Unauthorized Use of Another’s Trademark on the Internet

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Trademark conflicts involving domain names on the Internet quickly led to the passage of new law — the Anticybersquatting Consumer Protection Act (“ACPA”) — to address problems of bad faith registration of trademarked names by non-trademark holders. But the ACPA, the only law enacted to deal with trademarks on the Internet, applies only to cybersquatting of domain names. Since trademark disputes related to the Internet arise in a number of ways outside cybersquatting, it is important to understand how the historical doctrines of trademark infringement and trademark dilution apply to situations outside the scope of ACPA.

The issues this article addresses are familiar questions to trademark law. As is the case outside the Internet, one must ask whether there is a likelihood of confusion and whether there is dilution. However, these questions are difficult to answer applying the old doctrines of trademark law, and raises new questions. For example, is initial interest confusion sufficient to find trademark infringement when trademarks are used in metatags? To what extent will the unauthorized use of a trademark in the path of a URL be considered a “fair use” of the trademark and therefore non-infringing? Can linking or framing cause dilution of a trademark? Will paid placement or keyed banner ads cause a likelihood of consumer confusion? When answering these and similar questions, the courts find themselves redefining the boundaries of the Lanham Act, and with the basic objectives of trademark law in mind, it is unclear where these boundaries should be set.

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