“Use in Commerce:” Possible Defense for Search Engine Companies

A trademark infringement case in the United States (U.S.) for registered trademarks (15 U.S.C.S. § 1114) or unregistered trademarks (U.S.C.S. § 1125(a)(1)) requires a plaintiff the prove five elements among others: First, that it has a valid mark protected under the Lanham Act; Second, that the defendant “used” the mark; Third, that the “use” was “in commerce”; Fourth, that it was in connection with the sell or advertisement of goods or services; Fifth, that it was without the plaintiff’s consent. Besides the above elements, a plaintiff in a trademark infringement case must prove “likelihood of confusion.” The U.S. Courts interpreting the Lanham Act have long established that likelihood confusion must be present in a granting of trademark infringement claim. Thus, it is fair to say that “use in commerce” and “confusion” are two key elements in a trademark infringement case in the U.S. Counsels draft pleadings and defenses as to best suit their clients’ needs. For instance, plaintiff counsels may want to first focus on the likelihood of confusion theory to defend their client’s claims of trademark infringement. On the other hand, defense counsels may want to argue that there was no “use in commerce” in the defendant’s actions as the Lanham Act requires. In the 1-800contacts, Inc. v Whenu.com, Inc., a U.S. (hereafter “1-800 case”) case against an internet advertisement company, Defendant’s argument that its advertisement practices did not constitute “use in commerce” as required by the Lanham Act was upheld by the Court of Appeals. Thus, it may be reasonable to say that in some specific instance “use in commerce” may constitute a defense for search engine or internet advertisement companies.

The following questions have been addressed in this article:

What are the facts of the 1-800contacts, Inc. v Whenu.com, Inc case?
Does the “use in commerce” element must be proven before the “likelihood of confusion” element?
Is the 1-800 case holding consistent with other similar cases?

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