Interstellar Starship Services, Limited et al. v. Epix Incorperated, et al.

Trade Regulation - Federal Trademark Infringement - Federal Unfair Competition - Epix manufactures and sells video imaging hardware and software to customers with regard to its products. Epix registered "EPIX" with the United States Patent and Trademark Office ("PTO") in 1990, claiming first use date of November 1984. The tendered and accepted purpose of the "EPIX" trademark encompassed "printed circuit board and computer programs for image acquisition, processing, display and transmission in class 9". The "EPIX" trademark acquired incontestable status in December 1996. The registration does not relate to Epix' consulting services, although they filed an application in April 1997 to register it as a trade and service mark. Epix claims to have used "EPIX" in commerce as a service mark as well. The PTO has not issued a decision on Epix's recent service mark application. On November 4, 1996, ISS applied for registration of "EPIX" as a trade and service mark for use on computer graphics design service and computer graphics, although ISS now contends this was an error on the part of its attorney, who should have applied to register not "EPIX," but "epix.com." The PTO denied the application and is currently appealing that denial to the Trademark Trial and Appeals Board. Epix sought to have Network Services Inc. ("NSI"), the registrar of domain names, cancel the "epix.com" registration. Under NSI's domain-name dispute policy when Epix supplied NSI with a certified copy of its registration of the "EPIX" trademark. NSI informed ISS that it would lose its right to use "epix.com" unless it could present NSI with a declaratory judgment of non-infringement of Epix's trademark. ISS sued for declaratory judgment of its right to maintain the "epic.com" web site. Epix counter claimed, alleging federal trademark infringement, federal unfair competition, Oregon common-law trademark infringement, and Oregon law trademark dilution. ISS moved for summary judgment on its claim for declaratory judgment of the validity, enforceability, and infringement of its trademark. The district court granted summary judgment to ISS and denied summary judgment to Epix.

The district court granted summary judgment to ISS and denied summary judgment to Epix.

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The judgment was reversed and remanded; cross-appeal affirmed by the United States Court of Appeals, Ninth Circuit. See: 184 F.3d 1107 (9th Cir. 1999). The date above reflects the date of the appellate decision and not the trial date. Reported by EMDH.