© Trademark infringement & the Internet
But Internet technology also provides useful tools for monitoring the use of marks. Search engines provide owners with the ability to search the entire Web in a matter of seconds to identify potential infringers of their marks. This ability, however, brings with it some potential pitfalls. Since it is the obligation of trademark owners to show diligence in monitoring the use of their marks, they can potentially lose the right to their mark if an infringer is allowed to continue using the mark over an extended period of time.
Not all uses of another's trademark on the Internet are violations of trademark law, of course. For example, a person can legally use the Dell Computer logo on a Web page discussing his or her experiences using Dell products. However, if that same individual creates the impression that he or she represents Dell, the commentator would be potentially infringing upon an existing and protected trademark.
Courts generally take into consideration the following factors when assessing the likelihood of trademark confusion:
- Strength of the plaintiff's mark, including any secondary meaning it may have attained
- Actual confusion among consumers
- The intent of the defendant in using the mark (evidence of willful deception)
- Relationship of the goods or services within the marketplace
- Ability of consumers to differentiate; the process by which consumers choose a particular good or service
- Likelihood that the market for the goods or services will expand
Example:
A 1997 case, Digital Equipment Corporation v. AltaVista Technologies, Inc., provides an example of how courts have interpreted trademark infringement on the Internet. Digital operated the popular search engine Alta Vista, and owned the rights to the trade name ALTA VISTA, which Digital had purchased from Alta Vista Technologies Inc. Digital had then licensed the trade name back to Alta Vista Technologies for a limited use, namely as Alta Vista Technologies' company name and domain name, but not for its products or services.In an attempt to profit from the brand identity of the search engine, however, Alta Vista Technologies changed its Web site to incorporate many features of Digital's site and provided explicit links to Digital's search engine. These links were confusingly similar to the search engine trademarks. This action led Digital to bring suit against Alta Vista for trademark infringement and dilution. The U.S. District Court of Massachusetts agreed, and enjoined Alta Vista from using the trade name in a way that breached the licensing agreement.
