United States District Court, E.D. Virginia, Alexandria Division
ELLIS, ILL UNITED STATES DISTRICT JUDGE
issue in this trademark infringement and cybersquatting case
is the parties' use of the term, "VIVE, " in
connection with their respective products or services.
Plaintiff, Valador, Inc., alleges that each defendant, HTC
Corporation, HTC America, Inc., and Valve Corporation, has
infringed on plaintiffs VIVE mark through defendants'
alleged marketing, advertising, and selling of a headset, the
"HTC Vive, " a hardware device capable of running
software that renders three-dimensional images. Plaintiff
further contends that HTC Corporation's use of website
domain names containing the word, "VIVE, "
constitutes unlawful cybersquatting. The parties have filed
cross motions for summary judgment on the following remaining
• Count I: Trademark infringement, in violation of 15
U.S.C. § 1114(1)(a), against all defendants.
• Count II: Unfair competition and false designation of
origin, in violation of 15 U.S.C. § 1125(a), against
• Count HI: Cybersquatting, in violation of the
Anti-Cybersquatting Consumer Protection Act
("ACPA"), 15 U.S.C. § 1125(d), against
defendant HTC Corporation.
matter has been fully briefed and argued orally, it is now
ripe for disposition.
below are the undisputed material facts derived from the
parties' statements of undisputed facts submitted in
support of their summary judgment motions, and additional
undisputed facts gleaned from the summary judgment
• Plaintiff, Valador, Inc., is a small, services
business built on the use of technology.
• On December 25, 2007, the U.S. Patent and Trademark
Office ("PTO") granted plaintiffs application for a
registered trademark and service mark in the standard
character mark "VIVE" in International Classes 009
• Plaintiffs registered mark is an acronym for
"Valador Immersive Visual
• Plaintiffs "VIVE" mark falls within
International Class 009 as "computer software
applications for three dimensional (3D) presentation of
information and event simulation." Plaintiffs mark also
falls within International Class 035 for "[b]usiness
consulting services in the fields of information management
and analysis through three dimensional (3D) computer modeling
• Defendant HTC Corporation is a Taiwanese company that
designed, manufactures, and sells a product-a headset-labeled
"HTC Vive." The HTC Vive headset is available for
purchase by the general public worldwide through physical
retail outlets and online.
• The HTC Vive headset is a hardware device that
includes hand controls and is capable of running virtual
reality games and entertainment software.
• Defendant HTC America is responsible for advertising,
marketing, and promoting the HTC Vive headset in the U.S.
• Defendant Valve is a software company that does not
sell the HTC Vive headset, but instead provides free software
that can be downloaded to an HTC Vive headset and other
• Plaintiff has four main lines of business: (1)
modeling and simulation, (2) information assurance. (3)
management consulting, and (4) software engineering.
• Plaintiff provides these services pursuant to
government contracts as either a prime contractor or a
sub-contractor. In fact, Plaintiffs Chief Financial Officer,
Philip Hamilton, stated that plaintiff performs 100% of its
work through these means.
• Plaintiff derives its annual revenue almost
exclusively from government contracts with two federal
agencies: NASA and the Department of Veteran's Affairs.
Approximately 99% of plaintiff s work is for government
• Plaintiffs government agency clients are sophisticated
entities that make purchasing decisions based upon detailed
proposals that are subject to competitive bidding.
• Plaintiffs 2016 revenue was approximately
[XXXXX] roughly [XXXXX] in profit.
• Notably, the undisputed factual record discloses that
plaintiffs "VIVE"-i.e., the Valador Immersive
Visual Environment-is not itself a physical product, game,
service. or stand-alone software. Rather, plaintiffs
"VIVE" is a "development environment used by
Valador to develop applications." Mabie Depo. at 97. In
other words, plaintiffs VIVE "is a means for developing
solutions to a problem" and "a theory for doing
collaboration, " which includes some software. McHenry
Depo. at 178-79.
• According to plaintiffs CEO, plaintiffs
"VIVE" includes "custom applications that
[plaintiff] developed, open source documents, [and] open
source applications that [plaintiff has] strung together into
a development environment that [plaintiff] use[s]" to
develop further applications. Mabie Depo. at 75:10-15.
• Plaintiff does not sell its VIVE process or
environment "separately from the application or the end
product" it delivers to clients. Mabie Depo. at 79:6-16.
