602 F. App'x 242
6th Cir.2015Background
- NetJets developed internal management software named IntelliJet in 1995, registered the INTELLIJET trademark for software, and filed a declaration of use in 2002. Columbia Insurance holds NetJets’ IP and licenses its use back to NetJets.
- IntelliJet Group LLC began operating (as IntelliJet International) in 2005 as a private-jet broker and later used the INTELLIJET name; it sought cancellation of NetJets’ registration for abandonment and moved for summary judgment.
- NetJets and Columbia sued IntelliJet Group for Lanham Act trademark infringement, false designation of origin, Ohio deceptive trade practices, and common-law unfair competition; IntelliJet counterclaimed to cancel the registration for abandonment.
- The district court granted summary judgment to IntelliJet Group, finding NetJets abandoned the mark through nonuse, cancelled the registration, and entered judgment for IntelliJet Group, mooting other claims by agreement.
- On appeal, the Sixth Circuit found the district court overlooked factual disputes about NetJets’ sales/licenses of IntelliJet software to third parties (Marquis Jet Partners and National Private Air Transport Services), which could support bona fide use in commerce and defeat abandonment.
- Because the abandonment ruling resolved the case, the Sixth Circuit reversed and remanded for the district court to reconsider abandonment and other unresolved ownership and likelihood-of-confusion issues.
Issues
| Issue | Plaintiff's Argument (NetJets/Columbia) | Defendant's Argument (IntelliJet Group) | Held |
|---|---|---|---|
| Whether NetJets abandoned the INTELLIJET mark | NetJets continuously used and licensed the software (e.g., to Marquis and National Private Air) — bona fide use in ordinary course | NetJets did not use the mark in commerce for software sales separate from plane services; use was insufficient/token | Reversed: disputes over third-party licenses create factual issues for a jury on bona fide use/abandonment |
| Whether registration should be cancelled for abandonment | Registration valid due to ongoing software use and incontestable declaration | Registration should be cancelled because use was discontinued or only internal/ancillary to services | Reversed: summary judgment cancellation improper given factual disputes |
| Whether Lanham Act claims fail because no protectable interest exists | NetJets owns registered and possibly unregistered rights in INTELLIJET for software and perhaps services | IntelliJet Group: NetJets has no enforceable trademark interest due to abandonment | Remanded: district court must readdress ownership and whether an unregistered interest exists for services |
| Whether IntelliJet Group’s use creates likelihood of confusion | NetJets: IntelliJet Group’s use risks confusion, especially for software buyers | IntelliJet Group: no likelihood because NetJets abounded mark and uses differ | Remanded: district court to decide likelihood-of-confusion after resolving ownership/abandonment |
Key Cases Cited
- V & M Star Steel v. Centimark Corp., 678 F.3d 459 (6th Cir. 2012) (summary-judgment standard review de novo)
- Anderson v. Liberty Lobby, 477 U.S. 242 (1986) (standard for assessing genuine issues at summary judgment)
- Allard Enters., Inc. v. Advanced Programming Res., Inc., 146 F.3d 350 (6th Cir. 1998) (bona fide use and token-use doctrine)
- Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012) (industry-specific ordinary-course-of-trade standard for trademark use)
- Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006) (examples of bona fide use in niche or infrequent-sale markets)
- Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (same analysis for state unfair-competition claims and the Lanham Act)