Planetary Motion, Inc. v. Techsplosion, Inc.
United States Court of Appeals for the Eleventh Circuit
261 F.3d 1188 (2001)
Byron Darrah created and freely distributed email software called 'Coolmail' online under a general public license starting in 1994, releasing further versions, corresponding with users under that name, and eventually transferring all rights in the mark to Planetary Motion (plaintiff) in 1999. When Techsplosion (defendant) began offering an email service under the similar mark 'CoolMail' in 1998, Planetary sued for infringement, and the district court ruled for Planetary, finding that widespread free internet distribution alone was enough to establish ownership rights even without sales; Techsplosion appealed, arguing this use was insufficient to create trademark rights.
Whether an unregistered mark will be afforded trademark protection only if it was in actual use in commerce in a manner sufficient to establish ownership rights.