IP News

In Perfumebay.com Inc. v. eBay Inc., 2007 WL 3243998, No. 05-56794 (9th Cir., 2007), the U.S. Court of Appeals for the Ninth Circuit agreed with the district court's decision that the conjoined forms of 'perfumebay' [perfumebay and PerfumeBay] created a likelihood of consumer confusion with the eBay mark and affirmed the permanent injunction preventing Perfumebay.com from using the infringing marks. The court also affirmed the district court's decision that the non-conjoined form of Perfumebay's mark [Perfume Bay] did not create a likelihood of confusion, but reversed the district court's decision that Perfumebay's marks did not produce a likelihood of dilution.

Jacquelyn Tran, president and owner of Perfumebay, began selling perfume on the Internet, including on eBay's Web site, in the late 1990s. She used both the conjoined and non-conjoined forms of 'perfumebay.' Tran also sells perfume on five other Web sites, including Perfumes.com, Scentguru.com, and PerfumeShop. com. She attempted to apply for a trademark for the 'perfumebay' mark, but eBay filed an opposition with the U.S. Patent and Trademark Office. After the parties failed to negotiate a settlement, Perfumebay sought a declaratory judgment that its various marks did not infringe eBay's mark. The district court held that the conjoined forms of 'perfumebay' created a likelihood of confusion and permanently enjoined Perfumebay from using 'PerfumeBay' as a single word. The district court, however, found that the non-conjoined forms of 'Perfume Bay' did not create a likelihood of confusion and also held that the Perfumebay marks did not produce a likelihood of dilution.