Plaintiff Bayer LLC is the United States distributor of the “ADVANTAGE” line of flea control preparations. Bayer LLC holds trademark protection for the term “ADVANTAGE” in the US flea-and-tick market. Bayer LLC sells the products under authorization from German-based Bayer A.G., the worldwide parent of the Bayer family. Bayer A.G. licenses other subsidiaries to sell the line of products in other countries. Defendant Nagrom Inc. purchased the “ADVANTAGE” products from the licensed United Kingdom distributor and imported them into the United States. Nagrom used several websites, including tjspetshop.com, to market and sell the products directly to consumers in the United States under the “ADVANTAGE” name. Nagrom included the “ADVANTAGE” name in the meta-tags for the site and purchased at least one paid search placement for the term “ADVANTAGE” such that consumers who searched for “ADVANTAGE” products would be given a link to Nagrom’s site.
Under the Lanham Act, 15 USC §1114, no party is permitted to use a facsimile of a registered trademark without permission of the registrant in any circumstance “in which such use is likely to cause confusion, or to cause mistake…”. §1114. The court here applied a two-step test to determine if the Lanham Act supports an injunction. First, it must be determined if the trademark in dispute is registered. Second, the court must determine if confusion will result from the use of the trademark. This can be fulfilled by showing any “material difference” between products.
The court fulfilled the first step by finding Bayer LLC to be the undisputed registrant of the ADVANTAGE trademark.
In testing the second step the court held that the threshold for finding material differences between gray market and authorized domestic products is “quite low.” The court held that “any difference… creates a presumption of consumer confusion sufficient to support a Lanham Trade Mark Act claim.” The court listed 17 material differences between US and UK versions of the product including packaging, spelling, dosage calculations, consumer instructions, US consumer help phone numbers, direct-to-consumer sales, and EPA approval. The court found these differences sufficient to fulfill the second step of the Lanham analysis.
The court also found that Plaintiff’s use of the ADVANTAGE mark in its meta-tags and on search placements violated the Lanham Act by creating so-called “initial interest confusion” among consumers. It found that even if consumers were not confused by the actual product, the use of plaintiff’s ADVANTAGE trademark in the site’s meta-tags and paid search placements misappropriated the plaintiff’s goodwill by causing initial interest confusion among consumers. The court cited Brookfield Communications v. West-Coast Entertainment to support injunction against a website based solely on initial interest confusion, even if there was no confusion after reaching the site. The court cited Bernina of Am., Inc. v. Fashion Fabrics Int'l, Inc. to support injunction against the unauthorized use of a registered trademark in the meta-tags hidden in the code of a website. [In Bernina the use of a product’s name in the meta-tags for a website was enjoined “only because the Court finds that [defendant’s] website itself is misleading.” — eds]
The court permanently enjoined Nagrom from selling “ADVANTAGE” products intended for the UK market in the United States based on a presumption of irreparable injury to plaintiff. In addition, the court enjoined the defendant from using the “ADVANTAGE” marks in the website, meta-information, or paid search placements.