In December, the Supreme Court heard oral arguments in B&B Hardware v. Hargis Industries. The case addresses the level of deference to be given to decisions from the Trademark Trial and Appeal Board, if any. We’ve discussed the issue a number of times at DuetsBlog. I’d love to provide you with breaking news, but still no ruling yet.

However, the Fifth Circuit provided us with an interesting decision regarding potential liability for use of trademarks as part of gripe sites. A gripe site is a broad term that essentially means a website created for one purpose, to criticize a company or individual. Many of these gripe sites utilize the trademark of the target of the criticism both on the website and as part of the URL. The target’s first impulse is usually to send a letter to get the website taken down. However, as former and founding Duetsblogger Dan Kelly reasoned, pursuing these website owners can cause more harm than good. On Monday, the Fifth Circuit provided a good example of why brand owners should be cautious in pursing gripe sites.

Clark Baker is an investigator with the Office of Medical and Scientific Justice (“OMSJ”). If you’re like me, you’ve never heard of either Mr. Baker or the OMSJ. The OMSJ identifies itself as an investigation agency which runs the HIV Innocence Group. According to the website, the group assists defendants who have been charged with HIV related crimes by exposing the failures and inadequacies of “HIV junk science.”

Unsurprisingly, not everybody agrees with some of the beliefs and statements of the OMSJ. Among these critics is Jeffrey Todd Deshong. Mr. Deshong runs the website HIV Innocence Group Truth, where Mr. Deshong critiques Mr. Baker, the OMSJ, and the opinions and scientific theories they utilize. The website incorporates the entirety of the OMSJ’s mark, but adds the word “truth” to the end. Equally unsurprising, the OMSJ does not like Mr. Deshong’s website and filed a federal complaint alleging trademark infringement on July 9, 2013.

The District Court for the Northern District of Texas granted the Defendant’s Motion to Dismiss on June 30, 2014 (order available here, h/t to Public Citizen). While many gripe site defendants prevail on First Amendment grounds, the court here ruled that the plaintiff failed to allege any facts that could support a claim for trademark infringement.

The court relied upon the Fourth Circuit’s decision in Lamparello v. Falwell, 420 F.3d 309, 313, for the proposition that:

when dealing with domain names, a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name.

The court examined the allegations of the complaint, noting that (1) the websites do not look like each other; (2) Deshong’s website does not advertise any product or service: and (3) the sole purpose of the website is to criticize Baker and the OMSJ. The court concluded that none of the factual allegations could be construed as alleging that a person, upon viewing the content, could be confused as to the source of the website. The Fifth Circuit affirmed the district court’s opinion without additional analysis.

But what does this have to do with B&B Hardware? Substantively, not much. But what if Deshong had applied for a trademark for HIV INNOCENCE GROUP TRUTH in connection with “providing a website featuring information on HIV?” And what if OMSJ opposed, citing prior rights in the mark HIV INNOCENCE GROUP in connection with “providing a website featuring information on HIV?”

This hypothetical demonstrates the problems that could arise if Trademark Trial and Appeal Board decisions are considered conclusive as to the issue of a likelihood of confusion. Unlike a district court, the Board would not consider the content of the website unless it was referenced in the identification of services. It is likely that the plaintiff prevails in this hypothetical. However, in the district court, not only did the defendant win, but he won on a 12(b)(6) motion to dismiss. This isn’t due to a mistake made by either the Board or the district court, but instead the limited nature of the jurisdiction, legal issues, and discovery for proceedings before the Board.

Unfortunately, we’ll have to wait to see how B&B Hardware plays out, but there may be a few more gripe sites to discuss depending on the outcome.