[A] plaintiff must show that it has actually used the designation at issue as a trademark; thus the designation or phrase must be used to "perform" the trademark function of identifying the source of the merchandise to the customers.
MicroStrategy Inc. v. Motorola, Inc.
Defendant Motorola intended to use a new trademark of "Intelligence Everywhere." Its searches found this to be unused by others and they purchased rights to it from the owner of the intelligenceeverywhere.com domain name. Defendant applied with the USPTO to register it and registered the domain name. Shortly thereafter, plaintiff notified defendant that it had been using the mark since 1998 and that it had common law protection, which defendant would be infringing upon. Defendant disagreed and continued to use it. Plaintiff then filed for its trademark itself and filed suit against defendant.
District court denied plaintiff's motion for a preliminary injunction to stop defendant's use of the mark and concluded that plaintiff did not use the term to identify it as a source of goods or services.
Did plaintiff use the term to identify itself as a source of goods or services?
Plaintiff produced 24 unique documents where they used the term "Intelligence Everywhere," but the phrase was used inconsistently and not distinguished from the rest of the text. It was placed at different places on different pages. It was usually in the middle of text. Nothing about the phrase made it readily recognizable.
No, plaintiff did not use the term to identify it as a source of goods or services. Affirmed.
: While plaintiff did not use the mark consistently everywhere, it was used consistently with its "Broadcaster" software. There, it is on the user manual in prominent, highlighted text. It is also on plaintiff's business cards in capital letters with the TM signal next to it. Either of these is enough to establish it as an adopted mark. With this element established, plaintiff would prevail on the others.
It cannot be said to be descriptive rather than suggestive, as it does not communicate any information about plaintiff or its products. It requires imagination to connect the meaning to them, as a suggestive mark requires. Therefore it should be reversed and remanded.