Internet Trademark Case Summaries

Site Pro-1, Inc. v. Better Metal, LLC

506 F. Supp. 2d 123 (E.D.N.Y. 2007)

Site Pro 1 and Better Metal both sold components for constructing wireless telecommunications towers.  Better Metal used the SITE PRO 1 trademark in its metatags and purchased SITE PRO 1 as a keyword from Yahoo!.  Searches for some combination of the keywords “1", “pro,” and “site” on Yahoo! retrieved a sponsored search result for Better Metal, but the search result did not display the SITE PRO 1 mark.  The court granted Better Metal’s motion to dismiss Site Pro 1’s trademark claims on the ground that its use of the SITE PRO 1 mark was not use of a trademark in commerce.  Relying on the Merck, Rescuecom, and 1-800 Contacts, the court stated that the “key question” was “whether the defendant placed plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s trademark in any way that indicates source or origin.”  Here, Better Metal made no such uses because: (1) it did not place the SITE PRO 1 mark on any of its goods, advertisements, or displays associated with the sale of its goods, (2) neither the link nor the surrounding text of Better Metal’s sponsored listing displayed the mark SITE PRO 1, and (3) the metatags on Better Metal’s website were not displayed to consumers.  The court found “unavailing” Site Pro 1’s “initial source confusion” argument.  Relying on Brookfield, Site Pro 1 argued that Better Metal’s use of the SITE PRO 1 mark in metatags and paid keyword searches improperly diverted traffic to Better Metal’s website.  But the Second Circuit “flatly rejected” this argument in 1-800 Contacts, and the court declined to follow any cases contrary to 1-800 Contacts.