Applied Information Sciences Corp. v. eBay, Inc.
Filed December 28, 2007
Cite as 05-56123

Proper Prong of Analysis in Establishing Trademark Infringement

The Applied Information Sciences Corp. (AIS) registered the trademark SMARTSEARCH in 1994 and obtained registration for this mark by the year 1998. According to the data of its registration, the mark is "for use on computer software and instructional manuals sold together, which allow the user to retrieve information" in the fields of humanities, social sciences, science and technology, news, medicine and biosciences, law, education, computers and electronics, chemistry, books, agriculture and nutrition, from online services via a phone-line.

From 1995 to 2004, the AIS sold products under the SmartSearch trademark.

Then, eBay, a website for online auction services, began using the SmartSearch mark as a hyperlink. AIS contacted eBay in 2001 with a request to take a license for the said mark or discontinue its use of the SmartSearch mark. The eBay refused this request.

In 2004, the AIS sued eBay on the grounds of trademark infringement. Both parties filed a motion for summary judgment in the District Court.

The ruling of the District Court favored the defendant, eBay's motion. The Court found that:

• The AIS' SmarSearch trademark registration has limited and particular use wherein, the District Court held did not include the eBay's use of the mark as a hyperlink.


• Because of this, AIS did not have a protectable interest in the mark in connection with eBay's goods and services.

AIS appealed this decision to the 9th Circuit Court of Appeals.

The 9th Circuit affirmed the district court's summary judgment in favor of eBay but on different grounds.

It noted that in order for the plaintiff to prevail on its claim of trademark infringement it must comply with the following:

1. Establish a valid, protectable interest in that mark.


2. Show the likelihood of confusion resulting from the defendant's alleged infringing use. Plaintiff must establish that the defendant's use of the mark may likely confuse the public as to the origin of the goods and services.

In analysis of AIS trademark:

• it has a federal registration


• It met the requirements given on having a protectable mark. However, the protectable interest of the registered trademark holder is limited to the products or services that are described in its registration.

However, since AIS did not provide any admissible evidence that tend to manifest the likelihood of confusion, in opposing the eBay's motion for summary judgment, at trial. Thus, there was no need for the 9th Circuit to decide on this matter.

It affirmed the district court's summary judgment on the said grounds rather than affirming the validity of the AIS' trademark.