Daimler Chrysler Corporation v. Keith Maydak

UNITED STATES PATENT AND TRADEMARK OFFICE

THIS OPINION IS A Trademark Trial and Appeal Board

PRECEDENT OF THE TTAB P.O. Box 1451

Alexandria, VA 22313-1451

BUTLER

Mailed: April 4, 2008

Opposition No. 91153172

DAIMLER CHRYSLER CORPORATION

v.

KEITH MAYDAK

Before Quinn, Rogers and Cataldo, Administrative Trademark

Judges.

By the Board:

Applicant seeks to register the mark FORADODGE for

“consulting services and providing information in the fields of

privacy, avoiding legal problems, obtaining government records,

correcting government records, and counterintelligence.”1

As grounds for the opposition, opposer alleges that

applicant’s mark, when used on the recited services, so resembles

opposer’s previously used and registered marks DODGE, DODGE RAM

and DODGE and design for, inter alia, automobiles and automotive

goods and services, as to be likely to cause confusion, mistake

or to deceive.2 Opposer also alleges likelihood of confusion

with its previously used 4ADODGE “designation,” used in a website

1

Application Serial No. 76274100, filed on June 15, 2002, claiming a date of

first use anywhere of December 26, 1996 and a date of first use in commerce of

January 1, 1997.

2

Opposer pleads ownership of Registration Nos. 364669; 569431; 1169189;

1189233; 1409844; and 1762717.

Opposition No. 91153172

address and with 1-800 telephone numbers in connection with

various goods and services offered by opposer.

In his answer, applicant denies the salient allegations of

the notice of opposition.

Although opposer informed the Board in its notice of

opposition, filed August 15, 2002, that the parties were involved

in civil litigation, it was not until September 30, 2003 that

proceedings herein were suspended pending final determination of

the court case involving the parties. This case now comes up on

opposer’s fully briefed motion, filed January 17, 2007, for

summary judgment in its favor based on the final determination in

its favor in the civil action and on opposer’s fully briefed

motion, filed April 4, 2007, to strike as untimely applicant’s

response to opposer’s summary judgment motion.

Opposer’s motion to strike

Applicant’s response to opposer’s motion for summary

judgment was due, as last reset, on Tuesday, April 3, 2007.

Applicant filed his response using the ESTTA filing system on

Sunday, April 8, 2007. Applicant’s response is accompanied by a

certificate of service dated April 5, 2007.

Opposer moves to strike applicant’s response on the bases

that it was late, that it is not signed in conformance with the

applicable rules, and that opposer did not receive its service

copy.

In response, applicant argues that the ESTTA system does not

permit a document to be uploaded without an electronic signature,

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thus suggesting that the signature on the cover page is

acceptable. Applicant argues that he did serve his response on

opposer and, because opposer may obtain the response on-line, the

“failure of the Postal Service to deliver the document was

harmless.” Applicant admits that his response was filed late,

explaining that he attempted to file it on April 7, 2007 but

received an error message. Applicant argues that the Board

should consider his response because any miscalculation was “a

harmless error.”

Trademark Rule 2.193(c)(1)(iii) provides as follows:

Where an electronically transmitted trademark filing is

permitted or required, the person who signs the filing

must either:

(A) Place a symbol comprised of numbers and/or

letters between two forward slash marks in the

signature block on the electronic submission; or

(B) Sign the verified statement using some other

form of electronic signature specified by the

Director.

In this case, applicant used a symbol between the forward

slash marks, “/s/,” followed by his name. This qualifies as a

signature under the Rule. See also PPG Industries, Inc. v.

Guardian Industries Corp., 73 USPQ2d 1926 (TTAB 2005) (“… when a

paper is filed via ESTTA, it must be signed in conformance with

Rule 2.193(c)(1)(iii). As a practical matter, ESTTA will allow

the filing party to complete the submission process only after

the required electronic signature has been entered.”). As to

opposer’s non-receipt of its service copy, though unfortunate,

there is no evidence that applicant actually did not serve a copy

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Opposition No. 91153172

on opposer. Finally, applicant’s response is admittedly late.

