A growing number of companies doing business online have been soliciting the help of companies providing organic search engine optimization services to get ahead of the competition. Organic search engine optimization rearranges the order of a search engine’s results page placing one company ahead of its competitors on the list. Use of the optimization services alone is not violative of any laws; however, if a company uses a competitor’s trademarked terms or images to gain higher placement on a results page, legal issues may arise.
In Morningware, Inc. v. Hearthware Home Prods., 673 F. Supp. 2d 630 (N.D. Ill. 2009), for example, both plaintiff and defendant companies were engaged in the business of selling stove-top ovens. The defendant used a Google advertising service that would place its business website in the sponsored links section, which appears at the top of the results page, when various search terms were entered. Defendant company bought this service using plaintiff’s trademark and variations of the trademark to rearrange the results. Whenever a search was done using the plaintiff’s trademark, the defendant’s website appeared first in the results. Consequently, the plaintiff alleged violations of the Lantham Act and the Illinois Deceptive Practices Act, as well as exploitation of the company’s good-will.
The Lanham Act is the national policing mechanism used to protect the value of trademarks for those business that have registered them. To sue for trademark infringement under the Lanham Act, a plaintiff must prove that the defendant’s use of a trademark is likely to cause consumer confusion or, in the alternative, likely to cause initial interest confusion. Likelihood of consumer confusion is present where ordinary consumers would be confused regarding the origin of the products under the trademark. Initial interest confusion is present when a consumer is lured to a different product due to the use of a competitor’s trademark, despite knowledge that the product and the trademark are unrelated. The Illinois Deceptive Practices Act uses the same analysis as the Lanham Act when violations of both statutes are asserted in relation to the same set of facts.
In Morningware the plaintiff established that defendant could be in violation of the Lanham Act for causing a likelihood of initial interest confusion. The court reasoned that consumers who searched for plaintiff’s products and received results for defendant’s products would be confused regarding the relationship between the two companies and be misled to the product of a direct competitor.
As a trademark owner, it is important to recognize what constitutes fair use and unfair use of your trademark by potential competitors. In the alternative, if you use a search engine optimization service, be mindful to not use the trademarked property of another business to avoid any legal liability.