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Ohio District Court Intelligently Finds No “Use in Commerce” for INTELLIJET Mark

NetJets is a private aviation company that offers a number of services including fractional ownership of jet aircraft, jet lease management and jet charter services.  In the 1990s, NetJets developed its own proprietary software called “IntelliJet” as an operational management tool.  NetJets began highlighting features of the IntelliJet software in its public promotions for the purpose of distinguishing its core services from the competition.  Originally the software was only used internally by NetJets employees and IT staff, but NetJets eventually expanded access to the software, allowing customers to use the tool to make flight reservations and the like.  In 1996, the company obtained a trademark registration for its INTELLIJET mark covering the goods of “computer software for managing aircraft leasing and sales.”

NetJets later became aware of another company called IntelliJet International, which had offered aircraft brokerage services since 2005, but had recently expanded its operations into aircraft leasing and management services.  Concerned by the use of “IntelliJet” by this other company, NetJets sued IntelliJet International for trademark infringement.  In response, IntelliJet International sought to cancel NetJets’ trademark registration based on the theory that either the mark had been abandoned for non-use or that the registration was void ab initio because the trademark was not in use in commerce as of the date claimed in the registration.

The crux of this case was whether NetJets “used” the INTELLIJET mark “in commerce,” an important requirement for granting trademark protection.  Under U.S. Trademark Law, only certain applications of a trademark will give rise to rights in the mark.  For goods, such as the software in this case, the mark generally must be affixed to the product, its packaging, or on a display associated with the sale of the goods.  Moreover, a mark is deemed to be “in use” on goods only when those goods are “sold or transported in commerce.” 

In NetJets Inc. v. IntelliJet Group, LLC, the U.S. District Court for the Southern District of Ohio determined that NetJets had not made appropriate “use” of the INTELLIJET mark in connection with software such that it should be afforded trademark rights.  As the court explained, the software at issue “is simply the conduit through which NetJets provides its services, not a standalone product offered by the company.  Customers cannot purchase the software separately; instead, it is a “tool” the company uses “to provide a high level of services to its customers.”  Although NetJets invested heavily in developing the IntelliJet software, promoted its functionality to its customers, and relied on it as an important and proprietary portion of its business, the court granted the defendant’s motion for summary judgment with respect to the trademark infringement claim. 

This case should serve as a reminder to businesses to make sure that their important brands are appropriately “used” for trademark protection purposes.  If a mark (especially one subject to federal registration) is not “used” correctly, it can be vulnerable to attack.  Less obvious, but just as important, is the need to correctly identify the goods and/or services to be covered by a trademark registration.  Had NetJets’ trademark registration covered the services of managing aircraft leasing and sales rather than covering only the software used for that purpose, it would have been less susceptible to the potent defense it faced in this case.

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