of Plaintiffs’ Trademarked Names in the Scrambled WhenU Directory is Not a Use in Commerce Plaintiffs also argue that WhenU’s inclusion of their marks in the WhenU Directory constitutes “use in commerce.” The inclusion of web addresses in WhenU’s proprietary Directory is done to identify the category the participating consumer is interested in, such as mortgages, and to dispatch a contextually relevant advertisement to that consumer. The advertisement that is displayed does not bear the plaintiffs’ trademarks. To the contrary, it bears WhenU’s marks and branding as well as those of the advertiser. Thus, the SaveNow software only uses URLs to identify the website itself, just like one would have to use the word “Macy’s” to describe the Macy’s department store. This does not c .N.Y.2000)(<HOLDING>). The Brookfield court offered the following
holding that use of metatags constitutes use in commerce but finding no trademark violation because defendants only used mark in metatag to fairly identify the content of his websites and did so in good faith that is without the intention of capitalizing on the plaintiffs reputation and goodwill holding that use of plaintiffs trade name as metatag in defendants website was a permissible fair use as metatag simply described defendants and the content of their website holding that the defendants reference to the plaintiffs trademark in the metatags of the defendants web page was a violation of trademark law holding that use of plaintiffs mark is in good faith even though other aspects of defendants behavior may have evidenced bad faith holding limited use of a mark did not constitute prior use in commerce sufficient to establish rights in the mark