Meta Tag Trademark Infringement and How to Stop It
Meta Tag Trademark Infringement - What it is and how to stop it
What are Meta Tags?
(Updated February 26, 2024)
A meta tag is information typically unseen by website users. However, a meta tag describes and indexes the contents of a web page. When one searches a term through a search engine, web pages are displayed as result with similar terms. The meta tags along with meta description and other HTML code are often included in website pages or blog posts to attract website users search for certain terms. This is part of an overall search engine optimization (SEO) strategy.
Trademark Use in Meta Tags — Can Meta Tags Infringe Trademarks?
The most common types of meta tags are description meta tags and keyword meta tags. For example, the description meta tag provides a short description summarizing the web site. Whereas, the keyword meta tag is a word or phrase that best describes the subject of the web site. Various information is also provided to web browsers and search engines by other useful meta tags, including: the meta http-equiv tag; the meta refresh tag; the meta copyright tag; and the meta author tag.
The main concern with regard to meta tags is the use of a third-party trademark in one’s meta tags. For example, website owners embed third-party trademarks in meta tag data to attract Internet traffic. This could divert website traffic from the trademark owner’s website. Meta tag misuse may allow the website owner to profit from public exposure and misdirected sales. When website operators intentionally use 3rd-party trademarks in meta tags, website copy, and code meta tag trademark infringement may occur.
Meta Tag Trademark Infringement Can Lead to Initial Interest Confusion
A series of circuit court cases have found that the use of trademarks in meta tags results in initial interest confusion. Therefore, one way to try to stop meta tag trademark infringement is through asserting a trademark infringement claim or unfair competition claim based on initial interest confusion.
“Initial interest confusion” is a legal doctrine that allows a finding of infringement where there is temporary confusion. Even when confusion is dispelled before the time of sale. The core element of trademark infringement is whether the similarity of the marks is likely to confuse customers about the source of the products.
Courts determine likelihood of confusion using a multi-factor test, which includes:
the similarity of the marks;
the relatedness or proximity of the two companies' products or services;
the strength of the registered mark;
the marketing channels used;
the purchaser's degree of care exercised in selecting goods;
the accused infringers' intent in selecting its mark;
evidence of actual confusion; and
the likelihood of expansion in product lines.
However, where initial interest confusion applies, likelihood of confusion for a consumer at the time of sale is not required. The mark must only capture the consumer’s initial attention.
Unscrupulous business operators are able to divert significant business through use of a third-party’s key trademarks in the copy and HTML code, including meta tags and meta description, of a website. This can result in significant loss of sales, harmful confusion, and damage to the trademark owner’s goodwill.
Cases Involving Trademark Infringement by Meta Tags
Cases Finding Infringement Through Meta Tags
Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018)
Summary: The Defendant designed a shoe to look similar to a high-end style of shoe sold by the Plaintiff. Defendant placed meta tags on their website containing the name of Plaintiff’s sneaker line. The Appeals Court agreed with the lower court that the only reason Defendants used that name in the meta tags is because consumers associate the name with the specific shoe line and would search for it. The court determined that the nearly identical design of the shoes and the presence of the meta tags show an intent to direct consumers to Defendant’s website rather than Plaintiff’s and that the lower court did not err in finding Trademark infringement.
Cheval Int'l v. Smartpak Equine, LLC, 2016 U.S. Dist. LEXIS 33023 (D.S.D. Mar. 15, 2016)
Summary: The plaintiff had an agreement with the defendant who sold individually repackaged portions of the plaintiff’s supplement. When their agreement ended, Defendant was allowed to sell the rest of the stock present. After the stock was sold out, Plaintiff was informed by confused customers that they had searched for the product and been directed to Defendant’s website where it stated the product was out of stock. Plaintiff sued Defendant for using four trademarks in their metatags and on their website. The court determined that in regards to three of them the use of the trademarks in the metatags was enough of a fact to allege Initial Interest Confusion and therefore Defendant’s Motion for Summary Judgement was denied.
PW Stoelting, L.L.C. v. Levine, No. 16-C-381, 2018 U.S. Dist. LEXIS 211914 (E.D. Wis. Dec. 17, 2018)
Summary: Levine had an agreement making them an authorized seller of Stoeling’s goods. In this agreement they had the right to use Stoeling trademarks in relation to their products. Levine used these trademarks in the metatags on their website. Stoeling terminated the agreement in 2016. Levine however did not remove Soeling’s trademarks from their website. The webpage sold only used products but was designed to imply that Levine was still an authorized seller, potentially confusing buyers. The court refused a motion to dismiss the Trademark infringement claim and let it proceed to trial.
Hydentra HLP Int. Ltd. v. Luchian, No. 1:15-cv-22134-UU, 2016 U.S. Dist. LEXIS 193457 (S.D. Fla. June 2, 2016)
Summary: Third party users were uploading Plaintiff’s videos to defendant’s website for viewing without paying. Plaintiff argued that there was trademark infringement because defendant included Plaintiff’s trademarks in the meta tags of their website after users uploaded Plaintiff’s videos. The Court ruled this was enough to satisfy part of the Lanham Act’s test for infringement and denied a motion to dismiss, but stating that Plaintiff would need to show evidence of actual consumer confusion for infringement to be found.
