Internal Use of Competitor's Common-Law Marks Within Online Store?

Wed, 21 Feb 2007 12:53:00 EST

Eric Goldman brings up an interesting case where a lawsuit over the misuse of purchased, trademarked keywords turned into a counterclaim for plaintiff's misuse of defendent's common-law marks as product indentifiers on their website. The case was eventually settled in the defendent's favour.

Here is the defendent's lawyer, Ronald Coleman, commenting on that case:

"By and large our counterclaim was about his use of common-law trademarks on his website as product identifiers. As a mechanical matter they acted much like search terms (i.e., within plaintiff's own product database on Yahoo! Stores) and this could have been an interesting aspect of the case: 'Internal' or private use of a competitor's common-law product names within one's own online store, for the purchase of products that must objectively be acknowledged to be materially identical to those provided by the competitor. It's clear, though, that if I sell a COLEMAN WIDGET that's objectively identical to a widget Goldman sells, and we both buy them from the same widget factory, that does not permit Goldman to say 'we sell COLEMAN WIDGETS.' But in this fact context the Court could and should have clarified that this rule applies (1) even in terms of internal use of a trademark on a website or in a catalog and (2) even when the marks used are, as is typical, not registered, but are 'model names' utilized by the senior user's 'catalog,' online or otherwise. There is ample authority for these individual propositions as well, and that is why we were confident, ultimately, about pressing forward, if necessary.

Beyond that almost all of the trouble was the result of searches generated from contextual use of key words, including product names and the HUMBLE ABODE registered mark, on the plaintiff's own website. The purchase of key words from search engines by plaintiff was a fairly insignificant part of the case. In fact the offending behavior had long since ceased - which certainly made it easier to settle."

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