“SmartSearch” = Dumb Trademark — Applied Information Sciences v. eBay

By Eric Goldman

Applied Information Sciences Corp. v. eBay, Inc., 2007 WL 4553999 (9th Cir. Dec. 28, 2007)

This is not an earth-shattering case, but it’s a nice example of a worthless trademark enforcement action and a refreshing example of the Ninth Circuit not being flummoxed by an Internet trademark case.

AIS registered a trademark in the term “SmartSearch” in 1998 (application filed in 1994) for “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.” This sounds like some modem-based product. Whatever it was, it went defunct in 2004.

Starting in 2000, eBay described its advanced search option page using the term “Smart Search.” (It now appears to use the more conventional “advanced search” label). On its face, this looks like a textbook example of descriptive fair use, but the Ninth Circuit opinion doesn’t mention the doctrine at all. instead, the district court ruled that AIS didn’t have any protectable rights in the term because the trademark description did not extend to eBay’s type of usage. The district court’s rationale is a little confusing because it conflates two separate inquiries: validity of the TM and the scope of the rights. The Ninth Circuit correctly notes this conflation and holds that AIS had a valid TM (as evidenced by the federal registration). Nevertheless, the Ninth Circuit affirms the dismissal because AIS failed to produce evidence of a likelihood of consumer confusion.

Since it was in court anyway, eBay tried to get attorney’s fees under the Lanham Act fee shifting provision. The court correctly says this case isn’t exceptional enough to warrant fee-shifting. Too bad; it would have been a fitting cap to a lawsuit that didn’t look too smart from inception.

UPDATE: Michael Atkins is on the case too.

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