Internet Trademark Case Summaries

Shainin II, LLC v. Allen

2006 U.S. Dist. LEXIS 29900 (W.D. Wash. May 15, 2006)

Plaintiffs provided consulting and training services to manufacturing companies regarding technical problems.  Defendants, two former employees/consultants of the plaintiffs and their companies, started a business similar to plaintiffs’, and one of the defendants’ websites used a number of plaintiffs’ registered and unregistered marks as metatags.  Plaintiffs filed suit after defendants organized a competing seminar and invited a number of employees of plaintiffs’ clients to attend.  Plaintiffs moved for a preliminary injunction on its trademark infringement claims relating to the metatags, and on its claims for breach of non-competition and confidentiality agreements.  The court preliminarily enjoined defendants from using any of plaintiffs’ trademarks or confusingly similar marks in the metatags of their websites.  The court noted that in some instances use of another’s trademarks may cause initial-interest confusion, but that such use of metatags “does not automatically result in trademark infringement.”  For example, use of another’s trademark in metatags could be a nominative fair use.  In this case, the court granted the preliminary injunction because plaintiffs raised serious questions regarding the merits of their trademark claims, and because the defendants would suffer little if any hardship if restrained from using plaintiffs’ trademarks as metatags pending a trial on the merits.