ISP. Net. LLC v. Qwest Communications International Inc., 092404 INSDC, IP 01-0480-C-B/S

Docket NºIP 01-0480-C-B/S
Opinion JudgeSARAH BARKER, District Judge.
Party NameISP. NET. LLC d/b/a IQUEST INTERNET, an Indiana corporation, Plaintiff and Counterdefendant, v. QWEST COMMUNICATIONS INTERNATIONAL INC., a Delaware corporation, Defendant and Counterclaimant.
Case DateSeptember 24, 2004
CourtUnited States District Courts, 7th Circuit, Southern District of Indiana

ISP. NET. LLC d/b/a IQUEST INTERNET, an Indiana corporation, Plaintiff and Counterdefendant,


QWEST COMMUNICATIONS INTERNATIONAL INC., a Delaware corporation, Defendant and Counterclaimant.

No. IP 01-0480-C-B/S

United States District Court, S.D. Indiana, Indianapolis Division.

September 24, 2004


SARAH BARKER, District Judge.

This is a federal trademark infringement and unfair competition case brought under the Lanham Act, 15 U.S.C. § 1114 and § 1125. Each party asserts infringement claims and seeks an injunction barring the other party from using the confusingly similar mark. Plaintiff, in addition, seeks monetary relief under the Lanham Act should it prevail on the liability issues, whereas Defendant limits its claim to injunctive relief. Defendant, by this motion for partial summary judgment, seeks a ruling dismissing Plaintiff's claim for infringer's profits and exclusively limiting Plaintiff's remedies to injunctive relief if Defendant is found liable of trademark infringement. For the reasons given below, we DENY Defendant's motion for partial summary judgment on the issue of damages.

Factual Background


Plaintiff, ISP.NET.LLC d/b/a IQuest Internet ("IQuest"), is an Indiana company providing ISP (internet services provider) services primarily in Indiana, Illinois and Ohio. Pl.'s Trial Br. at 2-3. Plaintiff owns U.S. Trademark Registration No. 2, 080, 534 for the service mark IQUEST for "providing access to a global computer network of networks featuring a wide range of information for general users." The application for the service mark was filed on February 17, 1995. Pl.'s Resp. to Def.'s Mot. for Partial Summ. J., Undisputed Material Facts No. 20, 22-23.

Defendant, Qwest Communications International Inc. ("Qwest"), is a Delaware corporation which offers nationwide telecommunications services, including dial-up and dedicated Internet access, digital subscriber lines (DSL), wireless, long distance and local phone service and web hosting. Def.'s Trial Br. at 1. As of April 9, 1996, Defendant owns U.S. Trademark Registration No. 1, 966, 694 for the service mark QWEST for providing "telecommunications services, namely the electronic transmission of voice, data, and messages." Id. at 2. Defendant asserts the mark "Qwest" has been in continuous use in association with telecommunications services since well before 1996.

Much of the corporate history of both companies is immaterial to our consideration of this partial motion for summary judgment so we shall sidestep a comprehensive account of that history in this entry. However, the following undisputed facts pertain to the issue of damages.

The parties admit that as of 1995, the "two companies were total strangers to each other." Def's Br., Undisputed Fact ¶ 4. Qwest first located the IQuest mark in a Thomson & Thomson trademark search it completed December 10, 1997. Qwest consulted an outside intellectual property law firm on December 17, 1997 "regarding IQuest Internet for the purpose of providing legal advice." Its own intellectual property lawyers provided further advice "regarding IQuest Internet" on April 24, 1998. The IQUEST mark was identified once again in a later trademark search, completed January 10, 2000, shortly before Qwest merged with U.S. West. Pl.'s Resp. Undisputed Material Facts ¶¶ 45-47; Def.'s Reply at 2-3.

At about this same time, Qwest sent cease-and-desist letters to a variety of companies whose name included "quest, " such as "Net Quest, " "InterQuest, " and "Tel Quest, " and in some cases, filed lawsuits to enforce its trademark rights. Pl.'s Resp. Undisputed Material Facts ¶¶ 48-49. While IQuest asserts it neither received a cease-and-desist letter nor was sued, Qwest submits evidence to demonstrate that Qwest had filed an opposition proceeding before the Trademark Trial and Appeal Board ("TTAB") in April 2000, the purpose of which was to challenge the pending federal registration of the IQuest trademark. Def.'s Reply at 4; Gall. Decl. Ex. A.

Synopsis of the Claims

IQuest claims the mark QWEST, owned by the defendant, is confusingly similar to the IQUEST mark. IQuest claims it has priority with respect to the contested mark and seeks a permanent injunction and infringer's profits under 15 U.S.C. §§ 1116 and 1117(a). Compl. Qwest has counterclaimed, asserting that it has priority with respect to the contested mark, and seeks an injunction against IQuest's continued use of the IQUEST mark.

The Lanham Act imposes liability upon any person who shall, without the consent of the registrant:

use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1114(1).


[a]ny person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which-

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or...

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