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Ninth Circuit clarifies differences between proof of protectable trademark and proof of infringement
December 31, 2007

In a decision Friday, the Ninth Circuit clarified the differences in use requirements to prove the existence of a protectable trademark as compared to trademark infringement. The plaintiff and defendant both used the same mark, but in connection with different services. The defendant successfully argued at the district court that because the plaintiff did not use its mark in connection with the defendant's services, the plaintiff had not shown it had a protectible mark that could be enforced against the defendant.

The Ninth Circuit pointed out that this confused the required elements to prove trademark infringement. A plaintiff must both prove that it has valid rights in a mark and that the defendant's use of its mark is likely to cause consumer confusion. When the plaintiff has a federal registration, evidence of the registration is prima facie evidence of valid rights in a mark. The mark owner does not have to additionally show that the defendant is using the mark on the same goods and/or services in order to show infringement. As summarized by the court:

In sum, a plaintiff trademark owner must establish a valid, protectable interest in order to proceed to the second prong of the trademark infringement analysis — the likelihood of confusion resulting from the defendant’s alleged infringing use. Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.

In this case, however, the plaintiff had not offered any evidence of likelihood of confusion in opposing summary judgment, so the court affirmed the grant of summary judgment anyway.

In 1994, Applied Information Sciences (AIS) applied to register the trademark SMARTSEARCH, and in 1998 obtained a registration for that mark for use on "computer software and instruction manuals sold together which allow the user to retrieve information from on-line services via phone line in the fields of agriculture and nutrition, books, chemistry, computers and electronics, education, law, medicine and biosciences, news, science and technology, social sciences and humanities." AIC sold SmartSearch products from 1995-2004.

According to AIS, eBay began using SmartSearch in connection with its online auction services. In 2001, AIS contacted eBay asking that it take a license or discontinue use. eBay refused, and in 2004, AIC sued eBay for infringement. Both parties eventually moved for summary judgment, and the district court granted eBay's motion on the grounds that AIS did not have a valid, protectible interest in the SmartSearch mark in connection with internet auction services. AIS appealed.

The Ninth Circuit affirmed, but on different grounds. The court noted that in order to prevail on its claim of trademark infringement, AIS must show (1) it owns a valid, protectable mark, and (2) eBay's use of its mark is likely to cause confusion. As to the first issue, there are three ways to show a protectable interest in a mark:

(1) it has a federally registered mark in goods or services; (2) its mark is descriptive but has acquired a secondary meaning in the market; or (3) it has a suggestive mark, which is inherently distinctive and protectable.

Here, AIS had a federal registration, so (absent a successful attack by eBay on the registration, which was precluded on summary judgment by the presence of factual issues), it met the requirement of a protectable mark. In ruling to the contrary, the court noted that while a "registered trademark holder’s protectable interest is limited to those goods or services described in its registration," "the scope of validity and the scope of relief for infringement are not coextensive." The owner of a registered mark is not limited in an infringement action to pursuing only infringers who use the mark on goods or services listed in the registration. While the relatedness of the goods or services is a relevant factor, it is just that: a factor in determining infringement, not a requirement. As stated by the court:

In sum, a plaintiff trademark owner must establish a valid, protectable interest in order to proceed to the second prong of the trademark infringement analysis — the likelihood of confusion resulting from the defendant’s alleged infringing use. Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.

Here, however, AIS did not provide any evidence of likelihood of confusion in opposing eBay's summary judgment motion, and as a result, the court affirmed the summary judgment on those grounds, rather than the validity of AIS's mark.

To read the full decision in Applied Info. Scis. Corp. v. eBay, Inc., click here.

Vegas Trademark Attorney blogs about the case here.

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