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Internet Trademark Case Summaries

Hamzik v. Zale Corp.

2007 WL 1174863 (N.D. N.Y. April 19, 2007)

Plaintiff sold jewelry under the federally registered mark THE DATING RING.  Plaintiff sued defendant, a national chain of jewelry stores, for infringement, false designation of origin, false advertising, and dilution.  Plaintiff based its claims on two grounds.  First, a search for the term “DATING RING” on defendant’s website revealed over 500 results for various types of rings sold by defendant under marks and names different from “DATING RING.”  Second, defendant purchased the keyword “DATING RING” from Google, Yahoo!, and other search engines.  Defendant filed a motion to dismiss all of defendant’s claims.  Regarding infringement, the court granted defendant’s motion as to the search results on defendant’s website because a user’s entry of the words “DATING RING” using the site’s search engine feature did not constitute a “use” of plaintiff’s mark under the Lanham Act.  Nor did the display of defendant’s rings on its site in response to such searches constitute a Lanham Act use.  Cases like 1-800 Contacts, Rescuecom, and Merck made it “clear that merely displaying alternative products in response to a computer search on a tradename is not a Lanham Act use.”  However, the court denied plaintiff’s motion based on plaintiff’s keyword purchases.  On this issue, the court stated that the law on this issue was “in a state of flux.”  It noted that the two cases in the Second Circuit addressing the issue—Rescuecom and Merck—both found no Lanham Act use.  The court agreed with these holdings, but found that there may be a “factual distinction” between those cases and this one that could create a Lanham Act use.  Specifically, there was no allegation in Rescuecom that the defendant placed plaintiff’s mark on any “goods, containers, displays, or advertisements, or that its internal use is visible to the public.”  Likewise, in Merck the defendants did not place plaintiff’s mark on any “goods or containers or displays or associated documents.”  In this case, unlike Rescuecom and Merck, defendant’s keyword-triggered ads contained plaintiff’s mark (i.e., “Dating Rings-Zales” and “Dating Ring-Zales”) and thus could demonstrat[e] that Plaintiff’s trademark does appear on the displays associated with the goods or documents associated with the goods or their sale.  These facts also distinguished this case from 1-800-Contacts where the defendant there never displayed the trademark to computer users.  Finally, the court granted plaintiff’s motion as to dilution and false advertising because plaintiff failed to allege facts sufficient to support those claims.