perfumebay.com, Inc. v. Ebay Inc.

I. BACKGROUND

Between 1998 and 1999, Jacquelyn Tran (Tran), the presi- dent and owner of Perfumebay, decided to sell perfume on the internet. Tran developed several web sites, including per- fumebay.com. For her business, Tran utilized both conjoined and non-conjoined forms of “perfumebay,” including Per- fumeBay and Perfume Bay.

When Perfumebay applied for a trademark for its Perfume Bay mark, eBay filed an opposition with the United States Patent and Trademark Office. Perfumebay and eBay then entered into negotiations concerning a potential name change by Perfumebay. eBay and Perfumebay stipulated to a suspen- sion of the trademark opposition proceedings pending the result of the settlement negotiations.

When the parties failed to reach a settlement, Perfumebay filed a complaint in federal district court seeking declaratory judgment that its various marks did not infringe on eBay’s mark or otherwise violate the Lanham Act. A bench trial was held on the parties’ various claims.

During the bench trial, Gary Briggs (Briggs), an employee of PayPal, an eBay subsidiary, testified on eBay’s behalf. Briggs described eBay’s operations as “a marketplace.” eBay does not have…