Hiding Competitor’s Trademarks in Metatags Is “Willful”

Hiding a competitor’s trademark in metatags and printing them with white ink on the website constitutes “willful” trademark infringement under the Lanham Act.

McGills Glass Warehouse is an internet-based retailer of stained-glass supplies. It embedded the registered trademarks “Venture Tape” and “Venture Foil” in its website metatags and on the pages by “printing” them in white ink on a white background. The trademarks were owned by Venture Tape Corp.

Venture Tape Corp. sued for trademark infringement. The trial court found the infringement was willful under the trademark law because McGills admitted that the “purpose in using the Venture marks was to lure customers to his site.”

The appellate court agreed finding “no clear error in the district court’s conclusion that such intentional concealment provides strong circumstantial evidence of ‘willfulness.'” Based on the willful finding, the trial court awarded Venture the profits of McGills and attorneys fees.

McGills argued to the appellate court that the trial court erred in awarding Venture all of its profits when it should have received only the profits from the sales attributed to the tape and foil. The appellate court upheld the award. “Here, Venture met its burden by introducing tax returns showing Venture’s gross sales over the relevant time period. McGills then had the burden of producing evidentiary documentation that some of those sales were unrelated to and unaided by McGills’ illicit use of Venture’s marks. The company produced no such evidence.”

Venture Tape Corporation v. McGills Glass Warehouse, 1st Cir. Court of Appeals, No. 07-1186, issued August 28, 2008.