Penn Engineering & Manufacturing Corp. v. Peninsula Components, Inc., 2-19-cv-00513 (EDPA Dec. 28, 2023) (Gene E.K. Pratter)
Denying motion for summary judgment that inclusion of Plaintiff’s trademarks in website meta tags didn not constitute us win commerce, the Court held: "[Defendant's] search algorithm can suggest its own products when a user types in [Plaintiff's] marks because [Defendant] uses those marks in its meta tags on its own website. . . . [A]lthough the customer inputs [Plaintiff's] marks onto [Defendant's] website search tool, the search tool constitutes use under the Lanham Act. . . . [Defendant] is the one providing the user with content on [Defendant's] own site. Although the user is conducting the search, [Defendant's] search algorithm is producing images of and links to [Defendant's] products as a result of that search, and [Defendant] does so through its use of [Plaintiff's] marks in [Defendant's] meta tags. . . . [Defendant's] use of [Plaintiff's] marks to produce [Defendant's] products in connection with commerce is the type of use consistent with the Lanham Act. Thus, because [Defendant] includes [Plaintiff's] marks in its meta tags on [Defendant's] website search tool that then directs the consumer to potentially purchase [Defendant's] products, the search tool constitutes use under the Lanham Act."
Cases Finding No Infringement Through Use of Meta Tags
Alzheimer's Disease & Related Disorders Ass'n v. Alzheimer's Found. of Am., Inc., 307 F. Supp. 3d 260 (S.D.N.Y. 2018)
Summary: The Alzheimer’s Association was suing Alzheimer’s Foundation of America (AFA) for trademark infringement in a number of their digital ads. In addition to having ads that were very similar, AFA incorporated the Association’s trademarks into AFA’s meta tags. The court found that “AFA’s metatag practices are largely immaterial to the present issue.” The Court ruled this because of how many search engines now use their own algorithms, along with the fact that the process to make donations was rather lengthy and therefore the average donator would realize which organization’s website they were on even if they first went to the wrong one based on the meta tags.
Middle Ground Cases Involving Meta Tags and Trademarks
Coachella Music Festival, LLC v. Simms, No. 2:17-cv-06059-RGK-GJS, 2017 U.S. Dist. LEXIS 222296 (C.D. Cal. Dec. 13, 2017).
Summary: Plaintiff had received an injunction against Defendant using the trademarked term “Coachella” and the similar term “Filmchella”. In this case the Defendant is asking the Court to determine that he can use these terms in the metatags for his website. The Court ruled that he could not use the Trademarked term as it could cause confusion for those looking for the actual Coachella website, but he could use Filmchella, as people looking for his Filmchella festival’s website were likely not to be confused.
Cases Collecting Cases on Meta Tags and Trademark Infringement
Here's a list of cases that collect other cases on this topic:
Soter Techs., LLC v. IP Video Corp., 523 F. Supp. 3d 389 (S.D.N.Y. 2021).
Martin v. E.C. Publications, Inc., No. 1:19-CV-21167, 2022 WL 3154787 (S.D. Fla. Feb. 16, 2022), report and recommendation adopted, No. 1:19-CV-21167, 2022 WL 4483136 (S.D. Fla. Sept. 27, 2022).
How to Stop Meta Tag Trademark Infringement
Document Evidence of Infringement
One of the best first steps to address trademark infringement is to document the evidence. This would include taking screenshots of the infringing website and its HTML code to record use of the trademarks in meta tags and elsewhere. Other evidence would include:
Actions of confused customers and vendors such as misdirected complaints, communications, correspondence, and product returns;
Increased pay per click (PPC) costs for the business’s trademarks;
Sudden drop in website traffic; and
Sudden drop in sales and sales inquiries.
Send a Demand Letter
After the evidence of infringement and harm has been thoroughly documented. The next step is to send a demand letter to the infringer commonly known as a “cease and desist” letter. The letter should request the immediate stopping of all trademark use, records regarding sales as a result of the infringement, and related information so that a specific demand for settlement can be made. Before sending the letter, you should consider the risk that the alleged infringer files a lawsuit first called a “declaratory judgment” lawsuit. Also, if you delay too much after knowledge of the infringement, that can make getting an injunction (order from the court restraining the infringer from further infringement) difficult to obtain because a trademark owner likely must show “irreparable harm.”
File Suit
If the demand letter is unsuccessful, then you may be required to file a lawsuit for trademark infringement, unfair competition, and related claims in either federal court or state court. Trademark infringement lawsuits can be very expensive so you should consult first with an attorney competent in handling trademark/unfair competition cases. Our Intellectual Property Litigation overview page provides additional information about these kinds of cases.
About the Firm:
Klemchuk PLLC is a leading intellectual property law firm focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. We help clients protect innovation and increase market share through investments in IP.
This article has been provided for informational purposes only and is not intended and should not be construed to constitute legal advice. Please consult your attorneys in connection with any fact-specific situation under federal law and the applicable state or local laws that may impose additional obligations on you and your company. © 2024 Klemchuk PLLC