However, in view of the importance of ensuring that we adequately

consider the ramifications of the disposition of the civil

action, we have chosen to consider both parties’ submissions on

that subject.3

Summary of the civil litigation4

In the court case, which commenced on September 28, 1998,

the parties are in the same position as they are in this

opposition: opposer herein is the plaintiff and applicant herein

is one of the defendants. Defendants registered the domain name

foradodge.com with Network Solutions, Inc. Plaintiff brought

claims under the Lanham Act for trademark infringement, trademark

dilution, and unfair competition, under state law for trademark

infringement and unfair competition, and under the

Anticybersquatting Consumer Protection Act (“ACPA”). Plaintiff

relied on its registered DODGE marks, its 4ADODGE mark, and its

internet domain name 4ADODGE.COM, registered with Host Networks.

On May 31, 2002, the court granted plaintiff’s motion for summary

judgment in its favor, brought on its ACPA claim only. In doing

so, the court accepted the magistrate judge’s Report and

3

Regarding our consideration of applicant’s late brief, we note that, as

discussed in more detail later in this order, the court’s decision is binding

on the Board. Thus, because both parties were before the court, there is no

prejudice to opposer. This situation, as with situations presenting claim and

issue preclusion, is distinguishable from other cases in which briefs are

filed late and not considered by the Board because of their tardiness. See

Trademark Rules 2.127(a) and 2.127(e); and TBMP §502.02(b) (2d ed. rev. 2004).

4

DaimlerChrysler Corp. v. The Net, Inc., et al, and Keith Maydak, Case No.

98-CV-74186-DT (E.D. Mich. July 29, 2003); aff’d DaimlerChrysler v. The Net,

Inc., et al, and Keith Maydak; Michael Sussman, 388 F.3d 201, 72 USPQ2d 1912

(6th Cir. 2004).

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Opposition No. 91153172

Recommendation (“Rpt. & Rec.”), dated April 8, 2002, as the

findings and conclusions of the court. However, the court noted

that the plaintiff’s remaining claims were still pending and

therefore did not enter a final judgment in favor of the

plaintiff.

After prevailing on the summary judgment motion regarding

its ACPA claim, the plaintiff sought a remedy and final judgment

by moving for a permanent injunction, for dismissal without

prejudice of its remaining claims, and for transfer of the domain

name in the court register. On June 19, 2003, the court accepted

the magistrate judge’s Report and Recommendation on the motion

for permanent injunction and final judgment, dated May 23, 2003,

as the findings and conclusions of the court.5 The court then

granted the permanent injunction and entered a final judgment in

favor of plaintiff. In doing so, the court also granted

plaintiff’s motions for voluntary dismissal without prejudice of

its remaining claims and for transfer of the domain name. The

court also dismissed defendants’ counterclaim (brought against

plaintiff for abuse of process). The order permanently enjoining

defendants for violation of the ACPA was entered by the court on

July 29, 2003. The permanent injunction is discussed in more

detail later in this order.

5

In support of its summary judgment motion in this opposition, opposer

introduced the magistrate judge’s findings and conclusions, articulated in the

Rpts. & Recs., with respect to the summary judgment determination (dated April

8, 2002) and with respect to the imposition of the permanent injunction and

remaining matters (dated May 23, 2003).

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Opposition No. 91153172

Defendants appealed, among other things, the district

court’s grant of summary judgment in plaintiff’s favor on the

grounds that the district court erred when it found that 1) the

mark 4ADODGE qualifies as a protected trademark under the ACPA

and 2) that defendants had a bad faith intent to profit when they

registered the foradodge.com domain name.6 DaimlerChrysler, 72

USPQ2d at 1914. Defendants also appealed as overly broad the

scope of the permanent injunction granted by the district court.

Id. at 1917. The circuit court affirmed the district court on

all grounds raised.

Opposer’s motion for summary judgment

Opposer bases its motion in this case on the doctrine of

collateral estoppel. Opposer argues that, in determining the

ACPA claim, the district court has ruled both that applicant’s

use of “foradodge” in his domain name “foradodge.com” is likely

to be confused with opposer’s DODGE marks and that opposer’s

DODGE marks are protected, distinctive and famous; and the court

further granted broad injunctive relief barring applicant’s use

of the term “foradodge.” In addition to the district court’s

reports and recommendations and rulings, and the decision of the

Sixth Circuit, opposer has introduced with its motion for summary

judgment certified copies of its pleaded DODGE registrations

showing that such registrations are valid and subsisting and are

6

Both of these are elements necessary to establish an ACPA claim under 15

U.S.C. §1125(d)(1)(A), discussed in more detail in the magistrate judge’s Rpt.

& Rec. dated April 8, 2002.

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Opposition No. 91153172

owned by opposer. Consequently, for purposes of this motion for

summary judgment, priority is not in issue with respect to such

marks. See King Candy Co. v. Eunice King's Kitchen, Inc., 496

F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).