Rather, the end products plaintiff delivers to its
clients-namely, NASA and the Department of Veterans
Affairs-are software programs that render three-dimensional
simulation results, which plaintiffs customers may then use.
• None of plaintiff s deliverables is labeled or branded
with plaintiffs "VIVE" mark.
• None of the applications plaintiff constructs using
its VIVE process is called "VIVE" or labeled
• Plaintiff occasionally used its "VIVE" mark
in contracts with government agencies to connote that
plaintiff would use its VIVE process or environment in
performing the contract.
• The contract prices for which plaintiff alleges to
have used its VIVE process range from $99, 550 into the tens
of millions of dollars.
• Plaintiff has no registered trademark rights related
to any hardware.
• Plaintiff has not received any awards related
specifically to its VIVE process, and plaintiffs VIVE has not
received press coverage beyond plaintiffs own press releases
and a single third-party blog post.
• In 2010, plaintiff, pursuant to a contract with
defendant Valve, used Valve's software tools to create
two maps, labeled "Moundsville Slammer, " for a
video game, "Left4Dead" and its sequel,
"Left4Dead2." These maps have been downloaded
approximately 43, 000 times over the past six years.
• These two video game maps are not standalone products,
and they are not branded or labeled with plaintiffs
• Plaintiff did not intend to sell its "Moundsville
Slammer" maps. In fact, plaintiffs contract with Valve
prohibited plaintiff from using those maps for any commercial
• According to plaintiffs CFO, plaintiff does not have a
video game division within the company.
• Plaintiffs senior software engineer, Mr. Stroh,
confirmed that plamtiff is not currently working on
any projects regarding video games, campaigns, or
maps. [XXXXX] the company
• Although plaintiff, on October 27, 2015, investigated
engaging in further video game work and generated an internal
proposal concerning a room-capture application, this proposal
was considered for only 10 days and then abandoned. Plaintiff
did not revisit that proposal.
• Plaintiff maintains a website at
"www.valador.com." Before this litigation,
that website did not display the word "VIVE" on its
• After plaintiff filed its lawsuit, plaintiff altered
its website to feature prominently the unstylized,
hyperlinked word "VIVE" on the main page. When
clicked, the hyperlink redirects to a subpage about
plaintiffs VIVE development environment.
• Plaintiff does not maintain a webstore where potential
consumers can purchase any goods or services.
• Plaintiff does not sell any goods or services through
third party retailers.
• Plaintiff has not incurred any cost in creating its
• Over the last three years, plaintiff has spent
[XXXXX] in advertising, marketing,
and promotional spend for all of its services.
• Plaintiff contends that it marketed its VIVE
environment or process at trade shows. Yet, plaintiff
produced ten photos from such trade shows, none of which
displays plaintiffs VIVE environment or process.
• Moreover, plaintiffs promotional materials for its
VIVE environment comprise dense textual descriptions directed
to government agencies in need of consulting services.
• In January 2015, HTC Corporation selected the
"VIVE" name for its headset, the HTC Vive.
• HTC Corporation selected the "VIVE" name
independently and without any knowledge of plaintiff.
• HTC Corporation originally conceived the name of its
product as "Re Vive" before changing it to
• On March 1, 2015, HTC introduced the HTC Vive headset.
The event was covered by mainstream and web-based media in
the U.S. and around the world.
• On April 9, 2015, HTC Corporation filed trademark
applications with the PTO for "Vive, " "HTC
Vive." and "HTC Re Vive" for, inter
• Subsequently, plaintiff filed of a letter of protest
with the PTO.
• After plaintiff filed its letter of protest, HTC
Corporation narrowed the description of goods contained in
its trademark application to hardware.
• HTC Corporation, through outside trademark counsel,
also contacted plaintiffs counsel regarding a short
co-existence agreement. In those communications,
defendants' counsel emphasized that the parties'
products and services were distinguishable.
• Thereafter, on January 18, 2017, the PTO determined
that HTC Corporation's applications related to virtual
reality hardware did not pose a likelihood of confusion with
any existing registered trademarks and cleared the
applications by February 28, 2017.
• In this respect, the PTO provisionally granted HTC
Corporation's trademark applications for hardware in the
same classes as plaintiffs "VIVE" mark.
• HTC Corporation followed its standard corporate
practice in performing a trademark search with the assistance
of outside counsel after selecting, but before ...