WhenU.com’s Pop-Up Ads Do Not “Use” 1-800’s Mark in Commerce

June 8, 2005 – Firm News

On 27 June 2005, the Second Circuit issued its decision in the 1-800 Contacts v. WhenU.com case, involving trademark infringement based on pop-up advertisements. Finding it unnecessary to reach likelihood of confusion analysis, the court held as a matter of law: “WhenU does not ‘use’ 1-800’s trademarks within the meaning of the Lanham Act . . . when it (1) includes 1-800’s website address, which is almost identical to 1-800’s trademark, in an unpublished directory of terms that trigger delivery of WhenU’s contextually relevant advertising to C-users; or (2) causes separate, branded pop-up ads to appear on a C-user’s computer screen either above, below, or along the bottom edge of the 1-800 website window.”

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