Microstrategy, Inc. v. Motorola, Inc.

Motorola, a global communications and electronics company, produces electronic hardware. In June 2000, Motorola held a business
summit of its marketing officers to determine how to market more
effectively its services and products on a worldwide basis. The company decided to develop a new brand, which would cut across its various business interests, to establish a more cohesive corporate identity.
In early July, Motorola contacted three advertising agencies, inviting
each to compete in creating this new brand. The company met with
all three agencies during the week of August 7, 2000. One agency,
Ogilvey & Mather, suggested the use of "Intelligence Everywhere" as
a trademark and global brand for Motorola products. Ogilvey &
Mather also represented that its attorneys had conducted a trademark
search for "Intelligence Everywhere," which revealed no conflicting
use of the phrase as a trademark.

Motorola selected Ogilvey & Mather as its agency and began its
normal procedures for clearing "Intelligence Everywhere" as a trademark. In-house trademark counsel for Motorola performed and commissioned various trademark searches for "Intelligence Everywhere"
and turned up no conflicting trademark uses of the phrase. On October 5, 2000, in-house counsel informed Motorola management that no
conflicting marks had been found and that the phrase was available for use as a mark in the United States and throughout the world. However, in-house counsel also informed Motorola management that a
Canadian company, Cel Corporation, had registered the domain name
"intelligenceeverywhere.com" and further investigation revealed that
Cel might be using the name as a trademark on some products. A
month later, Motorola obtained Cel's rights to "Intelligence Everywhere."

On October 19, 2000, Motorola filed an intent-to-use application
with the United States Patent and Trademark Office for the registration of the trademark "Intelligence Everywhere," indicating its intent
to use this mark on a vast array of its products and services. On
December 10, 2000, Motorola registered the domain name "intelligenceeverywhere.com" with Network Solutions, Inc. in Herndon, Virginia.

On January 8, 2001, MicroStrategy,1 a producer of communication
software, notified Motorola that MicroStategy had been using "Intelligence Everywhere" as a trademark since "at least as early as 1998."
A. 461. MicroStrategy further stated that the mark had obtained common law protection, and that Motorola's intended use of the mark
would constitute unlawful infringement. Motorola responded by
expressing its belief that its use of the mark would not violate state
or federal law and its intent to continue using the mark. MicroStrategy
then submitted its own application to the United States Patent and
Trademark Office seeking to register the trademark,"Intelligence
Everywhere."

On February 13, 2001, MicroStategy filed this action in the United
States District Court for the Eastern District of Virginia, raising
claims of trademark infringement, trademark dilution, and cybersquatting. MicroStrategy moved the court for a preliminary injunction
to prevent Motorola's intended use of the mark. Such an injunction
would have prevented Motorola from launching its planned global
advertising campaign around the "Intelligence Everywhere" mark,
otherwise scheduled to begin the week of March 19, 2001. On Febru-
ary 23, 2001, the district court heard oral argument and denied the
motion for a preliminary injunction, explaining its rationale from the
bench; the court issued a written opinion five days later, on February
28, 2001.

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Click the case caption above for the full text of the Court's opinion.

Affirmed.

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