Applied Infromation v. Ebay Inc

I. Background

AIS is a vendor of specialized software. In 1994, AIS applied to register a trademark, “SmartSearch,” and in 1998, APPLIED INFORMATION SCIENCES v. EBAY, INC. 16873 the United States Patent and Trademark Office issued AIS a registration for use of the mark on “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, com- puters and electronics, education, law, medicine and bio- sciences, news, science and technology, social sciences and humanities.” AIS asserts that it marketed SmartSearch prod- ucts from 1995 to 2004.

AIS alleges that in 2000, eBay began using the Smart- Search mark without AIS’s consent in violation of federal trademark and California unfair competition laws. eBay — a commercial website providing online auction services to Internet users — displayed the words “Smart Search” as a link on its homepage; clicking this link would take a user to a sep- arate page with advanced search options. Late in 2001, AIS contacted eBay, requesting that it either pay a license fee or stop using the mark. eBay…