It is a well-known axiom that when considering the validity or infringement of a trademark, it is to be considered in its entirety — not broken into isolated elements. Now, as Evan Brown reports, the Eastern District of New York has acknowledged the application of this principle in reverse, holding that using bits and pieces of a trademark as Internet search terms cannot constitute “trademark use”:
Site Pro-1 sued its competitor Better Metal, LLC, accusing Better Metal of committing trademark infringement when it purchased the terms “site,” “pro,” and “1” to trigger sponsored links on Yahoo! The facts of the case were “straightforward and not in dispute”: the mark SITE PRO-1 did not appear in the sponsored search results linking to Better Metal’s website.
Here’s the decision, courtesy of Eric Goldman.
