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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Bijur Lubricating Corp. v. Devco Corporation, et al.

332 F.Supp.2d 722, Civ. No. 00-5157 (WHW) (D.N.J., August 26, 2004)

Competitor's Use Of Plaintiff's Marks In Website Selling Replacement Parts For Plaintiff's Products Does Not Infringe

Court holds that competitor's use of plaintiff's trademark in content and meta tags of a web site on which replacement parts for plaintiff's products are sold neither infringes nor dilutes plaintiff's mark in violation of the Lanham Act.  Defendant is allowed to use plaintiff's mark in this fashion both to promote the sale of replacement parts manufactured by plaintiff, as well as those manufactured for use in plaintiff's products by third parties.  The Court accordingly granted defendant's motion for summary judgment and dismissed the trademark infringement, unfair competition and dilution claims plaintiff advanced against defendant in this action.

Devco Uses Bijur's Trademark In Its Site's Content and Meta Tags

Plaintiff Bijur owns the trademark 'Bijur,' which it

has used since the 1920's to promote its manufacture and sale of lubrication systems.  Plaintiff and defendant Devco are competitors in the sale of replacement parts for these systems. 

Defendant Devco sells such replacement parts at a web site it operates at  These replacement parts are manufactured both by a Bijur and a third party.

To attract customers to its site, Devco incorporated plaintiff's 'Bijur' mark in both the meta tags, and content, of its site.  Thus, the Title Meta Tags of one of the site's web pages read "Bijur replacement lubrication parts by Devco."  The Bijur mark was also incorporated into that web page's keyword and description meta tags, as well as the path of that page's url.

Defendant also used the 'Bijur' mark repeatedly in the content found on these web pages.  In addition to the phrase 'Bijur Replacement Parts," the web page also contained a table to enable customers to order the correct 'Devco' part to replace the original 'Bijur' part found in their 'Bijur' lubrication systems.  The left column of this chart was labeled "Devco" or "Devco model type" and contained a Devco part number.  The right column was labeled "Replace Bijur" or "Replaces Bijur type" and contained the corresponding Bijur model numbers the Devco part replaced.

Defendant's actions had the desired result.  Searches for 'Bijur' in various search engines yielded not only links to Bijur's own web site, but links to Devco's site as well.

As a result, plaintiff commenced this suit, charging defendant with trademark infringement, dilution and unfair competition under both the Lanham Act and applicable New Jersey law.  Finding that Devco was permitted as a matter of law to use plaintiff's mark in this manner, the District Court granted defendant's motion for summary judgment, and dismissed plaintiff's claims.

No Likelihood Of Confusion

Plaintiff's trademark infringement and unfair competition claims hinged on plaintiff's ability to show that consumers would likely be confused by defendant's use of the 'Bijur' mark.  In the Third Circuit, likelihood of confusion is determined by analyzing a nonexhaustive list of factors set forth in Interspace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983).

While the Court analyzed each of those factors, central to its determination was its holding that the Lanham Act permits Devco to use Bijur's mark in both the content, and meta tags, of its web site to advise consumers that Devco sells replacements for Bijur lubrication systems.  Said the Court:

Devco is entitled to inform potential customers that its non-Bijur-manufactured parts replace Bijur parts.

*               *                     *

There is no evidence in the record that Defendants intended to do anything more than inform the public as to the nature of Devco's replacement parts.  The tabular lists of parts clearly set forth the Devco model number for each part and the Bijur model number that it replaces.  Neither does Devco's use of the words "Bijur Replacement Parts" on the website demonstrate an intent to confuse the public. The webpage clearly announces that Devco sells products by a number of manufacturers and that it sells both original equipment and replacement parts.  There is nothing inherently misleading about the use of the "Bijur" name in this context.  Nor is there evidence to show that Defendants' use of the "Bijur" name in its metatags was intended to confuse the public.

*                   *                   *

[J]ust as the Lanham Act permits Devco to inform customers through its website that it sells replacements for Bijur parts, it allows Devco to provide the same information in its metatags.

*                   *                   *

When potential customers would run Internet searches using variations on the keyword "Bijur," the result lists would include a link to Devco webpage under the title metatag "bijur replacement lubrication parts by Devco."  At that point, the customers could choose whether or not to visit the Devco site.  Nothing in this description of the site was misleading; it informed potential customers that the replacement parts were "by Devco," implying that they were not manufactured by Bijur.

As a result, despite the fact that a number of the Lapp factors favored a finding that consumers were likely to be confused (Devco used plaintiff's mark, which was strong, to market inexpensive products via a marketing channel also employed by plaintiff to reach the same customers), the court nonetheless held that plaintiff had failed, as a matter of law, to establish the requisite likelihood of consumer confusion. Said the Court:

Most importantly, regardless of any alleged intent to confuse the public, Devco was entitled to use the Marks in the manner in which it did.  Devco's statements on the website that its non-Bijur-manufactured replacement parts "Replace[d] Bijur" and that it carried "Bijur Replacement Parts" were not deceptive as a matter of law.  A commercial rival is permitted to use the original manufacturer's name truthfully to describe a replacement part.

In reaching this result, the Court rejected plaintiff's claim that defendant's uses of the Bijur mark in meta tags was barred by the initial interest confusion doctrine.  As explained by the Court, that doctrine does not bar the use of a competitor's marks in meta tags to "truthfully … identify the competitor's goods," a use permitted under the Lanham Act.

No Trademark Dilution

The Court similarly rejected plaintiff's dilution claims, holding defendant's use of the mark a nominative fair use excepted from applicable dilution laws.  According to the Court:

A three-factor test determines whether the use of a mark is a nominative use: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Defendant Devco satisfied this test. As explained by the Court:

Clearly, Bijur replacement parts are not identifiable as such without use of the "Bijur" name.  Devco did not use any aspects of the Marks other than the "Bijur" name, such as stylized versions thereof, in promoting the replacement parts on the website.  And, as discussed above, nothing in the website or metatags suggested an affiliation between the parties.

The Court accordingly granted defendant's motion for summary judgment, and dismissed plaintiff's trademark infringement, unfair competition and dilution claims.

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