## Facts

- Lucent Information Management, Inc. (LIM), a small Pennsylvania company formed in 1995, provided document imaging and management services and selected the name “LUCENT” in summer 1995.
- LIM operated with four principals and no dedicated advertising, relying on contacts and referrals rather than public promotion.
- LIM made one sale using the LUCENT name in October 1995; the next sale occurred in February 1996.
- Lucent Technologies, Inc. (LTI) was created during AT&T’s reorganization and adopted LUCENT as its corporate mark for telecommunications products and services.
- In November 1995, AT&T filed a USPTO intent-to-use application for LUCENT.
- In February 1996, LTI launched a major nationwide branding campaign, including mailings to over one million potential customers, and began extensive use of LUCENT.
- After learning of LTI’s adoption, LIM sent a cease-and-desist letter in March 1996 and later sought federal registration for LUCENT for computer and office services.
- LIM sued in the District of Delaware for trademark infringement and related claims, asserting superior common-law rights based on earlier use.
- The district court granted summary judgment to LTI; LIM appealed.

## Issues

1. Whether LIM’s pre-November 1995 activities constituted sufficiently public, bona fide “use in commerce” to create common-law trademark rights and priority in the mark LUCENT.
2. Whether LTI adopted and used LUCENT in bad faith such that LIM could prevail despite LIM’s limited market presence.

## Decision

- The Third Circuit affirmed summary judgment for LTI.
- LIM’s limited, sporadic sales and absence of public advertising were insufficient to establish prior common-law trademark rights in LUCENT.
- Because LIM failed to establish priority, LTI’s adoption and use of LUCENT did not constitute infringement.
- The record did not support bad faith; LTI’s adoption was in good faith as a matter of law.

## Legal Principles

- Common-law trademark rights arise from bona fide commercial use that is sufficiently public to create an association in the minds of the relevant purchasing public between the mark and a single source.
- Sporadic, minimal, or largely private transactions—especially without advertising or meaningful market exposure—may be inadequate to establish protectable priority.
- A bad-faith adoption claim requires evidence that the junior user sought to trade on the senior user’s goodwill; independent selection and adoption, coupled with the senior user’s negligible market presence, supports a finding of good faith on summary judgment.

## Conclusion

The court held that LIM’s minimal, nonpublic use of LUCENT did not create enforceable common-law trademark priority, and absent priority or evidence of bad faith, LTI’s independently developed nationwide adoption of LUCENT was not actionable and warranted summary judgment.


Lucent Info. Mgmt., Inc. v. Lucent Techs., Inc., 186 F.3d 311 (3d Cir. 1999)