Initial Interest Confusion?
By Alex Athans, Legal Team
In the case of Designer Skin, LLC v. S & L Vitamins, Inc, S & L Vitamins used Designer Skin’s marks to identify Designer Skin products that were being sold on their website. Designer Skin held that the defendant, S & L, unlawfully used their trademark and caused initial interest confusion. The defendant claims that they were truthfully informing customers where they could purchase Designer Skin’s products. The S & L website could have been thought of as a “bait and switch” maneuver, where one party uses another’s mark in a deceptive manner in order to lure the potential customer away from the other’s product. Under the law, one who uses another’s trademarks is only liable for infringement when such use is likely to confuse an appreciable number of customers as to the source of the product, and this is the concern that initial interest confusion speaks to. In this instance, however, the defendant’s actions did not clearly fit the criteria to be considered a“bait and switch”.
The court further held that S & L’s use of Designer Skin’s marks was nominative fair use, and therefore permissible, because (1) Designer Skin’s product is only identifiable through using the mark, (2) S & L used Designer Skin’s mark only to the extent reasonably necessary to identify their products, and (3) S & L made no suggestion that they were sponsored or endorsed by Designer Skin and no initial interest confusion or deception of customers was intended. Therefore, S & L’s use of these marks was held to not infringe on Designer Skin’s trademarks.
This decision is important for domain owners to be aware of, as the nature and purpose of their domain may protect a parking keyword or other use of a trademarked term from being viewed as misleading, and therefore causing initial interest confusion leading to trademark infringement.
Source: Sedo.com -- Reprinted with permission -- July 8, 2008
In the case of Designer Skin, LLC v. S & L Vitamins, Inc, S & L Vitamins used Designer Skin’s marks to identify Designer Skin products that were being sold on their website. Designer Skin held that the defendant, S & L, unlawfully used their trademark and caused initial interest confusion. The defendant claims that they were truthfully informing customers where they could purchase Designer Skin’s products. The S & L website could have been thought of as a “bait and switch” maneuver, where one party uses another’s mark in a deceptive manner in order to lure the potential customer away from the other’s product. Under the law, one who uses another’s trademarks is only liable for infringement when such use is likely to confuse an appreciable number of customers as to the source of the product, and this is the concern that initial interest confusion speaks to. In this instance, however, the defendant’s actions did not clearly fit the criteria to be considered a“bait and switch”.
The court further held that S & L’s use of Designer Skin’s marks was nominative fair use, and therefore permissible, because (1) Designer Skin’s product is only identifiable through using the mark, (2) S & L used Designer Skin’s mark only to the extent reasonably necessary to identify their products, and (3) S & L made no suggestion that they were sponsored or endorsed by Designer Skin and no initial interest confusion or deception of customers was intended. Therefore, S & L’s use of these marks was held to not infringe on Designer Skin’s trademarks.
This decision is important for domain owners to be aware of, as the nature and purpose of their domain may protect a parking keyword or other use of a trademarked term from being viewed as misleading, and therefore causing initial interest confusion leading to trademark infringement.
Source: Sedo.com -- Reprinted with permission -- July 8, 2008