SW Legal studies in Business

Infringement of Mark Requires Showing of Confusion in the Market

Appeals court held that while a trademark holder had a valid mark, it had no basis for damages against a user of the mark since the mark owner failed to provide evidence of confusion in the market.

Topic Intellectual Property
Key Words

Trademark; Infringement; Confusion; Lanham Act

C A S E   S U M M A R Y

AIS produces specialized software. In 1994 it applied to register the trademark “SmartSearch.” In 1998, the Trademark Office issued AIS a registration for the mark on “computer software and instruction manuals sold together which allow the user to retrieve information from on-line services.” AIS marketed SmartSearch products. In 2000, eBay began to use an icon called “Smart Search” on its website that took users to advanced search options. In 2001, AIS asked eBay to pay a license fee or stop using the mark. It refused and AIS sued. The district court granted summary judgment in favor of eBay and awarded it court costs against AIS; AIS appealed.


Affirmed. AIS made a prima facie showing under the Lanham Act that it held a valid, protectable interest in “SmartSearch.” Registration of the mark is prima facie evidence of the validity of the mark and the registrant’s right to use the mark. To prove infringement of “SmartSearch” under the Lanham Act, AIS has to produce evidence tending to show the likelihood of confusion due to eBay’s use of the phrase “Smart Search.” AIS did not show confusion between the marks, so AIS has no suit against eBay.

Citation Applied Information Sciences Corp. v. eBay, Inc., 511 F.3d 966 (9th Cir., 2007)

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