By Anthony Handal of Thompson Hine LLP
Anthony H. Handal is a partner in the New York office of Thompson Hine and has specialized
in intellectual property litigation for the past thirty years. He has appeared as lead counsel in two
hundred cases before the district and appellate courts. He has taught the litigation portion of the
patent strategy course offered by the Patent Resources Group and lectured on various patent law topics
before the New York Intellectual Property Law Association. He may be reached at Anthony.Handal@ThompsonHine.com
A circuit split, coupled with even greater diversity of treatment at the district court
level, continues to plague counsel in advising clients on the implications of the use of trademarks of
competitors to build website traffic. At stake are the competing interests of encouraging competition
and protecting the goodwill of established brands.
The controversy centers on the use of a competitor’s trademark both 1) as
metadata in a website, where. even though it is not visible to the user, it will be found by search
engines, such as Google, and result in the website being listed in the search results, and 2) as a key
word, typically sold by the search engine operator to the trademark proprietor’s competitor,
whose advertisements then appear as a so-called "pop up" or "banner" ad next
to the search re...