Legal Question in Intellectual Property in Illinois

Re: An interesting Internet Trademark issue, please advise

As long as you are no longer using their mark, I can't see how you would be liable. While I doubt there are any cases out there, it would seem that if search engines don't pick up the changes it's similar to an old yellow pages or an old magazine - it was a valid use of the mark when you used it, and if someone picks up an old ad and calls the number, there's nothing you can do about it. While a disclaimer may seem safer, it would actually be picked up by search engines looking for the term.

Re: An interesting Internet Trademark issue, please advise

I think there is a better strategy than that recommended by attorney Press, although his advice is sound. There are cases on meta-tagging as trademark infringement. Those are different because the attempt there was diversion of someone else's customers. But, you have a good reason for keeping them for a short period. You need to notify people of your change. If you were primarily using their trademarks to confuse people into falsely thinking you represent your former supplier, you might have some liability. If you are primarily using the tags and disclaimer to notify people you have switched brands, then that is probably the opposite of trademark infringement since it is intended to decrease the likelihood of confusion.

My suggestion is keep the meta-tags for about a one year period and add a disclaimer that appears. The logic is that the meta-tags are still there so people can be notified you have switched. I would add the word "not" in front of the meta tags with the discontinued brand name so that you have an additional defense consistent with notification of change as your primary purpose. The disclaimer takes away any realistic argument of deliberate infringement by the other party during the transition, so I think Mr. Press is incorrect in recommending against it. Within a year take the meta-tags off and within two years take the disclaimer off. Do that and you should be safe.

This approach may have the effect of temporarily increasing your search ranking under the disclaimed trademark, but that is not your purpose and really not your fault, so I see it as not being actionable and just tough luck of their own doing for the former supplier caused by the former supplier cutting you off. They want to screw you? NO, screw them.

If the former supplier threatens suit, you will want to contact a knowledgable trademark attorney, experienced in litigation, to respond to the threats and to stall the other side for a year or so and then "graciously" agree to drop the tags and disclaimer (as you would do anyway) to settle things. Since you are in Illinois and I am in Illinois, I can suggest an in-state attorney that is good at that sort of thing.

The alternative is to delete the tags as Mr. Press recommended and not have a disclaimer, but that will be less effective at transitioning your customers.