Internet Trademark Case Summaries

Hysitron, Inc. v. MTS Systems Corp.

2008 WL 3161969 (D. Minn. Aug. 1, 2008)

Plaintiff Hysitron sold nanomechanical test equipment under the common law trademark HYSITRON. Defendant MTS Systems (MTS) sold competing products. MTS, as part of its Internet marketing strategy, purchased the keyword “hysitron.” Internet searches for “hysitron” returned a sponsored link to MTS’s website. However, the sponsored link did not include the HYSITRON mark or any other Hysitron trademarks. Hysitron sued for trademark infringement and unfair competition. MTS filed a motion for partial summary judgment, asserting it had never used the HYSITRON mark in commerce because it never placed the mark on any of its products and the mark did not appear in the sponsored link advertisement. MTS relied on cases from the Second Circuit finding no “use in commerce” in pop-up ad and keyword cases when the trademark was not placed on goods or communicated to the public. The court noted that the majority of courts disagreed with the Second Circuit and instead held that use of a competitor’s trademark to create a sponsored link constituted a “use in commerce.” Citing “the plain meaning of the Lanham Act’s definition of use in commerce,” which is not limited to affixing another’s mark to one’s own goods, the court adopted the majority view “that using a trademark to generate advertising constitutes a ‘use in commerce’ under the Lanham Act.” MTS also argued that summary judgment was not appropriate because Hysitron could not prove any consumer confusion. The court noted that Hysitron had to show only a likelihood of confusion and that Hysitron needed further discovery on the likelihood-of-confusion factors. Finally, MTS argued that there was no longer a likelihood of future harm because it had ceased using the HYSITRON mark in keyword advertising. The court, however, found a genuine issue of material fact whether MTS had ceased use of the HYSITRON mark. Accordingly, the court denied MTS’s motion for partial summary judgment.