Internet Trademark Case Summaries

Gateway 2000, Inc. v. Gateway.com, Inc.

1997 U.S. Dist. LEXIS 2144 (E.D.N.C. Feb. 6, 1997).

Plaintiff, one of the largest manufacturers of personal computers, sued defendant, a small computer-consulting company, for trademark infringement, dilution, and unfair competition and sought to enjoin defendant from using the domain name “gateway.com.”  Defendant began using “gateway.com” as an e‑mail address in 1988 and registered it as a domain name in 1990.  Although plaintiff had registered GATEWAY 2000 as a trademark in 1993, it chose to rely on its common-law rights in the mark GATEWAY.  The court denied plaintiff’s request for a preliminary injunction, holding that plaintiff had not shown it was likely to succeed on the merits of either its dilution or infringement claims.  As to dilution, the court acknowledged that plaintiff’s mark was likely famous within the meaning of the FTDA but determined that plaintiff had failed to demonstrate that its mark became famous before defendant’s selection and use of the “gateway.com” domain name.  Similarly, uncertainties about the timing and extent of plaintiff’s use of the term GATEWAY to identify its company prevented the court from assessing the merits of plaintiff’s infringement claim, thereby precluding issuance of a preliminary injunction.