Intellectual Property Law

Use of Trademark in Keyword Search Caused Initial Interest Confusion

By Michael F. Kelleher

The One Sentence Summary: Summary judgment of initial interest confusion under the Lanham Act was granted for plaintiff where defendant purchased keyword search advertisements using plaintiff's trademark and the advertisement displayed the trademark leading searchers to click on the advertisement.

District Court Holdings:

• SMART MONEY CLIP mark was a valid mark. Defendant failed to present any evidence that "smart money clip" was a general laudatory term.
• Applying the internet trinity of Sleekcraft confusion factors, (1) the similarity of the marks, (2) the relatedness of the goods or services, and (3) the parties? simultaneous use of the Web as a marketing channel, the court found a likelihood of confusion due to initial interest confusion. Defendant's purchase of the trademark keywords "smart money clip" on Google AdSense leading to defendant's advertisement titled "Smart Money Clip" led to 1,374 clicks out of 36,164 displays. This diversion of potential customers was initial interest confusion under the Lanham Act.
• For a second defendant, summary judgment was denied in the absence of evidence that a search for the term "smart money clip" would lead to a page with that phrase advertising a competing product.

Full post as published by IP Law Observer on March 04, 2008 (boomark / email).