Using Trademarks in Meta Tags: Avoid It or Get Permission

Republished with Permission © 2010 Nolo.

Improper use of someone else’s trademark in your meta tags can land you in legal hot water.

A meta tag is an HTML (hypertext markup language) code embedded on a Web page that is used by the website owner to identify the site content. Meta tags are powerful tools because they have a direct effect on the frequency with which many search engines will find a website.

Meta tags have been the subject of trademark lawsuits, because companies have used them to divert or confuse consumers. This use can result in a successful trademark infringement lawsuit, leading to an award of financial damages and, in some cases, attorneys’ fees.

How Meta Tags Work

Meta tags do not affect the appearance of a website and are not visible when you look at a Web page, but they provide information regarding the content of the site. For example, the keyword meta tag for a website offering handmade watches and related items may appear as follows:

And the description meta tag (which also appears in many search engines’ results pages) may look like:

Meta tags are used primarily by search engines that wade through the HTML code and text of each page. When a search engine finds a search term in a meta tag, it indexes the Web page for display in its search results. Over the past few years, because websites manipulated their keywords so much, keyword meta tags decreased in importance in search algorithms. In fact, Google ignores keyword meta tags altogether, although it still relies somewhat on description meta tags.

Using Meta Tags to Divert Web Surfers

Some websites use meta tags in a deceptive manner to lure Web surfers. Instead of using terms that properly describe the site, some programmers substitute the names of competing companies. For example, a rival shoe manufacturer may bury the meta tag “Nike” in its Web page to lure Web surfers searching for Nike products. In the case of the website selling handmade watches, the meta tag might include “Rolex, Swatch, Bulova, Cartier.”

This kind of deceptive use of another company’s trademark in a meta tag is a form of trademark infringement when it confuses consumers.

Stopping the Use of Infringing Meta Tags

To curb this type of trademark infringement, the trademark owner must first request that the offending website stop the deceptive use. If the use continues and the two companies cannot reach an agreement, the trademark owner may file a lawsuit in federal district court. If the trademark owner prevails, the court may order the offending website to pay money damages and, in some cases, the trademark owner’s attorneys’ fees as well. In egregious cases of intentional deception, the monetary award may amount to several hundred thousand dollars.

Permissible Uses of Trademarks in Meta Tags

Not every use of another company’s trademark in a meta tag is illegal. When the trademark is used only to describe the goods or services of a company or their geographic origin, it is permitted under trademark law as a “fair use.” For example, if a site distributes literature and music from the Amazon region, it may use the word “Amazon” in its meta tags. This use would not infringe the Amazon.com trademark, because the term “Amazon” is being accurately used to describe the goods offered at the site.

Unfortunately, there is no clear test for proving fair use, and even a merely descriptive use of a trademark in a meta tag may trigger a lawsuit.

Commonsense Use of Trademarks in Meta Tags

To avoid the expense and hassle of a lawsuit, avoid deceptive uses of another company’s trademark in your website unless the other company has consented to the use. Such consent might be granted, for example, if you are a distributor for the trademarked brands.

When in doubt about using a trademark in your meta tag, leave it out. Not only is it unethical and illegal to use trademarks deceptively, but it’s a bad business decision. Deceptive trademark meta tags can be easily uncovered, and many well-known trademark owners regularly troll the Net searching for such violations. The potential financial and legal consequences vastly outweigh the increased traffic to your site.

Example:
Former Playmate Terri Welles established a website and used Playboy and Playmate in her site’s meta tags. A court permitted the use of Playboy’s trademarks because Ms. Welles used the terms to describe herself and properly indexed the pages. The court was also influenced by the fact that most of the free Web pages at the site included a disclaimer at the bottom: “This site is neither endorsed, nor sponsored by, nor affiliated with Playboy Enterprises, Inc. PLAYBOY, PLAYMATE OF THE YEAR and PLAYMATE OF THE MONTH are registered trademarks of Playboy Enterprises, Inc.” (Playboy Enterprises, Inc. v. Welles, 7 F. Supp. 2d 1098 (Cal. S.D. 1998).)

Enforcing Your Trademark Rights

Republished with Permission &copy 2010 Nolo.
by Attorney Richard Stim

Prevent trademark infringement of your business name or product name.

As the owner of a trademark, when you can stop others from using your trademark, or a confusingly similar one, depends on such factors as:

• whether the trademark is being used on competing goods or services (goods or services compete if the sale of one is likely to affect the sale of the other)
• whether consumers would likely be confused by the dual use of the trademark, and
• whether the trademark is being used in the same part of the country or is being used on related goods (goods that will likely be noticed by the same customers, even if they don’t compete with each other).

Dilution Statutes

In addition, under federal (and some state) laws known as dilution statutes, you may go to court to prevent your trademark from being used by someone else if your mark is famous and the other company’s use would dilute the mark’s strength — that is, weaken its reputation for quality (called tarnishment) or render it common through overuse in different contexts (called weakening). The key element is that your mark is famous — that is, distinctive and recognizable.

Dilution statutes apply even if there is no way customers would be likely to confuse the source of the goods or services with those sold by the owner of the famous mark. For instance, consumers might not think that Microsoft toilet paper is associated with Microsoft, the software company, but the makers of Microsoft toilet paper could still be forced to choose another name under federal dilution law.

Using a Trademark Actively

A business that claims to own a trademark cannot stop others from using the same or a similar trademark unless it is actively using the trademark.

In trademark law, “using” a trademark means putting it to work in the marketplace to identify goods or services. This doesn’t mean that the product or service actually has to be sold, as long as it is legitimately offered to the public under the trademark in question.

For example, Robert creates a website where he offers his new invention — a humane mouse trap — for sale under the trademark “MiceFree”. Even if Robert doesn’t sell any traps, he is still “using” the trademark as long as “MiceFree” appears on the traps or on tags attached to them and the traps are ready to be shipped when a sale is made.

Similarly, if Kristin, a probate attorney, puts up a website to offer her services under the service mark Probate Queen, her service mark will be in use as long as she is ready to respond to customer requests for her advice.