By Alex Athans, Legal Team
On April 30, 2008, a Federal District Court in New Jersey held that a trademarked term placed in a single meta tag constitutes fair use, and therefore does not infringe upon that trademark.
In Syncsort, Inc. v. Innovative Routines International, Inc., the plaintiff Syncsort, a UNIX sorting software manufacturer, sued Innovative Routines, another UNIX sorting software manufacturer, for using the plaintiff’s trademarked term “syncsort” in a meta tag on the defendant’s website. The defendant used the plaintiff’s term because their program is able to translate the plaintiff’s syncsort language into its own.
The judge found that the defendant’s actions were not likely to cause consumer confusion because a user viewing the plaintiff’s mark on the defendant’s website would not be likely to confuse the source of the defendant’s product with the plaintiff. Further, the defendant met all three fair use factors: their use of the term “syncsoft” was necessary to describe their own translation capabilities, they made only one use of the plaintiff’s mark, and their website made no claim of being affiliated with the plaintiff. This finding of fair use led the court to dismiss the plaintiff’s allegation of trademark infringement, and was based on a 2005 Third Circuit case that delineated these factors.
Domain owners should be aware that their use of a trademarked term may constitute a fair use of that term, if it meets the narrow requirements of being necessary to describe the product or service, is used in a limited fashion only to describe the trademark owner’s or their own product, and that they do not mischaracterize the relationship between themselves and the trademark holder. Additionally, a domain owner must also be aware of whether the use of a trademarked term is likely to cause customer confusion.