Synergistic International, LLC v. Korman

470 F.3d 162 (4th Cir. 2006)

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Nature of the Case

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Facts

P is a nationwide franchiser and operator of a glass installation and repair business, doing business under the trade name 'GLASS DOCTOR.' P's stores install, as well as repair, glass in both buildings and vehicles, and its trademark has been used since 1991. D started her business in 1987, which she called 'THE WINDSHIELD DOCTOR.' D has been engaged in windshield repair. She does not install any glass. Her 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, D used the name 'GLASS DOCTOR' as a single line listing in the telephone book. Unaware of Synergistic's 'GLASS DOCTOR (R)' 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, D 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.' On August 25, 2004, P's lawyer sent Korman a cease and desist letter, complaining of her use of the name 'GLASS DOCTOR' and her 'THE WINDSHIELD DOCTOR' mark. D stopped using the name 'GLASS DOCTOR.' She continued to use her mark, 'THE WINDSHIELD DOCTOR,' believing it to be protected by her PTO registration. P sued D 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. P 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. P claimed it was entitled to damages from D for any costs it would incur informing the public about the differences between the two businesses, and it claimed that D had been unjustly enriched by her use of the name 'GLASS DOCTOR' from June 1, 2000, to December 31, 2004. The court held for P on all counts. It held that 'THE WINDSHIELD DOCTOR' mark was similar to P's, and was likely to result in confusion by consumers and infringed on P's trademark rights. It found D did not act in bad faith in using the name 'GLASS DOCTOR' or in using the 'THE WINDSHIELD DOCTOR' mark. It found that P had not suffered any actual damages and that attorney fees should not be awarded. The district court awarded damages to P, in the sum of $142,084, on the Lanham Act claims. This award represented D's profits, less certain costs and deductions, from June 1, 2000, through December 31, 2004 -- the period during which D had used the names 'GLASS DOCTOR' and 'THE WINDSHIELD DOCTOR' interchangeably. D appealed. D contends in part that the court failed to apply the appropriate equitable principles in making the damages award.