## Facts

- Steve Perlman founded a group of related California entities using the “Rearden” name (the “Rearden Companies”), operating as technology incubators and artistic production companies in the San Francisco Bay Area.
- The Rearden Companies used “Rearden” in public-facing ways, including operating multiple Rearden-branded websites beginning around 1999–2001 and promoting projects and services under the name.
- The Rearden Companies obtained federal trademark registrations for REARDEN and REARDEN STUDIOS (and variants) and sought additional registrations.
- A separate company, Rearden Commerce, Inc., founded by Patrick Grady, offered an online “Rearden Personal Assistant” service connecting users to travel and related services.
- Rearden Commerce acquired multiple “Rearden”-containing domain names and, after one Perlman entity adopted “Rearden LLC” as its legal name amid trademark disputes, Rearden Commerce registered reardenllc.com and reardenllc.net.
- Rearden Commerce redirected traffic from reardenllc.com and reardenllc.net to its own website, though it did not conduct business under the name “Rearden LLC.”
- The Rearden Companies sued for Lanham Act trademark infringement and false designation of origin, cybersquatting under the ACPA, and related California common-law infringement and unfair competition.
- The district court granted summary judgment to Rearden Commerce on all claims, finding no actionable likelihood of confusion and no ACPA bad-faith intent.

## Issues

1. Whether the Rearden Companies’ non-sales, public-facing activities constituted “use in commerce” sufficient to create protectable and prior rights in REARDEN and related marks.
2. Whether Rearden Commerce’s use of “Rearden” in branding and domain names created a likelihood of confusion under the Sleekcraft factors (and thus supported the federal and parallel state claims).
3. Whether registering and using reardenllc.com and reardenllc.net reflected a “bad faith intent to profit” under the ACPA.

## Decision

- The Ninth Circuit vacated the summary judgments for Rearden Commerce and remanded.
- The court held that genuine disputes of material fact existed as to whether the Rearden Companies established protectable rights and priority through public use in commerce.
- The court held that genuine disputes of material fact existed on likelihood of confusion under Sleekcraft, including disputes bearing on mark strength, similarity, service proximity, marketing channels, and evidence of actual confusion.
- The court held that genuine disputes of material fact existed on ACPA bad faith, particularly regarding Rearden Commerce’s registration and use of domains identical to “Rearden LLC,” the timing, knowledge of the plaintiffs’ marks, and the redirection of traffic to its own site.

## Legal Principles

- “Use in commerce” for trademark rights can be shown by sufficiently public activities that identify or distinguish services in the minds of an appropriate segment of the public; sales are not always required.
- Likelihood of confusion under the Lanham Act is generally a fact-intensive question assessed under the Sleekcraft factors and is often unsuitable for summary judgment where the record supports competing inferences.
- Evidence of actual confusion, even if limited, may be significant at the summary-judgment stage in assessing likely confusion.
- Under the ACPA, bad-faith intent to profit is evaluated using statutory factors, and credibility disputes and competing explanations for domain registrations typically present jury questions when supported by evidence.
- Registering a domain closely matching another’s name or mark and using it to divert users to one’s own site may support an inference of ACPA bad faith, especially when combined with knowledge and suspicious timing.

## Conclusion

The Ninth Circuit required further proceedings because the record supported triable factual disputes over whether the plaintiffs had protectable trademark rights based on public use, whether consumers were likely to be confused by the parties’ shared “Rearden” branding and domains, and whether the defendant’s registration and redirection of reardenllc.com and reardenllc.net could reflect bad-faith cybersquatting under the ACPA.


Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190 (9th Cir. 2012)