Dalton v. Honda Motor Co., Ltd., 061311 FEDFED, 2011-1077

Docket Nº:2011-1077
Opinion Judge:PER CURIAM.
Party Name:MICHAEL DALTON, Appellant, v. HONDA MOTOR CO., LTD., Appellee.
Attorney:Michael Dalton, Cincinnati, Ohio, pro se. Dyan Finguerra-Ducharme, White & Case, LLP, of New York, New York, for appellee.
Judge Panel:Before Prost, Moore and O'Malley, Circuit Judges.
Case Date:June 13, 2011
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit



HONDA MOTOR CO., LTD., Appellee.

No. 2011-1077

United States Court of Appeals, Federal Circuit

June 13, 2011

This disposition is nonprecedential.

Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board. (Opposition No. 91173105).

Michael Dalton, Cincinnati, Ohio, pro se.

Dyan Finguerra-Ducharme, White & Case, LLP, of New York, New York, for appellee.

Before Prost, Moore and O'Malley, Circuit Judges.


Michael Dalton ("Dalton") appeals from the final decision of the Trademark Trial and Appeal Board ("the Board") sustaining Honda Motor Co., Ltd.'s opposition and refusing Dalton's registration of the mark "DEALERDASHBOARD" on grounds that it is merely descriptive. Honda Motor Co., Ltd. v. Dalton, 2010 TTAB LEXIS 358 (T.T.A.B. Aug. 6, 2010) ("Board Decision"). For the reasons explained below, we affirm.


Dalton has applied to register the mark DEALERDASHBOARD for the following International Class 35 services:

providing automotive dealerships managerial information concerning their Sales, Service, and Parts departments key financial indicators of how their dealership is performing via the Internet; and providing a web site featuring information about automobile dealerships, automobiles, automotive parts and accessories, at which users can link to the retail or wholesale web sites of others.

Appendix ("A") 20. Dalton asserted October 5, 1999 as the date of first use of the mark in commerce.

In May 2006, Dalton sent a cease and desist letter to American Honda Motor Co., Inc. ("American Honda"), demanding that it cease using the mark DEALERDASHBOARD on its network. In the letter, Dalton informed American Honda that he owned the trademark/service mark DEALERDASHBOARD and operates the website DealerDashboard.com, which offers services to automotive dealerships. According to Dalton, it was brought to his attention that American Honda was using that same mark "to offer competing service to [its] dealer body." The record reflects that American Honda is a wholly-owned subsidiary of Honda Motor Co., Ltd.

On September 27, 2006, Honda Motor Co., Ltd. ("Honda") filed a Notice of Opposition on grounds that the DEALERDASHBOARD mark "is a generic term, or, at best, a merely descriptive term." A26. Honda explained that it is a corporation organized under Japanese law and that, through its subsidiaries and affiliates, it "manufactures, markets and sells, among other products, automobiles, motorcycles, motor scooters and all-terrain vehicles throughout the world." A25.

In the Notice of Opposition, Honda alleged, among other things, that: (1) "dashboard" is a "term of art in the Internet industry, denoting a user interface for organizing and displaying key information"; (2) it uses the term "dealer dashboard" on its internal network, which is accessible only to authorized Honda dealers, "to describe a tool that presents information to its authorized dealers about their sales, service and parts departments"; and (3) registration of the DEALERDASHBOARD mark would damage Honda because it "may subject [it] to an infringement suit" for using the "descriptive designations "Dealer Dashboard" or "Dashboard."

Dalton filed an Answer on January 6, 2007, in which he: (1) denied that the DEALERDASHBOARD mark was generic; and (2) argued that the Board lacked jurisdiction over Honda because it is a foreign corporation organized under the laws of Japan. Dalton also claimed that he "invested extensive time and resources" making DEALERDASHBOARD a "source identifier" and that it has become "alternatively distinctive and famous within the automotive industry." Doc. 8, Answer at 5 (Jan. 6, 2007).1

During the course of the Board proceedings, Honda served Dalton with interrogatories and document requests. When Dalton failed to respond to the discovery requests, Honda filed a motion to compel. In response, on April 2, 2007, Dalton filed a motion to dismiss, motion for sanctions, or in the alternative, motion to strike. In his motion, Dalton sought dismissal for failure to state a claim and for lack of jurisdiction. He also sought to strike Honda's discovery requests and motion to compel.

