Van Gogh Moving & Storage:  A cut above the rest
“A cut above the rest”

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.

By Ron Coleman

LIKELIHOOD OF CONFUSION blog author Ron Coleman is a member of Dhillon Law Group in their New York City and Montclair, New Jersey offices. He is a graduate of Northwestern University School of Law and Princeton University.