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An attempt by MicroStrategy Inc. to obtain injunctive relief in a dispute with Motorola Inc. over use of the trademarked phrase “Intelligence Everywhere” was again denied March 28 ( MicroStrategy Inc. v. Motorola Inc., No. 01-1289, 4th Cir.). Affirming an earlier decision by the U.S. District Court for the Eastern District of Virginia, 4th U.S. Circuit Court of Appeals Judges Diana Motz and Roger Gregory held that Motorola should not be enjoined from use of the phrase, including in the domain form of intelligenceeverywhere.com, while awaiting trial because MicroStrategy failed to prove the mark to be valid and protectable. PRODUCT BRAND NAME In August 2000, Motorola met with three advertising agencies to develop a name for a new brand of products; Ogilvey & Mather proposed “Intelligence Everywhere” and represented to Motorola that a trademark search revealed no conflicting use of the phrase, according to the decision. Several months later, during a meeting with in-house counsel, Motorola learned that a Canadian company, Cel Corp., had registered the domain intelligenceeverywhere.com. Shortly thereafter, Motorola obtained the rights from Cel and in October 2000 registered the domain with Network Solutions Inc. and filed an intent-to-use application with the U.S. Patent and Trademark Office. In January 2001, MicroStrategy notified Motorola that it had been using “Intelligence Everywhere” since 1998 and that the phrase had common law protection. In February, the communications software producer sued alleging trademark infringement, dilution and cybersquatting. BLACKWELDER FACTORS In examining the likelihood of irreparable harm, the Fourth Circuit held that both parties’ arguments “present two sides of the same coin” in that MicroStrategy and Motorola claim superior rights to “Intelligence Everywhere” as a mark. Lacking a decided imbalance for MicroStrategy, the panel wrote that “in fact, it well may be that Motorola has demonstrated that it will suffer more from a grant of an injunction than MicroStrategy will from its denial.” On the issue of MicroStrategy’s likelihood of success, the panel was equally skeptical. Agreeing with the District Court that MicroStrategy failed to prove usage of the mark to identify goods or services, the Fourth Circuit cited the infrequency and seeming randomness with which MicroStrategy made mention of “Intelligence Everywhere.” MicroStrategy’s assertion of using the phrase on its business card as the company “mission” is insufficient, the decision held, because the company did not demonstrate that the phrase was used to identify and distinguish the source of its products or services and was thus not protectable or registrable as a trademark. DISSENTING OPINION Affirming the lower court’s denial of injunctive relief, the panel found no evidence of MicroStrategy’s trademark ownership. “MicroStrategy has at this juncture utterly failed to provide a basis for a court to find the probability of its trademark usage, let alone trademark infringement by Motorola. Rather, MicroStrategy has presented a record of limited, sporadic, and inconsistent use of the phrase “Intelligence Everywhere.” Obviously, this does not constitute a “clear and strong case” of likelihood of success on the merits,” Judges Motz and Gregory held. In a dissenting opinion, Judge Paul V. Niemeyer wrote that to deny MicroStrategy a preliminary injunction would “seriously undermine … if not permanently destroy” MicroStrategy’s rights to the mark because of a planned advertising campaign by Motorola that would use the phrase “in a contiguous, complimentary product market.” “Because the balance of hardships so clearly favors MicroStrategy, the principles of equity suggest that we enter a preliminary injunction to prohibit Motorola’s use of its junior mark ‘Intelligence Everywhere’ until a trial can be held to determine whether MicroStrategy has a valid, senior interest in the mark,” Judge Niemeyer stated. MicroStrategy is represented by Carter G. Phillips of Sidley & Austin in Washington, D.C. Edward W. Warren of Kirkland & Ellis in Washington represents Motorola. �; Copyright 2001 Mealey Publications, Inc.

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