the repair or servicing of these goods is actually endorsed by the trademark owner. As such issues frequently involve substantial legal technicalities, it is desirable to seek counseling from an attorney who is knowledgeable in trademark issues. William F. Lang IV is an associate in the Pittsburgh, Penn., office of Eckert Seamans Cherin & Mellott, LLC (www.escm.com). Mr. Lang is a member of the firm’s Intellectual Property Department. If you are interested in submitting an article to law.com, please click herefor our submission guidelines.

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