In response, applicant argues that opposer is not entitled

to summary judgment because opposer withdrew its trademark claims

and the court only adjudicated rights in the internet domain

names. Applicant argues that the elements considered under the

ACPA claim have no correlation to the elements of a trademark

action, pointing out that in the court case there was no

consideration of the products involved. Applicant argues that

the court never addressed whether the term www.4adodge.com, as

used by opposer, constituted a trademark. Applicant also

contends that there is no evidence of how applicant’s use of his

mark will interfere with opposer’s use of its mark for automobile

parts.

On a motion for summary judgment, the moving party has the

burden of establishing the absence of any genuine issue of

material fact and that it is entitled to judgment as a matter of

law. See Fed. R. Civ. P. 56. A genuine dispute with respect to

a material fact exists if sufficient evidence is presented that a

reasonable fact finder could decide the question in favor of the

non-moving party. See Opryland USA Inc. v. Great American Music

Show, Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,

all doubts as to whether any particular factual issues are

genuinely in dispute must be resolved in the light most favorable

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to the non-moving party. See Olde Tyme Foods Inc. v. Roundy’s

Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).

1. Res Judicata and Collateral Estoppel

Under the doctrine of claim preclusion (res judicata), the

entry of a final judgment “on the merits” of a claim (i.e., cause

of action) in a proceeding serves to preclude the relitigation of

the same claim in a subsequent proceeding between the parties or

their privies, even in those cases where prior judgment was the

result of a default or consent. See Lawlor v. National Screen

Service Corp., 349 U.S. 322, 75 S.Ct. 865, 99 L.Ed. 1122 (1955);

and Chromalloy American Corp. v. Kenneth Gordon, Ltd., 736 F.2d

694, 222 USPQ 187 (Fed. Cir. 1984).

Clearly, the claim adjudicated in the court case under the

ACPA is not the same claim as the one presented in this

opposition proceeding, i.e., priority of use and likelihood of

confusion. Moreover, although applicant references res judicata

in his response, opposer does not base its motion for summary

judgment on claim preclusion.

Under the doctrine of collateral estoppel, or issue

preclusion, if an issue is actually and necessarily determined by

a court of competent jurisdiction, that determination is

conclusive in a subsequent suit involving the same issue and the

same parties, or at least the party against whom the same issue

was adversely determined. The requirements which must be met for

issue preclusion are:

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Opposition No. 91153172

(1) identity of issues in a prior proceeding;

(2) the issues were actually litigated;

(3) the determination of the issues was necessary

to the resulting judgment; and

(4) the party defending against preclusion had a

full and fair opportunity to litigate the issues.

See Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d

1229, 76 USPQ2d 1310 (Fed. Cir. 2005); Jet Inc. v. Sewage

Aeration Systems, 223 F.3d 1360, 55 USPQ2d 1854 (Fed. Cir. 2000);

and Larami Corp. v. Talk To Me Programs Inc., 36 USPQ2d 1840,

1843-1844 (TTAB 1995).

The district court, referencing the plain language of 15

U.S.C. §1125(d)(1), indicated that a plaintiff must prove the

following to succeed on an anticybersquatting claim: 1) it has a

valid trademark entitled to protection; 2) its mark is

distinctive or famous; 3) the defendant’s domain name is

identical or confusingly similar to, or in the case of a famous

mark, dilutive of, the plaintiff’s mark; 4) the defendant used,

registered, or trafficked in the domain name 5) with bad faith

intent to profit.7

Reviewing the findings and conclusions made by the district

court, there are at least some issues which were litigated and

determined that have a bearing on the likelihood of confusion

claim in this opposition proceeding. For example, relying in

part on the statutory definition of a “trademark,” Trademark Act

§45, 15 U.S.C. §1127, the court concluded that plaintiff has a

protected trademark in its 4ADODGE mark, even though such mark is

7

April 8, 2002 Rpt. & Rec., p. 7.

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not registered.8 In addition, the court found that “… the

‘foradodge’ domain name and plaintiff’s ‘4ADODGE’ are

phonetically identical, and thus confusingly similar.”9 Other

likelihood of confusion factors were not determined in the court

case (for example, the relatedness of the parties’ involved goods

and services). However, because we believe that the permanent

injunction, as discussed below, prohibits registration by

applicant of his mark, the Board need not conduct a further

analysis of the applicability of collateral estoppel to opposer’s

substantive claim of priority and likelihood of confusion.

