A Look at the Most Recent Ruling in the Glass Doctor
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 that "the
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."