Trademark Law Briefs

2007 US App LEXIS 29871 (9^th Cir 2007).  Decided December 28, 2007

Ruling: A trademark registration is prima facie evidence of the validity of a trademark and whether defendant has used the mark on the goods specified in the registration is irrelevant in establishing Plaintiff’s protectable interest.  If there is a protectable interest, the next question is whether Defendant’s use of the mark creates a likelihood of confusion. Procedural History: Plaintiff sued for trademark infringement.  The district court granted summary judgment in favor of Defendant.  Plaintiff appealed.  The appellate court disagreed with the district court’s application of law, but affirmed summary judgment on other grounds.Factual Background: Plaintiff registered the mark “SmartSearch” for certain computer related search functions (“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… “[etc.]).  Defendant used the term “Smart Search” for a hyperlink leading to an advanced search form for its online auction.  Plaintiff sued for trademark infringement.  The district court granted summary judgment on the grounds that Plaintiff did not have a valid protected interest in the mark because it did not show that Defendant had used the mark on the goods covered by Plaintiff’s registration.Legal Analysis: The district court confused validity of interest in a mark with the likelihood of confusion analysis.  Registration alone is prima facie evidence of the validity of the mark which Defendant must affirmatively rebut, for instance, by showing the mark should not have been registered.  While a Plaintiff’s protectable interest is limited to the goods listed in the registration, the scope of relief for infringement is not so bound.  Any use of the mark on any goods that is likely to cause confusion is infringement.  However, Plaintiff failed to show any evidence of likelihood of confusion in its response to Defendant’s motion for summary judgment and the appellate court affirmed on this ground.Players:
Plaintiff/Appellant: Applied Information Sciences Corp.,  a California corporation
Counsel: Joanna M. Esty, Angela C. Agrusa, Wendy E. Lane, Liner Yankelevitz Sunshine & Regenstreif LLP (Los Angeles)Defendant/Appellee: EBAY, Inc. a Delaware corporation
Counsel: Michael T. Zeller, Daniel H. Bromberg, Patrick C. McGannon, Elizabeth B. Wydra, Quinn Emanuel Urquhart Oliver & Hedges, LLP (Los Angeles)

Judge: Raymond C. Fisher (opinion), Richard R. Clifton, and Jeremy D. Fogel

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