Tuesday, April 15, 2008

Precedential No. 19: TTAB Grants Summary Judgment Against Applicant Enjoined From Use and Registration of His Mark

The Board granted summary judgment to Opposer Daimler Chrysler in its Section 2(d) opposition to registration of the mark FORADODGE for various consulting services. Daimler Chrysler argued that it was entitled to judgment under the doctrine of issue preclusion, based upon a federal court judgment in an Anticybersquatting Consumer Protection Act (ACPA) lawsuit against Applicant Keith Maydak. The Board instead based its grant of summary judgment on the ground that Maydak was permanently enjoined by the federal court from using or registering the term FORADODGE as a mark. Daimler Chrysler Corp. v. Maydak, 86 USPQ2d 1945 (TTAB 2008) [precedential].

Dodge Dart

Applicant Maydak appealed the adverse ruling of the United States District Court for the Eastern District of Michigan, arguing, inter alia, that the injunction was overly broad. The U.S. Court of Appeals for the Sixth Circuit, however, affirmed the judgment on all grounds raised. DaimlerChrysler v. Net Inc., 72 USPQ2d 1912 (6th Cir. 2004). The Board noted that, at the time of its decision, the appellate court was aware that Maydak was seeking to register the mark FORADODGE with the USPTO.

This opposition proceeding had been suspended pending the court's ruling.

"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."

Moreover, because Maydak is permanently enjoined from using the mark FORADODGE, it is "a legal impossibility for applicant to obtain a registration."

Therefore, the Board granted summary judgment to Opposer.

Text Copyright John L. Welch 2008.


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