A Look at the Most Recent Ruling in the Glass Doctor Infringement
The 4th U.S. Circuit Court of Appeal's split-decision in its judgment of the
appeal in the Synergistic International LLC v. Korman case is an interesting
look at how the law works.
According to the Court of Appeals Decision, the case, originally filed
in 2005, centers on the use of the company names "Glass Doctor"
and "Windshield Doctor." Judy Korman operated a company under
the name "Windshield Doctor" in Virginia Beach beginning in
1987 and often listed her company under "Glass Doctor" in the
yellow pages; the Glass Doctor franchise, owned by Synergistic International,
had plans to expand into the same area in the early 2000s.
Citing trademark infringement, Synergistic issued a cease and desist letter
in 2004, at which time Korman stopped listing her company as "Glass
Doctor." She continued using the "Windshield Doctor" name
and Synergistic filed suit.
Last year, the district court ruled that Korman had, in fact, infringed
upon the patent protecting the "Glass Doctor" name but had not
done so in bad faith. It also ruled that Synergistic had not suffered
"actual damages" and did not award attorney fees, but did award
the company $142,084, that "represented Korman's profits, less certain
costs and deductions, from June 1, 2000 through December 31, 2004-the
period during which Korman had used the names 'Glass Doctor' and 'The
Windshield Doctor' interchangeably."
Korman appealed the decision, citing error in the court's initial findings
that her use of "The Windshield Doctor" was equivalent to trademark
infringement and unfair competition to Synergistic's "Glass Doctor"
and arguing that the monetary award issued to Synergistic was an abuse
of the court's discretion.
Exploring Korman's argument that the courts' trademark infringement ruling
was incorrect, Judges Williams, King and Dever wrote in their decision
that "We have recognized that the line between a 'descriptive' mark
and a 'suggestive mark' is thinly drawn," and discussed the use of
the "dominant" word in both company names, "Doctor."
Whereas in the initial court ruling, it was determined that the word "doctor"
suggests 'the characteristics or quality of healing, from which a consumer
must imagine that 'healing glass' means repairing or replacing,"
Korman asserted that the word "doctor" as used by both companies
is merely descriptive and means "to restore to good condition,"
or "to repair."
Ultimately, the judges ruled that "Synergistic's 'Glass Doctor' mark
is properly deemed 'suggestive.' In this regard, we are obliged to defer
to the determination of the [PTO], which constitutes 'prima facie evidence
of whether the mark is descriptive or suggestive'
Indeed, the public
is more likely to view the word 'doctor' to mean 'healing,' as Synergistic
maintains, rather than to connote 'repair,' as Korman asserts."
Korman had also argued that Synergistic could not own exclusive right
to the name "Glass Doctor" in relation to windshield repair,
as it was never registered specifically for that purpose, but the judges
reviewing the appeal wrote in their opinion that "we, however, have
not adopted such a narrow view of a trademark's registration," and
registration of a suggestive mark should be broadly
construed, and the appropriate reading is not limited to the text of the
mark's registered purpose. In this regard, it is apparent that windshield
repair and windshield installation are related services. In fact, the
parties have stipulated that potential customers have called Korman assuming
that her business also installs windshields."
The court also rejected Korman's argument that the word "doctor"
is commonly used by business providing similar services, determining that
"it is not commonly used by business dealing with glass or windshield
installation and repair."
Ultimately, by overriding Korman's appeal, the Court of Appeals upheld
the district court's ruling that The Windshield Doctor is an infringement
of the Glass Doctor trademark.
Despite the decision, the judges overturned the $140,000+ award imposed
by the lower court, writing "we agree with Korman that the district
court abused its discretion in making the damages award, and that the
foregoing factors are appropriate for consideration in connection with
damages issues in Lanham Act litigation
In other words, a lack
of willfulness or bad faith should weigh against an award of damages being
made, but does not necessarily preclude such an award." They also
ruled that "[w]e are satisfied that, in this situation, Synergistic's
non-entry into the Virginia Beach marketplace is an important factor with
respect to the assessment of any damages. The fact that a plaintiff had
not entered the relevant marketplace when the infringement was ongoing,
in combination with the fact that no sales were diverted, should weigh
against an award being made
Having provided this guidance to the
district court, we vacate its Opinion as to the Lanham Act damages award
and remand for further proceedings. We affirm the court's ruling, however,
and observe that its injunction ruling, its cancellation of Korman's 'The
Windshield Doctor' mark, its denial of attorney fees, and its award of
$500 to Synergistic on the Virginia Consumer Protection Act claim stand."