Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003)

Several months afte the U-Haul opinion, the United States Court for the Eastern District of Michigan reached a similar decision.  In Wells Fargo& Co. v. WhenU.com, Inc. , Wells Fargo filed a motion for preliminary injunction against defendant-WhenU arguing many
of the same trademark issues that were raised in the U-Haul decision.

Wells Fargo asked the district court to enjoin WhenU from delivering pop-up advertisements to computer users while they were accessing the plaintiff’s websites.  Nevertheless, the district court held that the Wells Fargo failed to demonstrate a strong likelihood of success on the merits of its claims.

Similar to the Eastern District of Virginia’s decision in U-Haul, the District Court for the Eastern District of Michigan denied Wells Fargos’ preliminary injunction motion because it failed to establish “use in commerce” as required by section 1114 of the Lanham Act.  The court defined “use” pursuant to the Lanham Act as “use of a trademark in a way that identifies the products and services being advertised by the defendant.” The court first distinguished the present case from a traditional trademark case where a defendant illegally uses a trademark to identify and market similar goods or services.  However, here, the court concluded that WhenU did not use Wells Fargos’ trademarks because WhenU only used Wells Fargos’ trademarks in its directory, to which the typical consumer does not have access, in order to determine what advertisements to direct to consumers. The court found that WhenU’s inclusion of the URLs and other variations of Wells Fargo’s trademark terms was only done to identify the category the participating consumer is interested in and to dispatch a contextually relevant advertisement to the consumer. 

Furthermore, the court concluded that WhenU did not “use” Wells Fargo’s trademark to give the Internet user a false impression that the advertisement was endorsed by or affiliated with Wells Fargo.  The court found that WhenU’s pop-up advertisements were positioned in such a way that made apparent to the user that what was appearing on his or her screen were two distinct sources of material.  Moreover, even if the display constituted “use” under the Lanham Act, the court held that WhenU engaged in legitimate comparative advertising. Thus, the court held that WhenU did not use Wells Fargos’ protected trademark in violation of the Lanham Act.

Continue to the 1-800 Contacts Case