Use Pez On the Web, Go to Jail

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 also possible that additional sites not concerned with
the popular candy have embedded the term Pez in their metatags as “search
engine bait” or as a way to divert traffic to their content.

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.

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