2. The Permanent Injunction

The terms of the permanent injunction are set forth below:

THEREFORE, IT IS ORDERED that the Defendants; The Net, Inc.,

Host Networks, Inc., Mutual Assignment and Indemnification

Company, Michael Sussman, and Keith Maydak, their officers,

agents, servants, attorneys, employees, privies, successors

and assigns, and all holding for and through them, and all

persons in active concert or participation with any of them,

are permanently enjoined from:

(a) using, displaying, advertising, copying, registering,

imitating, or infringing upon the DODGE, 4ADODGE, 1-

800-4ADODGE marks or 4adodge.com, 4adodge.net,

foradodge.com and foradodge.net.

(b) using or displaying DODGE, 4ADODGE, 1-800-4ADODGE, or

colorable imitations thereof including but not limited

to FORADODGE, as a business name, domain name or mark

in any written, oral, or electronic advertisements,

displays, signs, sales promotions, directory listings,

or in any other public communication (including

answering telephones and internet websites);

(c) From using DODGE or 4ADODGE or any other word that is

confusingly similar to DODGE or 4ADODGE as or as part

8

April 8, 2002 Rpt. & Rec., p. 9. There was no dispute that plaintiff’s

registered DODGE marks were entitled to protection. Id.

9

April 8, 2002 Rpt. & Rec., p.16.

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of any trademark, service mark, brand name, trade name,

or other business or commercial designation, in

connection with the sale, offering for sale,

distribution, advertising, or promotion of any product

or service;

(d) Making representations that Defendants’ (sic) or

Defendants’ products or services, are in any way

sponsored, approved, authorized, or affiliated with

Plaintiff;

(e) Otherwise infringing on Plaintiff’s DODGE or 4ADODGE

marks.

The permanent injunction prohibits applicant from using

(subsections (b) and (c), supra) or registering the mark

FORADODGE for any products or services, thus including those

services recited in his application. Moreover, in affirming that

the “scope of the injunction issued by the district court was

entirely appropriate,” the circuit court was aware that “…

defendant Maydak continued to assert throughout the proceedings

that he was entitled to use the “foradodge.com” domain name; he

sought to register “foradodge” with the United States Trademark

Office; and he registered to himself the “foradodge.us” domain

name after this action was filed.”10 DaimlerChrysler, 72 USPQ2d

1917. Thus, the district court was aware of the existence of

applicant’s trademark application pending before the USPTO when

10

See also Rpt. & Rec., May 23, 2003, p. 9. The district court, in

determining that the scope of plaintiff’s proposed permanent injunction (which

is the permanent injunction the court entered) was not overly broad, stated

that “Defendants have repeatedly infringed on plaintiff’s “DODGE” and

“4ADODGE” marks in their websites, and apparently have no intention of ceasing

to do so on their own accord.” The court went on to note, “For example,

defendant Maydak continues to assert … that he is entitled to use the

foradodge.com domain name, and has registered to himself the foradodge.com

domain name.” Id. at fn. 2.

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it adopted the permanent injunction prohibiting applicant from

using or registering his mark.

As the parties are aware, this opposition proceeding was

suspended pending disposition of the court case. The policy

reason for this is that, to the extent that a civil action in a

Federal district court involves issues in common with those in a

proceeding before the Board, the decision of the Federal district

court is typically binding upon the Board, while the decision of

the Board is not binding upon the court. See TBMP §510.02(a) (2d

ed. rev. 2004). Moreover, any final determination made by the

Board is appealable to Federal district court, including to the

district in which the civil action between the parties took

place. See Trademark Act §21(b); Trademark Rule 2.145(c); and

TBMP §901 (2d ed. rev. 2004). Thus, in this case, it is

incumbent upon the Board to give deference to the determinations

of the court, including the remedy entered therein, and consider

the terms of the permanent injunction. As a result, we find that

applicant is precluded from registering his mark. A requisite

condition for registration of a mark which is the subject of an

application based on use or on an application based intent-to-

use, which may only be registered after use commences, is use of

the mark. Thus, because the injunction permanently prohibits

applicant from using the applied-for mark, it is a legal

impossibility for applicant to obtain a registration.

In view thereof, opposer is entitled to summary judgment in

its favor as a matter of law because the terms of the permanent

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injunction prohibit applicant from using or registering his

FORADODGE mark for any goods or services. Accordingly, judgment

is hereby entered against applicant, registration to applicant is

refused, and the opposition is sustained.

☼☼☼

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