A federal district court in Virginia recently issued a preliminary injunction to prevent a company from using a competitor's trademarks online. Deltek Inc. v. Iuovo Systems, Inc., No. 09-330 (E.D. Va. Apr. 20, 2009). In this case, Deltek sued Iuovo for visibly using the Deltek name to advertise services and for including the mark in meta tags to drive traffic to the Iuovo website. The court held that this use may cause consumers to erroneously conclude that Iuovo is affiliated with Deltek and, therefore, amounts to trademark infringement.
The use of another's trademark is prohibited under the Lanham Act if such use is likely to cause confusion or mistake, or is designed to divert consumer attention from the mark owner to an alternate source. 15 U.S.C. ยง 1114. To establish a claim for trademark infringement, a plaintiff must prove: (1) that it possesses the mark at issue; (2) that the defendant is using the mark; (3) that the defendant's use occurs in commerce in connection with the sale or offering for sale, distribution, or advertising of goods or services; and (4) that the defendant uses the mark in a way that is likely to cause confusion among consumers. Id.; Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922 (4th Cir. 1995). The last element of this analysis turns on whether the use of the trademark is likely to cause confusion, not whether the use actually causes confusion. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984).
In this case, the court held that including phrases like "Deltek Upgrade," "We Provide Deltek Solutions," and "Technology Consultants with Deltek Experience" on the Iuovo site is likely to cause a consumer to believe that Iuovo is affiliated or related to Deltek. Therefore, such use may constitute an improper attempt to trade on the commercial value associated with the Deltek mark. In addition, the court held that the use of the trademark in meta tags was also likely to cause confusion and pointed to other cases where courts have held the use of a competitor's trademarks in meta tags could create confusion.
See, e.g., N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1218-1224 (11th Cir. 2008);
Suarez Corp. v. Earthwise Tech., Inc., 2008 WL 4934055, at *6 (W.D. Wash. Nov. 14, 2008). Accordingly, the court enjoined Iuovo from using Deltek's mark online.
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