Traverse Internet Law Disclaimer
The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.
LOANS OF AMERICA FL, LLC v. RAPID AUTO LOANS, LLC, ET AL.
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
It is fairly well understood that you cannot key ads off a competitor’s trademark. There are federal trademarks, state trademarks, and common law (unregistered) trademarks. So how do you make sure that you don’t key ads off of competitor’s trademarks if there is no central registry? This becomes an incredibly complicated process if you go through the traditional “trademark clearance” approach for every keyword you are using. It is a wholly impractical approach for online advertising through AdWords or other pay-per-click advertising solutions. Since it’s impossible to know every common law trademark that could be claimed by competitors, it might be advisable to look at the exact names of competitors and avoid using those names, or slight variations of them, in keying ads on your pay-per-click programs. From a business perspective, that defeats to some extent the benefit of using pay-per-click advertising. But that is really the only way to avoid having to defend these types of lawsuits. The good news for the Defendant in this case is that it will likely be very difficult for the Plaintiff to show common-law trademark rights in the term “Loans of America” due to its generic nature.
Loans of America has sued Rapid Auto Loans and other Defendants for keying Google AdWords advertisements off of the term “Loans of America” or slight variations of it. The Plaintiff does not have a registered trademark, but claims common law trademark rights in the term “Loans of America”.
Loans of America alleges violation of the Lanham Act, conspiracy to commit a Lanham Act violation, contributory trademark infringement, dilution, violation of Florida’s Deceptive and Unfair Trade Practices Act, and breach of contract. Relief requested includes injunctive relief, actual damages together with interest, costs and expenses, and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1413.
SOUTHERN SNOW MANUFACTURING CO., INC. AND SIMEON, INC. v. SNOWIZARD, INC.
EASTERN DISTRICT OF LOUISIANA (NEW ORLEANS)
Google has recently announced that it does not use metatag information to generate search results. It remains to be seen whether that is, in fact, accurate. In addition, other search engines may use metadata to generate search results. Consequently, it is not a wise practice to use a competitor’s trademarks in any of your metatags. The more significant issue in this case is the use of trademarks as “hidden” or “invisible” text on the Defendant’s website. Anyone who is familiar with search engine optimization (SEO) knows why this is done. As a business, you should avoid using your competitor’s name in any manner on your website, particularly as hidden or invisible text. The only time you can legally use a competitor’s name is when you are conducting “comparative advertising”, and this is a very complicated and slippery slope that requires legal input before undertaking such an endeavor.
Southern Snow and SnoWizard are competitors in the business of selling ice shaving machines, flavoring concentrates, and other supplies for snowball shaved ice confections. Plaintiffs allege that the Defendant, SnoWizard, has published Plaintiffs’ trademark names in metatags on SnoWizard’s website and also published those terms as hidden or invisible text on its website. The Plaintiff claims that the purpose was to cause organic results of its competitor to appear when its own name, or product names, were searched online using a search engine.
The Plaintiffs claim common law trademark infringement, fraud, unfair competition and unfair trade practices and requests actual damages, enhanced damages, lost profits, litigation costs, treble damages, and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1412.
HARLEY-DAVIDSON MOTOR COMPANY AND H-D MICHIGAN v. ELWORTH’S HARLEY-DAVIDSON SALES & SERVICE AND GREGORY J. ELWORTH
DISTRICT OF NEBRASKA (OMAHA)
The ability to continue to use a trademark after a license agreement ends is typically a fairly clear cut situation. You cannot continue to use it. In the online marketing world, affiliate marketers will sometimes continue to use the trademark of an offer they carried in the past to sell competing products or services of new offers. This is obviously a much less obvious form of trademark infringement, and businesses using affiliate marketers need to monitor the use of their trademarks carefully.
Harley-Davidson has sued a former Harley-Davidson dealer because the dealer is still using its name, has not taken down its Harley-Davidson signs and displays, has not relinquished or changed its domain name so that it does not include the Harley-Davidson trademark, and is still using the famous motorcycle name on its website.
The lawsuit includes claims for trademark infringement, false designation or origin, unfair competition, federal unfair competition comprising false and misleading statements of fact, trademark dilution, common law trademark infringement, and breach of contract. The Plaintiff requests preliminary and permanent injunctive relief, the return of all infringing materials, the alteration of Defendants’ website(s) to remove infringing logos and material, an accounting of profits, actual damages, compensatory damages, treble damages, costs, and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1411.