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ARTICLE · 05 FEBRUARY 2008

Different Goods/Services Save eBay’s Day

McDermott Will & Emery
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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.

United StatesIntellectual Property
Paul Devinsky
Paul Devinsky
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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

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