URL: http://www.ca9.uscourts.gov/ca9/newopinions.nsf/85AEE84897725D758825738A005C180E/$file/0556794.pdf
Court:
UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
Overview:
In this case the court must decide whether various forms of the mark "Perfumebay" infringe upon the trademark "eBay". “Perfumebay†challenges the courts decision that the conjoined terms “perfumebay†and “PerfumeBay†cause likelihood of consumer confusion under the Lanham Act with respect to the mark “eBayâ€. It also believes that the court did not reach the right decision when granting injunction in favor of eBay and prohibiting Perfumebay from using the names in question. eBay counterclaims that the court erred in not taking a look at its argument for dilution and also not allowing Perfumebay to use the non conjoined variants of the name.
Background:
Between 1998 and 1999 Jacquelyn Tran, president and owner of Perfumebay decided to sell perfumes via the Internet. The decision was made to use both the conjoined and non conjoined variants of the name. When Perfumebay requested a trademark of its names eBay filed an opposition indicating that the mark Perfumebay and its variants was infringing on eBay's mark. When negotiations to have Perfumebay change their name failed, Perfumebay filed suit indicating that their mark did not infringe on eBay's mark or violate the Lanham Act. eBay argued that the similarity of the names would cause customer confusion, it further argued that placing a space would be of no avail as the Internet does not allow for the creation of names using spaces. Customer interviews indicated that the word bay associated with any other term brought forth visions of eBay, Tran's argument for using the word bay was to see a port full of ships carrying perfumes.
Discussion:
The court chose to use the standard 8 part Sleekcraft factors to discern if actual confusion would occur. The Sleekcraft factors consist of the following: (1) the strength of the mark; (2) proximity or relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the marketing channels used; (6) the degree of care customers are likely to exercise in purchasing the goods; (7) the defendant’s intent in selecting the mark; and (8) the likelihood of expansion into other markets.
The court feels it must use 3 of the above 8 when discerning infringement and confusion. The similarity of the marks, the relatedness of the goods and services, and the parties’ simultaneous use of the Web as a marketing channel are the 3 most important factors.
In exploring the similarity of the marks the court brought forth the classic Brookfield Communications v. West Coast Entertainment case, the mark Perfumebay uses eBay in its entirety and given that eBay is a very strong mark this factor would favor eBay over Perfumebay. The other two factors also go against Perfumebay. Both entities sell perfumes, although one can argue that eBay sells other things as well. Both parties also use the Web as a marketing tool and perform their primary business through it. Given this, the court felt that there was enough evidence to indicate there would be likelihood of customer confusion. Perfumebay correctly argued that eBay had failed to prove actual confusion. But, the court ruled that actual confusion is often hard to prove and requires further research and hence should not be used as an argument against infringement.
The court also explored the dilution claims and felt that eBay had invested time and finance in creating a mark that is famous. Perfumebay's use of the eBay mark in its name is grounds for dilution, eBay as a mark has been around longer and is much more famous and as a result eBay does have grounds to claim dilution. The court also ruled that the non conjoined variants of the name Perfumebay do not infringe, the reason for this is the term "bay" is now no longer associated with eBay and can be used freely.
Conclusion:
The final conclusion is that the district court did not err when finding that the conjoined terms would clearly create consumer confusion. The district court also did not err in finding that the non conjoined variants would not create likelihood of confusion. The district court did err in finding that Perfumebay's mark did not create dilution as the marks are similar. The court also erred in finding that eBay acted with unclean hands as there wasn't enough evident to prove the intent for deception. The court also did not abuse its powers by not allowing Perfumebay to claim attorney fees and was also correct in rejecting eBay's breach of contract claims.
Court:
UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT
Overview:
In this case the court must decide whether various forms of the mark "Perfumebay" infringe upon the trademark "eBay". “Perfumebay†challenges the courts decision that the conjoined terms “perfumebay†and “PerfumeBay†cause likelihood of consumer confusion under the Lanham Act with respect to the mark “eBayâ€. It also believes that the court did not reach the right decision when granting injunction in favor of eBay and prohibiting Perfumebay from using the names in question. eBay counterclaims that the court erred in not taking a look at its argument for dilution and also not allowing Perfumebay to use the non conjoined variants of the name.
Background:
Between 1998 and 1999 Jacquelyn Tran, president and owner of Perfumebay decided to sell perfumes via the Internet. The decision was made to use both the conjoined and non conjoined variants of the name. When Perfumebay requested a trademark of its names eBay filed an opposition indicating that the mark Perfumebay and its variants was infringing on eBay's mark. When negotiations to have Perfumebay change their name failed, Perfumebay filed suit indicating that their mark did not infringe on eBay's mark or violate the Lanham Act. eBay argued that the similarity of the names would cause customer confusion, it further argued that placing a space would be of no avail as the Internet does not allow for the creation of names using spaces. Customer interviews indicated that the word bay associated with any other term brought forth visions of eBay, Tran's argument for using the word bay was to see a port full of ships carrying perfumes.
Discussion:
The court chose to use the standard 8 part Sleekcraft factors to discern if actual confusion would occur. The Sleekcraft factors consist of the following: (1) the strength of the mark; (2) proximity or relatedness of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the marketing channels used; (6) the degree of care customers are likely to exercise in purchasing the goods; (7) the defendant’s intent in selecting the mark; and (8) the likelihood of expansion into other markets.
The court feels it must use 3 of the above 8 when discerning infringement and confusion. The similarity of the marks, the relatedness of the goods and services, and the parties’ simultaneous use of the Web as a marketing channel are the 3 most important factors.
In exploring the similarity of the marks the court brought forth the classic Brookfield Communications v. West Coast Entertainment case, the mark Perfumebay uses eBay in its entirety and given that eBay is a very strong mark this factor would favor eBay over Perfumebay. The other two factors also go against Perfumebay. Both entities sell perfumes, although one can argue that eBay sells other things as well. Both parties also use the Web as a marketing tool and perform their primary business through it. Given this, the court felt that there was enough evidence to indicate there would be likelihood of customer confusion. Perfumebay correctly argued that eBay had failed to prove actual confusion. But, the court ruled that actual confusion is often hard to prove and requires further research and hence should not be used as an argument against infringement.
The court also explored the dilution claims and felt that eBay had invested time and finance in creating a mark that is famous. Perfumebay's use of the eBay mark in its name is grounds for dilution, eBay as a mark has been around longer and is much more famous and as a result eBay does have grounds to claim dilution. The court also ruled that the non conjoined variants of the name Perfumebay do not infringe, the reason for this is the term "bay" is now no longer associated with eBay and can be used freely.
Conclusion:
The final conclusion is that the district court did not err when finding that the conjoined terms would clearly create consumer confusion. The district court also did not err in finding that the non conjoined variants would not create likelihood of confusion. The district court did err in finding that Perfumebay's mark did not create dilution as the marks are similar. The court also erred in finding that eBay acted with unclean hands as there wasn't enough evident to prove the intent for deception. The court also did not abuse its powers by not allowing Perfumebay to claim attorney fees and was also correct in rejecting eBay's breach of contract claims.