Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036 (9th Cir. 2003) (full-text).
Plaintiff owned the trademark “Pycnogenol” for a pharmaceutical product. The defendant sold pharmaceuticals, including plaintiff’s product, through a website. The defendant included “Pychogenol” as one of the metatags on the site.
Appellate Court Proceedings
The appellate court held that this use of the mark was prima facie infringing. It rejected the defendant’s defense of nominative fair use, on the ground that defendant’s conduct failed to meet the requirement that “the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Here, the court found that defendant’s “references to Pycnogenol spawn confusion as to sponsorship and attempt to appropriate the cachet of the trademark Pycnogenol to his product.”