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eBay Not Infringing SmartSearch Trademark

By Stephanie Robinson

In Applied Information Sciences Corp. v. eBay Inc., 511 F.3d 966 (9th Cir. 2007), the Ninth Circuit affirmed a district court decision awarding summary judgment to defendant eBay, Inc. (?eBay?) in a trademark infringement action brought by Applied Information Sciences Corp (?AIS?). AIS secured a trademark in 1998 for the phrase ?SmartSearch? 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 bio-sciences, news, science and technology, social sciences and humanities.? In 2000, eBay, an online auction website, used the phrase ?Smart Search? in a link on its homepage that took users to a separate page with advanced search options. AIS alleged that eBay?s use of the term ?Smarty Search? violated AIS? trademark. The United States District Court for the Central District of California disagreed and granted summary judgment in favor of eBay. AIS appealed. In order to prevail on its claim of trademark infringement, AIS was required to show that it has a valid, protectable trademark and that eBay's use of the mark is likely to cause confusion. The Ninth Circuit determined that the district incorrectly ruled that AIS lacked a protectable interest because eBay's use of SmartSearch fell outside the scope of goods and services on AIS's registration. Notwithstanding the district court?s faulty analysis, the Ninth Circuit affirmed the summary judgment because AIS failed to produce any admissible evidence to show a likelihood of confusion, or address any of the factors required for a likelihood of confusion analysis. If your business is involved in a trademark infringement dispute or you would like secure a trademark to protect your intellectual property, you should seek counsel with the ability to guide you through the trademark registration and defense process.

Full post as published by Business and Technology Law on February 19, 2008 (boomark / email).