Synergistic Intern., LLC v. Korman
| Decision Date | 30 November 2006 |
| Docket Number | No. 05-2295.,05-2295. |
| Citation | 470 F.3d 162 |
| Parties | SYNERGISTIC INTERNATIONAL, LLC, Plaintiff-Appellee, v. Jody Fine KORMAN, individually and d/b/a The Windshield Doctor, d/b/a A Windshield Doctor, d/b/a Glass Doctor, Defendant-Appellant, and Darin Blatner; Steven Alan Korman, Defendants. |
| Court | U.S. Court of Appeals — Fourth Circuit |
ARGUED: John Warren Hart, Beaton & Hart, P.C., Virginia Beach, Virginia, for Appellant. William Merrill Bryner, Kilpatrick Stockton, L.L.P., Winston-Salem, North Carolina, for Appellee. ON BRIEF: Christopher P. Bussert, James H. Sullivan, Kilpatrick Stockton, L.L.P., Atlanta, Georgia, for Appellee.
Before WILLIAMS and KING, Circuit Judges, and DEVER, United States District Judge for the Eastern District of North Carolina, sitting by designation.
Affirmed in part, vacated in part, and remanded by published opinion. Judge KING wrote the opinion, in which Judge WILLIAMS and Judge DEVER joined.
Defendant Jody Fine Korman appeals from the district court's award of summary judgment and damages to plaintiff Synergistic International, LLC, in this trademark dispute. See Synergistic Int'l, LLC v. Korman, 402 F.Supp.2d 651 (E.D.Va.2005) (the "Opinion"). Korman makes two contentions of error: first, that the court erred in ruling that Korman's trademark, "THE WINDSHIELD DOCTOR," infringed Synergistic's trademark, "GLASS DOCTOR®"; and second, that the court erred in awarding more than $142,000 in damages to Synergistic. As explained below, we affirm on the liability ruling, but vacate the court's award of damages and remand.
Synergistic is a nationwide franchiser and operator of a glass installation and repair business, doing business under the trade name "GLASS DOCTOR®."1 On May 31, 1977, Synergistic's predecessor-in-interest (a company called Glass Doctor, Inc.) received a federal service mark from the United States Patent and Trademark Office (the "PTO") for "GLASS DOCTOR" in connection with the "installation of glass in buildings and vehicles." Stipulations ¶ 31.2 Synergistic's "GLASS DOCTOR®" stores install, as well as repair, glass in both buildings and vehicles, and its trademark has been used since 1991 in connection with the windshield repair aspect of its business. Ninety to ninety-five percent of Synergistic's business involves windshield repair and installation, performed through mobile facilities that travel to its customers' locations.
The "GLASS DOCTOR®" mark has become incontestable under the Lanham Act, specifically the provisions of 15 U.S.C. § 1065, in that it has been continuously used in commerce for more than five years since its initial PTO registration.3 The parties have stipulated that Synergistic's "GLASS DOCTOR®" mark qualifies for legal protection under the Lanham Act. See Stipulations ¶ 31. The PTO issued the "GLASS DOCTOR®" registration on the ground that the mark is inherently distinctive.4 As a condition thereof, however, the PTO required Synergistic to disclaim an exclusive right in the word "GLASS," apart from its use in its mark. Therefore, the dominant word of Synergistic's "GLASS DOCTOR®" mark is "DOCTOR." Although Synergistic and its predecessors-in-interest have renewed the "GLASS DOCTOR®" registration several times since the PTO's initial approval in 1977, they have never updated the application; therefore, their registration of "GLASS DOCTOR®" does not specifically identify the mark's use in connection with the repair of windshields. Synergistic has used the "GLASS DOCTOR®" mark in nationwide advertising, but it did not enter the Virginia Beach, Virginia, area—or use its "GLASS DOCTOR®" mark there—until January 2005, when it decided to operate a "GLASS DOCTOR®" store in Virginia Beach.
