Likelihood of Confusion Analysis Is Not Limited to the Goods or Services for Which Mark Was Registered

Case: Applied Information Sciences v. eBay, No. 05-56123, 05-56549 (9th Cir. Dec. 28, 2007)

The One Sentence Summary: In a trademark infringement claim, plaintiff can establish a protectable interest by showing it has a registered mark, but the likelihood of confusion analysis is not limited to the goods or services in which the mark was registered.


What They Were Fighting About: Plaintiff Applied Information Science had a registered mark for SMART SEARCH for computer software, and sued eBay for using the term for web search. The district court granted summary judgment for eBay.

Ninth Circuit Holdings:

• Plaintiff's federally registered mark for Smart Search established a protectable interest in the goods and services listed on its registration.
• The scope of validity of the mark is limited to the goods and services registered, but an infringement analysis can extend to any goods and services where confusion is likely to result.
  
• The district court erred in granting summary judgment for eBay on the theory that plaintiff's registered uses were different from eBay's uses. However, summary judgment was affirmed because plaintiff had not presented any admissible evidence of likelihood of confusion in opposing summary judgment.
• The district court did not err in denying attorneys' fees to eBay - the case was not exceptional and not vexatious.