NetJets Inc. v. IntelliJet Group, LLC
678 F. App'x 343
| 6th Cir. | 2017Background
- NetJets developed and registered the trademark INTELLIJET in 1995 for software used to manage its aircraft-leasing/sales business; registration issued on the Principal Register and a 2002 declaration of use was filed.
- NetJets licenses the IntelliJet software to third parties and uses it internally and via a public "owner's portal" (login page) that displays the mark.
- IntelliJet Group (founded 2005) is an aircraft broker that adopted the name "IntelliJet" knowing of NetJets’s registration; it does not sell the software.
- NetJets sued for Lanham Act and Ohio common-law trademark claims; IntelliJet Group counterclaimed to cancel NetJets’s registration as void ab initio for non-use at time of registration.
- The district court granted summary judgment to IntelliJet Group on multiple grounds (void ab initio, no service-mark rights, no likelihood of confusion); the Sixth Circuit reverses in part (void-ab-initio cancellation barred) and affirms as to other rulings, remanding on abandonment issue.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether a void‑ab‑initio (non‑use at registration) challenge to a >5‑year Principal Register mark is permitted | NetJets: registration is valid; challenges must follow §1064 limits | IntelliJet: mark was never used in commerce at registration and is void ab initio | Court: §1064 bars void‑ab‑initio cancellation of a >5‑year Principal Register registration; reverse district court on this counterclaim |
| Whether NetJets’s INTELLIJET mark is incontestable under §1065 | NetJets: mark used in commerce and may be incontestable | IntelliJet: internal use insufficient for incontestability; not limited to §1115(b) defenses | Court: did not decide incontestability because §1064 bars the non‑use attack; remanded on abandonment question |
| Whether INTELLIJET is a service mark under Ohio common law | NetJets: mark identifies and distinguishes its aviation services | IntelliJet: mark identifies software product (good), not the aviation service | Court: mark identifies software (a good), not a service mark for aviation; affirm for defendant |
| Whether there is a likelihood of consumer confusion between NetJets and IntelliJet Group | NetJets: marks are similar and some factors favor confusion | IntelliJet: markets, customers, and channels differ; no actual confusion; sophisticated purchasers | Court: applied Frisch factors; overall no likelihood of confusion; affirm for defendant |
Key Cases Cited
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (Sup. Ct. 1986) (summary judgment standard review)
- Celotex Corp. v. Catrett, 477 U.S. 317 (Sup. Ct. 1986) (movant’s burden on summary judgment)
- Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (Sup. Ct. 1986) (genuine issue of material fact standard)
- Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) (likelihood‑of‑confusion analysis)
- Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998) (false designation of origin standard)
- Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th Cir. 2002) (Lanham Act and state law unfair competition overlap)
- Sovereign Order of Saint John of Jerusalem, Inc. v. Grady, 119 F.3d 1236 (6th Cir. 1997) (incontestability and limited defenses)
- Shakespeare Co. v. Silstar Corp. of America, Inc., 9 F.3d 1091 (4th Cir. 1993) (limits on grounds for cancellation under §1064)
- Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (Sup. Ct. 1985) (court cancellation authority subject to incontestability provisions)
- Wilhelm Pudenz, GmbH v. Littlefuse Inc., 177 F.3d 1204 (11th Cir. 1999) (functionality defense discussion to incontestable marks)
- Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) (void‑ab‑initio discussion for Supplemental Register marks)
- Nasalok Coating Corp. v. Nylok Corp., 522 F.3d 1320 (Fed. Cir. 2008) (preclusion and TTAB interplay)
- Champions Golf Club, Inc. v. The Champions Golf Club, Inc., 78 F.3d 1111 (6th Cir. 1996) (mark distinctiveness categories)
- Maker’s Mark Distillery, Inc. v. Diageo N. Am. Inc., 679 F.3d 410 (6th Cir. 2012) (commercial strength of mark)
- Frisch’s Restaurants, Inc. v. Shoney’s, Inc., 759 F.2d 1261 (6th Cir. 1985) (Frisch factors for likelihood of confusion)
- Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988) (actual confusion and relatedness analysis)
- Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (relatedness and marketing channels in confusion analysis)