Seattle Trademark Lawyer

The Ninth Circuit yesterday clarified what it takes for the owner of a federally registered trademark to succeed in an infringement action against another user of the mark in connection with goods or services that are different than those specified in the owner’s trademark registration.

Applied Information Sciences Corp. owns the registered trademark SMARTSEARCH for certain computer-related functions, and claimed that eBay, Inc. uses the same SMARTSEARCH mark for its Internet auction Web site, which AIS contended will cause confusion with its own SMARTSEARCH product. The Central District of California disagreed, and granted summary judgment to eBay.

The Ninth Circuit questioned the Central District’s reasoning, but affirmed the decision since AIS failed to produce any admissible evidence tending to show a likelihood of confusion. The Ninth Circuit found:

“[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.

“The district court here found that AIS’s registration was limited to ‘computer software and instruction manuals sold together which allow the user to retrieve information from online services via a phone line’ in various ‘fields.’ The district court, however, then concluded that because AIS’s federal registration did not include eBay’s use of the mark as ‘a hyperlink for its web-based trading service,’ AIS’s infringement action failed for lack of a protectable interest.”

This, the Ninth Circuit found, was based on a misreading of Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985):

“Our refusal to allow Levi Strauss to rely on its federal registration stemmed from the way in which Strauss pled its case. Strauss was attempting to extend its own use of its registered mark to goods not specified in its federal registration. Its federally registered trademark was limited to pants pocket tabs, but its trademark infringement claim was based on an alleged trademark in clothing pocket tabs generally. … Where, however, a plaintiff bases its trademark infringement claim upon the confusion the defendant’s use will create for the plaintiff’s use of its mark in connection with its own registered goods or services, that claim comes within the scope of its protectable interest.

“Here, AIS alleged infringment of a mark it used in connection with the kind of products specified in its federal registration: ‘computer software and instruction manuals sold together’ that allow users to retrieve information online. Whether or not eBay ever used the SmartSearch mark in connection with goods specified in AIS’s registration is irrelevant to the question of whether AIS established a valid, protectable interest. By virtue of its federal registration, AIS discharged its burden of establishing the validity of the SmartSearch mark in connection with those goods listed in the registration. Whether eBay’s use of SmartSearch infringed AIS’s protected interest then becomes a question of likelihood of confusion.”

The case cite is Applied Information Sciences Corp. v. eBay, Inc., Nos. 05-56123 and 05-56549, __ F.3d __, 2007 WL 4553999 (9th Cir. Dec. 28, 2007).