Korman, on the other hand, started her business, which she called "THE WINDSHIELD DOCTOR," in Virginia Beach in 1987.5 Since its inception, Korman's business has been engaged in windshield repair; her business does not install any glass. Korman's business is mobile, in that she normally travels to her customers' locations to provide windshield repair services. She advertises her business in the telephone yellow pages and through fliers and business cards. In 2000, Korman used the name "GLASS DOCTOR" as a single line listing in the telephone book. Unaware of Synergistic's "GLASS DOCTOR®" mark or business, Korman decided to use the name "GLASS DOCTOR" so that she could receive an additional entry in the yellow pages. On December 9, 2003, Korman obtained a federal service mark from the PTO for "THE WINDSHIELD DOCTOR," for use in connection with "repair service, namely, vehicle windshield repairs for cracks, chips and stars in windshields." Stipulations ¶ 23. In order to obtain her PTO registration, Korman was required to disclaim any use of the word "WINDSHIELD," apart from "THE WINDSHIELD DOCTOR" mark. As a result, the dominant word in Korman's "THE WINDSHIELD DOCTOR" mark is "DOCTOR," the same dominant word used in Synergistic's "GLASS DOCTOR®" mark.
On August 25, 2004, Synergistic's lawyer sent Korman a cease and desist letter, complaining of her use of the name "GLASS DOCTOR" and her "THE WINDSHIELD DOCTOR" mark. Synergistic was then contemplating a move into the Virginia Beach area and wanted to preclude Korman's use of the names "GLASS DOCTOR" and "THE WINDSHIELD DOCTOR." In Synergistic's view, "THE WINDSHIELD DOCTOR" mark caused confusion among consumers because both Synergistic and Korman would list their businesses under the same heading in the telephone yellow pages. And, even though Korman offered only windshield repair services (in contrast to the repair and installation services provided by Synergistic's "GLASS DOCTOR®" stores), the businesses would be in competition with each other. Indeed, as stipulated here, potential customers made calls to Korman about windshield installation (rather than repair) services, and such potential customers had to decide whether to repair their windshields or have new ones installed. See Stipulations ¶ 41.
After receiving the cease and desist letter from Synergistic, Korman spoke to her father, who had previously used the name "GLASS DOCTOR" in a similar business he operated in Richmond, Virginia, between 1974 and 1989. Korman learned that her father had received the same kind of letter in 1989 from an unknown "GLASS DOCTOR" entity, asserting that he was not entitled to use that name. As a result, her father ceased using the name "GLASS DOCTOR" in his business, and the issue was not further pursued. When Korman received Synergistic's cease and desist letter in August 2004, she stopped using the name "GLASS DOCTOR." Despite the objection of Synergistic, however, she continued to use her own mark, "THE WINDSHIELD DOCTOR," believing it to be protected by her PTO registration.
Because of Korman's continued use of "THE WINDSHIELD DOCTOR" mark, Synergistic initiated this proceeding in the Eastern District of Virginia, on January 22, 2005. Synergistic alleged two Lanham Act claims, for trademark infringement under 15 U.S.C. § 1114 and for unfair competition under 15 U.S.C. § 1125(a). It also asserted two state law claims, for common law unfair competition and for unfair competition under the Virginia Consumer Protection Act, see Va.Code Ann. §§ 59.1-196 to -207. Synergistic's lawsuit sought cancellation, pursuant to the Lanham Act, of Korman's "THE WINDSHIELD DOCTOR" mark; an injunction prohibiting Korman from using the name "GLASS DOCTOR" as well as her "THE WINDSHIELD DOCTOR" mark; plus damages and attorney fees.
On August 2, 2005, after discovery, Korman filed a motion for summary judgment. Thereafter, on August 15, 2005, Synergistic filed a cross-motion seeking summary judgment. Before ruling on either motion, the district court conducted a pre-trial conference, and the parties agreed to the Stipulations. In the Stipulations, Synergistic admitted that it had not suffered any business losses in the Virginia Beach area prior to this proceeding, and it acknowledged being unaware of any complaint of actual confusion between the two businesses. See Stipulations ¶¶ 27-29. Synergistic asserted, however, that it was nevertheless entitled to damages from Korman for any costs it would incur informing the public about the differences between the two businesses, and it claimed that Korman had been unjustly enriched by her use of the name "GLASS DOCTOR" from June 1, 2000, to December 31, 2004.
Relying on the Stipulations and its interpretation of the applicable legal principles, the district court advised the parties, on September 9, 2005, that it would award summary judgment to Synergistic on all of its claims, federal and state, and that it would deny Korman's cross-motion for summary judgment. The court then conducted a brief trial on September 19, 2005, for the sole purpose of assessing remedies. At trial, Synergistic called Korman to testify, and she was examined by counsel for both parties. Korman did not present any evidence beyond her own testimony.
