Andrew M. Gold on the Difference Between the Scope of Validity of a Trademark and the Scope of Relief for Infringement of a Trademark

Andrew M. Gold on the Difference Between the Scope of Validity of a Trademark and the Scope of Relief for Infringement of a Trademark


Plaintiff Applied Information Sciences Corp. ("AIS") holds a federally registered trademark in the term "SmartSearch" for certain computer related functions. Defendant, the internet auction website company eBay, Inc., uses the term "Smart Search" as a hyperlink on the company’s website. The District Court ruled that plaintiff was required to prove that defendant had used the mark on goods described in plaintiff's registration in order to satisfy the threshold showing of a valid, protectable interest in its mark. The District Court found that AIS did not have a protectable interest in the mark because eBay's use of the term "Smart Search" was outside the description of goods and services in AIS's trademark registration. The Ninth Circuit disagreed with the district court’s rationale, but agreed with the result. Discussing the Ninth Circuit’s decision, Andrew M. Gold writes:
 
     In analyzing a trademark holder’s rights, the Ninth Circuit differentiated between the scope of validity of a mark and the scope of relief for infringement. With respect to the validity of the mark, the Court noted that registration of a mark on the Principal Register constitutes prima facie evidence of the validity of the registered mark, and on [sic] the exclusive right of the registrant to use the mark on the goods and services specified in the registration. Since AIS held a federal registration of its mark, it made a prima facie showing that it held a valid, protectable interest in the use of its mark in connection with the goods and services listed in its registration.
 
     More importantly, the Court went on to note that “the scope of validity and the scope of relief for infringement are not co-extensive. Although the validity of a registered mark extends only to the listed goods or services, an owner’s remedies against confusion with its valid mark are not so circumscribed.” (emphasis in original). In other words, the recitation of goods and services in the registration limits the scope of the presumption of validity of a mark, but does not similarly limit the scope of possible infringement. Rather, the scope of relief for infringement can extend beyond the description of goods and services to any infringing mark whose use causes a likelihood of confusion.
 
     Once a party establishes that it has a protectable interest by proving it is the owner of a registered trademark, it does not have to then show that the allegedly infringing use involves the same goods or services listed in the registration. Rather, it must show only that the allegedly infringing use causes a likelihood of confusion with the registered mark. In other words, the scope of protection against infringement is broader than the scope of “validity” of the mark.
 
(citation omitted)