Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, 7 U.S.P.Q.2d (BNA) 1672 (6th Cir. 1998) (full-text).
Factual Background Edit
Data Concepts, Inc. (“Data Concepts”), registrant of the “dci.com” domain name, appealed from a grant of summary judgment in the district court in favor of Digital Consulting, Inc. (“Digital Consulting”), owner of the federally registered trademark DCI.
Trial Court Proceedings Edit
The district court determined that Data Concepts’s use of the “dci.com” domain name infringed Digital Consulting’s trademark rights in the mark DCI and permanently enjoined Data Concepts from use of the domain name. Data Concepts had obtained the domain name in 1993, six years after Digital Consulting’s federal trademark registration for DCI issued in 1987.
Appellate Court Proceedings Edit
On appeal, Data Concepts claimed that the district court erred in granting summary judgment for Digital Consulting because Data Concepts was actually the senior user of the DCI mark by virtue of its use of a highly stylized logo allegedly comprised of the letters “d,” “c,” and “i” since 1982. Data Concepts argued that it should be able to “tack” its use of the stylized logo from 1982 to 1993 onto its use of the “dci.com” domain name since 1993 so that it was the prior user of the DCI mark. The Sixth Circuit disagreed, finding that the stylized mark was not the “legal equivalent” of DCI, the prime requirement for a tacking claim. Data Concepts could not tack that use to its later use of DCI because the two marks differed in appearance and thus failed to create the same continuing commercial impression.
With respect to the district court’s finding of infringement, the Sixth Circuit found flaws in the lower court’s analysis of many of the likelihood of confusion factors. The Sixth Circuit thus reversed the grant of summary judgment on Digital Consulting’s infringement claim and remanded the case to the district court.
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