Internet Trademark Case Summaries

Palantir Tech., Inc. v. Palantir.net, Inc.

85 U.S.P.Q.2d 1764 (N.D. Ca. 2008)

Palantir.net, a website design and development firm since 1996, operated a website at www.palantir.net since 1997 and federally registered the service mark “PALANTIR” in 2006.  Palantir Technologies, Inc. (“PTI”) was a database software development firm since 2005.  In early 2007, Palantir.net learned of PTI for the first time and also discovered that PTI had purchased “palantir” as a Google search keyword, which resulted in PTI’s website appearing as the first sponsored link on the search results page.  PTI filed a declaratory judgment action seeking a ruling of non-infringement, and Palantir.net counterclaimed for trademark infringement and sought a preliminary injunction.  The court granted Palantir.net’s motion for a preliminary injunction, ruling that every factor in the likelihood-of-confusion analysis either favored Palantir.net or was neutral.  Regarding the strength of the mark, the court agreed that the mark PALANTIR, which refers to a magical stone from the Lord of the Rings trilogy, was only mildly suggestive and thus was moderately strong.  The court rejected PTI’s argument that third-party uses weakened the mark, finding that PTI failed to submit proof of use or length of use for the few third-party uses it cited.  The similarity of the marks and relatedness of the goods or services also favored Palantir.net, as the marks were identical and the services of both parties related to the computer software industry generally, and involved database management specifically.  The fact that both companies used Internet websites to promote their businesses also favored a finding of infringement.  Finally, the nature of goods and degree of care exercised by potential buyers factors slightly favored Palantir.net due to the close similarity of the marks and the possibility of initial-interest confusion, while the intent, evidence of actual confusion, and likelihood of product line expansion factors were all neutral.  The court also held that the balance of hardships favored Palantir.net, due to the company’s history of use of the Palantir mark, PTI’s small client base, and the limited scope of the preliminary injunction.  The court ordered PTI to place a “prominent” disclaimer on its websites and blog, informing the public that it is not Palantir.net and how to access Palantir.net if that was their desired destination.  The court also prohibited PTI from “engaging in any Internet advertising under the palantir mark,” including “no more Google advertisements.”  However, PTI was allowed to use the Internet to advertise for employees, as long as the ads contained a disclaimer.  The court believed that this limited preliminary injunction would “eliminate, or at least alleviate” the likelihood that a “potential client searching for Palantir.net on the Internet [would] mistakenly believ[e] that PTI’s website is Palantir.net.”