Following the remedies trial, the district court issued its Opinion of October 20, 2005, from which this appeal emanates.6 In analyzing Synergistic's four claims, the court determined that the Lanham Act claims for trademark infringement and unfair competition, as well as the two state law claims, required the same proof on liability. See Opinion at 656-57, 663-64. The court concluded that Synergistic's "GLASS DOCTOR®" trademark was the senior of the two marks (first in time of use and first to register with the PTO) and that it was a suggestive, strong mark, entitled to protection from the use of similar marks for similar products. See id. at 658-60. Because Korman's "THE WINDSHIELD DOCTOR" mark was similar to Synergistic's "GLASS DOCTOR®" mark, and had been used in connection with similar products, the court...
To continue reading
Request your trial
-
JFJ Toys, Inc. v. Sears Holdings Corp., Civil Action No. PX–14–3527
...were, at the least, suggestive. See Pizzeria Uno Corp. v. Temple , 747 F.2d 1522, 1529 (4th Cir. 1984) ; see also Synergistic International LLC v. Korman , 470 F.3d 162, 172 ("If the PTO did not require proof secondary meaning, it has presumptively determined the mark to be 'suggestive.' ")......
-
Belk, Inc. v. Meyer Corp.
...of Belk's profits without considering certain equitable factors required under 15 U.S.C. § 1117(a) and Synergistic International, LLC v. Korman, 470 F.3d 162 (4th Cir.2006); and (2) treating Belk's profits as damages subject to trebling under N.C. Gen.Stat. § 75–16 in the absence of any ple......
-
Rosetta Stone Ltd. v. Google, Inc.
...“there is no need for each factor to support [the plaintiff's] position on the likelihood of confusion issue.” Synergistic Int'l, LLC v. Korman, 470 F.3d 162, 171 (4th Cir.2006). Rather, the confusion “factors are only a guide—a catalog of various considerations that may be relevant in dete......
-
Bros. of the Wheel M.C. Exec. Council, Inc. v. Mollohan
...(5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.Synergistic Intern., LLC v. Korman, 470 F.3d 162, 175 (4th Cir.2006) (citing Quick Techs., Inc. v. Sage Group PLC, 313 F.3d 338, 349 (5th Cir.2002)). The first factor “addresses whethe......
-
Missing the mark in cyberspace: misapplying trademark law to invisible and attenuated uses.
...DINWOODIE & JANIS, supra note 30, at 470-71, fig.7-1 (listing the criteria by Circuit); see, e.g., Synergistic Int'l, LLC v. Korman, 470 F.3d 162, 170 n.9 (4th Cir. 2006) ("The test for trademark infringement and unfair competition under the Lanham Act is essentially the same as that fo......
-
AGAINST SECONDARY MEANING.
...(4th Cir. 2014). (80) Innovation Ventures, LLC v. N.V.E., Inc., 694 F.3d 723, 730 (6th Cir. 2012). (81) Synergistic Int'l, LLC v. Korman, 470 F.3d 162, 172 (4th Cir. (82) See Abercrombie, 537 F.2d at 11. (83) Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 736 F.3d 198, 212 (2d Cir. 2013).......
-
Where There's a Will, There's a Way: Reconciling Theories of Willful Infringement and Disgorgement Damages in Trademark Law
...Group PLC, 313 F.3d 338 (5th Cir. 2002); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168 (3d Cir. 2005); Synergistic Intern., LLC v. Korman, 470 F.3d 162 (4th Cir. 2006).40. These four circuits include the First, Second, Eighth, and Ninth. See Fishman Transducers, Inc. v. Paul, 684 F.3d 187 (1......
-
CHAPTER 12 - § 12.06
...Wildlife Research Center, Inc. v. Robinson Outdoors, Inc., 409 F.Supp.2d 1131, 1136 (D. Minn. 2005); Synergistic Intern., LLC v. Korman, 470 F.3d 162 (4th Cir. 2006).[64] Banjo Buddies, 399 F.3d 168, 174 (3d Cir. 2005).[65] Optimum Technologies, Inc. v. Henkel Consumer Adhesives, Inc., 2006......