To show that a mark is used in commerce, a plaintiff must prove that the mark “is used or displayed in the sale or advertising of services and the service are rendered in commerce.” 15 U.S.C. § 1127(2). The issue in internet marketing cases is whether using a mark to generate search-result links and sponsored links is considered use “in commerce.” If you are faced with a trademark infringement claim related to internet marketing it is important to evaluate this defense.
In Merck & Co. v. Mediplan Health Consulting, Inc., 425 F. Supp. 2d 402, 415 (S.D.N.Y. 2006), the defendant used the plaintiff’s mark, “ZOCOR” as a search-engine keyword to generate sponsored links. The court found that as a matter of law, this type of use was not use in commerce, but rather “an internal use of the mark.” Based on the plaintiff’s failure to show use of the mark in commerce, the court dismissed the plaintiff’s trademark claim and declared that use of “a key word to trigger the display of sponsored links is not use of the mark in a trademark sense.” Id.
A successful defense based upon no use in commerce can result in an early disposition of a case because unlike many trademark infringement defenses this is a legal issue decided by the court on a pre-trial motion to dismiss or for summary judgment.