Daimler Chrysler successfully opposes FORADODGE application
In Daimler Chrysler Corp v Maydak (Case 91153172, April 4 2008), in a precedential opinion, the Trademark Trial and Appeals Board (TTAB) has granted summary judgment in favour of Daimler Chrysler Corp in its opposition to an application for the mark FORADODGE.
Keith Maydak applied for the registration of the trademark FORADODGE for "consulting services and providing information in the fields of privacy, avoiding legal problems, obtaining government records, correcting government records and counterintelligence". Daimler Chrysler opposed on the grounds that there was a likelihood of confusion with:
- its registered trademarks DODGE, DODGE RAM and DODGE (and design) for automobiles and automotive goods and services; and
- the unregistered designation '4adodge', used in a website address and with a 1-800 telephone number.
In a federal court action between the parties, the US Court of Appeals for the Sixth Circuit affirmed summary judgment in favour of Daimler Chrysler on its claim under the Anti-cybersquatting Consumer Protection Act (ACPA) related to Maydak's registration of the domain name 'foradodge.com' (see Daimler Chrysler Corp v The Net Inc).
Daimler Chrysler based its TTAB summary judgment motion on the doctrine of collateral estoppel, arguing that the Sixth Circuit's determination of the ACPA claim ruled both that:
- the use of FORADODGE in Maydak's domain name was likely to cause confusion with Daimler Chrysler's DODGE marks; and
- the permanent injunction (as affirmed by the Sixth Circuit) barred Maydak from using the term 'foradodge'.
In response, Maydak argued that:
- the district court's adjudication of the ACPA claim applied only to the domain name 'foradodge.com'; and
- the Sixth Circuit determination of the ACPA claim was not dispositive of a trademark claim, since the elements of the claims differed and no consideration was given to the products and services of the parties in analyzing the ACPA claim.
While the TTAB recognized that the elements of the claims were not exactly the same, certain issues litigated before the Sixth Circuit had a bearing on the likelihood of confusion analysis - namely, the determination that:
- Daimler Chrysler's '4adodge' designation was a protectable unregistered trademark; and
- Maydak's FORADODGE mark was phonetically identical and thus confusingly similar to Daimler Chrysler's '4adodge' designation.
The TTAB concluded that the permanent injunction imposed by the Sixth Circuit was dispositive in the opposition proceedings, since it prohibited Maydak from using or registering the mark FORADODGE for any products and services (including the services covered by Maydak's application). The TTAB noted that a federal court decision is typically binding on it. Further, the TTAB recognized that the district court was aware of Maydak's pending application for FORADODGE when the injunction was issued.
Given these circumstances, the TTAB concluded that it was a legal impossibility for Maydak to obtain a registration for the mark. Therefore, Daimler Chrysler was entitled to summary judgment in its favour as a matter of law.
Lara A Holzman and Rowan Morris, Alston & Bird LLP, New York
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