Use Pez On the Web, Go to Jail
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Trademark law on the Internet may still contain a number of grey areas, but Pez Candy Inc. believes the definition of fair use of its famous mark is black and white -- and it's threatening to prosecute anyone who uses the word Pez on a Web site.
According to a page at the site operated by Connecticut-based Pez, "You may NOT use the PEZ mark (or any other registered trademark belonging to Pez Candy, Inc. or its affiliates) on your website or your business in any way, shape or form."
Included in this prohibition, according to Pez, are metatags in a page's HTML source code that bear any of its trademarks. Pez warns that any such use of its name will be considered trademark infringement and will be prosecuted to the fullest extent of the law.
A search at Yahoo turned up more than 60 sites devoted to Pez, only one of which is operated by the candy company. Some of the sites sell Pez dispensers--the plastic contraptions which store the tablet-shaped candy and are coveted by collectors--for upwards of $20; other sites are purely informational.
It's not known whether Pez Candy Inc. has yet taken legal action against any of these sites, and company representatives were not immediately available for comment. Neal Greenfield, a trademark attorney with Amster, Rothstein & Ebenstein in New York, notes that Pez Candy has opened its own online store and may simply be trying to prevent others from stealing its business.
According to Greenfield, courts have so far allowed sites to use others' trademarks in their text and metatags, as long as they fairly describe the content or purpose of the site.
"If you're truly selling a Pez dispenser, you have right to identify it as one. There's no other way -- you can't use a generic," said Greenfield.
But at least one attorney thinks Pez might successfully persuade a court to back up its claims. Jessica Friedman, a new media attorney with Leavy Rosensweig & Hyman in New York, said Pez might argue it's the victim of "initial interest confusion," a situation trademark law attempts to prevent in which a third party uses someone else's trademark to get a consumer's initial interest, even if at the time of purchase the consumer is no longer confused about the source of the product.
Pez's strategy in posting the warning at its site may simply be to scare off the gullable, according to Carl Oppedahl of Oppedahl and Larson in Colorado.
"Trademark owners like to imagine that they can regulate all the behavior of everyone who utters a word or writes something down, but they can't," said Oppendahl.