Intellectual Property Law

Ninth Circuit Reverses Dismissal of Two Trademark Claims, Affirms One

By Michael Atkins

In Wyatt Technology Corporation v. Smithson, the plaintiff filed suit in the Central District of California alleging trademark claims and other business torts against the defendants arising out of the bankruptcy of the Proterion Corporation. The Central District of California dismissed three of Wyatt’s trademark claims on summary judgment. On Aug. 27, the Ninth Circuit reversed and remanded dismissal of two of the three trademark claims and affirmed dismissal of one.

The opinion doesn’t provide much additional background; the court just gets to the point:

“Wyatt’s trademark claims concerning domain names could have been brought under either the Lanham Act or the Anticybersquatting Protection Act. Wyatt brought suit only under the former, so it must show a use of the mark in connection with the sale of goods. Linking to commercial business qualifies. The district court’s contrary ruling constitutes legal error. The district court also erred in finding there was no material factual dispute as to the ownership of the domain names in light of Proterion’s reimbursement to Smithson for their purchase. On remand, the district court should determine the ownership of the domain names and, applying the correct legal standard, should consider whether Viscotek’s former use of them created a likelihood of confusion. The likelihood of confusion test requires examination of eight factors.

“The district court also erred in finding that Smithson’s use of Wyatt’s purported trademarks in Viscotek’s sales literature and brochures constitute nominative fair use without determining whether Smithson engaged in any conduct which ‘would, in conjunction with’ its use of ‘the mark, suggest sponsorship or endorsement by the trademark holder.’ On remand, the district court should apply the full required analysis.

“Finally, the district court did not err in dismissing Wyatt’s Lanham Act § 43(a) claim. Wyatt failed to point to any evidence in its opposition to summary judgment indicating the website statement at issue’s falsity or tendency to deceive.”

The case cite is Wyatt Technology Corp. v. Smithson, 2009 WL 2700319, No. 06-56470 (9th Cir. Aug. 27, 2009).

Full post as published by Seattle Trademark Lawyer on September 03, 2009 (boomark / email).