The U. S. Court of Appeals for the Ninth Circuit in affirming a summary judgment of non-infringement, has clarified that a federally registered mark cannot prevail against a party that used the same mark on good or services different from those specified in the registration unless it establishes a likelihood of a confusion. Applied Information Sciences v. eBay, Case No. 05-56123, -56549 (9th Cir., Dec. 28, 2007) (Fisher, J.).

The U. S. Patent and Trademark Office (USPTO) issued AIS a registration for the mark “SmartSearch” for use in connection with “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.” AIS marketed SmartSearch products.

In 2000, eBay began displaying the words “Smart Search” as a link on its homepage. Clicking this link would take a user to a page with advanced search options. AIS demanded that eBay either pay a license fee or stop using the term. eBay refused and a lawsuit followed. After both parties moved for summary judgment, the district court granted eBay’s motion on the ground that AIS does not have a valid, protected interest in the mark. AIS appealed.

AIS argued that on the basis of its federal registration alone, it established its rights in the “SmartSearch” mark. The Ninth Circuit agreed, noting that registration of a mark on the Principal Register constitutes prima facie evidence of the validity of the registered market and of AIS’ exclusive right to use the mark on the goods and services specified in the registration.

The Court went on to explain that AIS’s protectable interest is not limited to those goods or services described in its registration, noting that under 15 USC § 1114 the remedies available to a registration owner are not so strictly “circumscribed.” Rather, “a trademark owner may seek redress if another’s use of the mark on different goods or services is likely to cause confusion with the owner’s use of the mark in connection with its registered goods.”

In granting summary judgment for eBay, the district court relied upon the en banc 1985 Ninth Circuit decision in Levi Strauss & Co. v. Blue Bell for the proposition that AIS was required “to prove that eBay had used the SmartSearch mark on goods described in [AIS’s] registration” in order to make its threshold showing of a valid, protectable interest. The Ninth Circuit rejected this reading of the case, noting that in Levi Strauss, Strauss was attempting to extend its own use of its registered mark to goods not specified in its federal registration, i.e., from pants pocket tabs to clothing pocket tabs generally.

The Court explained that under a correct understanding of the Levi Strauss case, whether or not eBay ever used the SmartSearch mark in connection with the same goods on service specified in AIS’s registration is irrelevant to the question of whether AIS established a valid, protectable interest. The real issue is simply one of likelihood of confusion.

On that issue, the Ninth Circuit found that AIS failed to produce any admissible evidence tending to show a likelihood of confusion or even to address any of the Sleekcraft factors required for a likelihood of confusion analysis.