In an order dated February 29, 2008, the Board: (1) denied Dalton's motion to dismiss on grounds that it was untimely, since it was filed roughly three months after he filed his answer; (2) granted Honda's motion to compel discovery requests; and (3) ordered Dalton to provide, without objection, "full and proper responses" to the discovery requests within thirty days. Dalton failed to comply with the Board's order, and subsequently sought to introduce documents and evidence not produced in discovery during his testimony deposition. Honda objected to the use of those documents on grounds that they were not previously produced and raised additional objections, including hearsay and lack of foundation.

Honda sought and obtained an extension of time which reset its 30-day testimony period to close on October 27, 2008. As such, Honda's testimony period opened on September 28, 2008 and continued until October 27, 2008. Notwithstanding this timeframe, Honda conducted a trial deposition of Cynthia Mangham on September 16, 2008. Mangham, the Manager of the Interactive Network Marketing and Rollout for American Honda, testified that, in 2004, American Honda began using the term "dealer dashboard" on its internal network to communicate "key operating indicators" to automotive dealers.

Dalton did not participate in Mangham's testimony deposition. Instead, roughly six (6) months after the deposition took place – on March 6, 2009 – Dalton filed a motion to strike Mangham's trial testimony on grounds that it took place outside the set testimony period. On May 27, 2009, the Board denied Dalton's motion to strike as untimely. In reaching this decision, the Board noted that,

[w]hen a testimony deposition is noticed for a date prior to the opening of the deposing party's testimony period, an adverse party that fails to promptly object to the scheduled deposition on the ground of untimeliness may be found to have waived this ground for objection, because the premature scheduling of a deposition is an error which can be corrected on seasonable objection.

Doc. 53, Order Resetting Trial Dates at 2 (May 27, 2009) (citing Trademark Trial and Appeal Board Manual of Procedure ("TBMP") § 707.03(a) (2d ed. 2004)).2

On November 13, 2009, Honda filed its trial brief on the merits. Although he sought and obtained an extension of time in which to respond, Dalton failed to file a responsive trial brief. In a decision dated August 6, 2010, the Board sustained Honda's opposition to registration of the DEALERDASHBOARD mark on grounds of mere descriptiveness. The Board found that: (1) Honda had standing to oppose Dalton's mark on behalf of its wholly-owned subsidiary; (2) DEALERDASHBOARD merely describes the services provided: "Internet-based information regarding sales, service, and inventory or parts to automobile dealerships"; (3) Honda failed to show that DEALERDASHBOARD is a generic term; (4) Dalton did not plead acquired distinctiveness, and there is no evidence to support such a claim. The Board also sustained Honda's evidentiary objections and noted that, even if the excluded documents were considered, the outcome would be the same.

Dalton timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).

Standard of review

We review the Board's legal conclusions de novo and its factual findings for substantial evidence. In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Substantial evidence is "'more than a mere scintilla' and 'such relevant evidence as a reasonable mind would accept as adequate' to support a conclusion." Id. (quoting Consol. Edison v. NLRB, 305 U.S. 197, 229 (1938)).


Dalton's primary arguments on appeal fall into three categories. He argues that: (1) as a foreign corporation, Honda lacked standing to file an opposition on behalf of Honda America; (2) the Board erred when it found that the mark DEALERDASHBOARD was merely descriptive; and (3) the Board erred when it excluded certain evidence from his testimony deposition.

In response, Honda submits that: (1) it has standing to file suit on behalf of American Honda because American Honda is a wholly-owned subsidiary; (2) the term DEALERDASHBOARD is merely descriptive of the identified services; and (3) the Board properly sustained Honda's objection to certain documents on grounds that they were not previously produced during discovery in accordance with the Board's order compelling discovery responses.

For the reasons set forth below, we find Honda's arguments well-taken. Because we find no error in the Board's decision, we affirm.


Under Article III of the United States Constitution, a plaintiff must show a "case or controversy" between the parties to establish standing. Ritchie v. Simpson, 170 F.3d 1092, 1094 (Fed. Cir. 1999). The "case" and "controversy" restrictions do not, however, apply to matters before administrative agencies. Id. Instead, for an agency such as the PTO, standing is conferred by statute. Here, standing is conferred by Section 13 of the Lanham Act, which provides, in pertinent part, that "[a]ny person who believes that he would be damaged by the registration of a mark . . . may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor." 15 U.S.C. § 1063(a). The purpose of the standing requirement is "to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more than an intermeddler." Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028-29 (C.C.P.A. 1982).

In addition to meeting the broad requirements of § 13, an opposer must satisfy two judicially-created standing...

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