(1) Use in Commerce
Single Advertisement Theory

One way in which When U “used” Plaintiffs’ trademarks in commerce is attributed to what one author has termed the “single advertisement” theory.  This theory is best illustrated from an example given by the plaintiffs in Washingtonpost.Newsweek.com Interactive, Co. v. Gator Corp., 2002 WL 31356645 (E.D. Va. Jul. 16, 2002). In Gator, the plaintiffs analogized the defendant’s use of its trademark to that of a consumer in a store.  The consumer walks through a store and sees a full-size
figure of Tiger Woods pointing to a display of Nike Golf balls.  However,
a Titleist representative put a display of its golf balls in front of a Nike display.  From the consumer's point of reference, it appears as if Tiger Woods were pointing to the Titleist golf balls.  It is unlikely, as the consumer draws closer, that the consumer would believe that the Titleist was using the Nike advertisement.

Nonetheless, in contrast, Internet consumers view pop-up advertisements and underlying websites on a flat, two-dimensional plane.  Pop-up advertisements “use” the underlying website’s marks because from the consumer’s point of reference, the screen is a single advertisement. Therefore, where a  pop-up advertisement displays both its advertisement and Plaintiffs’ trademarks on the Plaintiffs’ advertisements in a way that is likely to confuse the consumer, then ad-host servers, such as WhenU, clearly “use” Plaintiffs’ trademark in commerce.

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Erich D. Schiefelbine, Stopping a Trojan Horse:  Challenging Pop-Up Advertisements and Embedded Software Schemes on the Internet Through Unfair Competition Laws, 19 Santa Clara Computer & High Tech. L.J. 499, 507 (2003)

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Use in the Metatag and Trigger Ad Sense

Another way that WhenU “used” Plaintiffs’ trademarks in commerce is by including them in the SaveNow directory.  WhenU’s software, and any Adware technology for that matter, “combines metatag and search engine technology into one; the embedded software works together with the ad-server to search the user’s computer and launch pop-up advertisements based on user-entered keywords.” Therefore, as discussed in the metatag and trigger advertisement case law, if keywords that the SaveNow program searches for include registered trademarks, then this constitutes “use” as used in Section 32 of the Lanham Act. In the present case, SaveNow users that type Plaintiffs’trademarks “U-Haul,” “Wells Fargo,” or “1-800 Contacts” into a search engine in an attempt to find the URL for Plaintiffs’ website are exhibiting a similar knowledge of Plaintiffs’ goods and services, and pop-up advertisements that capitalize on this are clearly using Plaintiffs’ marks.  Thus, by causing pop-up advertisements to appear when SaveNow users have specifically attempted to find or access the Plaintiffs’ websites, pop-up advertisers are “using” Plaintiffs’ marks that appear on its website. 

Additionally, WhenU “uses” Plaintiffs’ trademarks and URLs, such as “www.uhaul.com,” or “www.1800Contacts.com,” in the WhenU directory of terms that trigger pop-up advertisements on the SaveNow user’s computer.  In doing so, under Brookfield and its offspring, WhenU “uses” Plaintiffs’ marks by including a version of Plaintiffs’ “U-Haul” or “1-800 Contacts” mark to advertise and publicize companies that are in direct competition with Plaintiffs.  Plaintiffs’ addresses differ from its trademarks only in the omission of spaces and grammatical marks, as well as the addition of “www.” and “.com.”. Previously, the Second Circuit held that these distinctions are insignificant in finding trademark infringement.  Furthermore, WhenU could use other words, besides Plaintiffs’ marks to trigger the advertisements.  Accordingly, contrary to the U-Haul and Wells Fargo decisions, WhenU uses Plaintiffs’ trademarks in commerce and therefore may be liable for trademark infringement and dilution.

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See TCPIP Holding Co., Inc. v. Haar Comm., Inc., 244 F.3d 88, 101-02 (2d Cir. 2001) holding the omission of spaces and addition of domain identifier “.com” or “.net” are of little significance since it is necessary in the registration of an Internet address to eliminate spaces and possessive punctuation).
See Playboy Enter., Inc. v. Netscape Comm. Corp., 354 F.3d 1020, 1030 (9th Cir. 2004) (concluding that defendants use of plaintiff’s marks to trigger adult-oriented banner advertisements did not constitute nominal use).  The court stated, “[d]efendants could use other words, besides [plaintiff’s] marks, to trigger adult-oriented banner advertisements.  Indeed they already did so.  The list they sell to advertisers includes over 400 terms besides PEI’s marks.”  Id.

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(2) Likelihood of Confusion:  Initial Interest Confusion

Once Plaintffs’ prove WhenU, or another ad-server host, “uses” its trademarks in commerce, a probability of confusion must be established to show a likelihood of success on the merits.  Confusion for purposes of the Lanham Act is "shown where there is a likelihood than an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question or where consumers are likely to believe that the challenged use of a trademark is somehow sponsored, endorsed or authorized by its owner."  Such confusion could be easily established under the initial interest confusion doctrine described in Brookfield.  WhenU’s SaveNow program is a direct species of initial interest confusion.  The program’s placement of the overlying pop-up advertisement is calculated to lure initial viewers’ attention to the overlying advertiser’s product instead of Plaintiffs’ product.  Therefore, WhenU’s program preys on, and at the expense of, the goodwill that Plaintiffs’ developed in its mark.  Thus, this act of purposefully generating pre-sale confusion by attracting or diverting potential customers by using Plaintiffs’ trademark is sufficient to constitute trademark infringement.

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1-800 Contacts, 309 F. Supp. 2d at 488 (citing 15 U.S.C. §§ 1114,1125).

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(3) Trademark Dilution

After establishing WhenU’s, or another ad-server hosts’, use of Plaintiffs’ trademarks in commerce, it would likely succeed on a trademark dilution claim.  As previously discussed, Plaintiffs could rely on initial interest confusion to support its claim.  Plaintiffs may argue that WhenU’s pop-up advertisements confuse or trick consumers into thinking that these advertisements are somehow associated with Plaintiffs or that Plaintiffs consented to the use of pop-up advertisements.  The consumer’s association of Plaintiffs’ website with the pop-up advertisements would likely disparage Plaintiffs’ goodwill because pop-up adds are often annoying to consumers. Additionally, WhenU’s advertisements could display unwholesome or inferior products next to Plaintiffs’mark, therefore usurping the power of Plaintiffs to control the way its mark is used and displayed.  Thus, because the possible tarnishment and blurring of Plaintiffs’ trademark by material it cannot control, Plaintiffs would likely be afforded redress from trademark dilution

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