Intellectual Property Law

Ninth Circuit clarifies differences between proof of protectable trademark and proof of infringement

By McKee, Voorhees & Sease, P.L.C.

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.

More detail of Applied Info. Scis. Corp. v. eBay, Inc. after the jump.

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Full post as published by FileWrapper on December 31, 2007 (boomark / email).