Daimler Chrysler Corporationv.Keith Maydak

Trademark Trial and Appeal Board

Apr 4, 2008

No. 91153172 (T.T.A.B. Apr. 4, 2008)

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.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91153172
2
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,
Opposition No. 91153172
3
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
Opposition No. 91153172
4
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).

Opposition No. 91153172
5
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).
Opposition No. 91153172
6
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.

Opposition No. 91153172
7
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
Opposition No. 91153172
8
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:

Opposition No. 91153172
9
(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.
Opposition No. 91153172
10
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.
Opposition No. 91153172
11
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.

Opposition No. 91153172
12
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
Opposition No. 91153172
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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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