Honda Motor Co., Ltd.v.Michael Dalton

Trademark Trial and Appeal Board

Aug 6, 2010

No. 91173105 (T.T.A.B. Aug. 6, 2010)

Mailed: August 6, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Honda Motor Co., Ltd.

v.

Michael Dalton
_____

Opposition No. 91173105
to application Serial No. 78339571
_____

Dyan Finguerra-DuCharme of White & Case LLP for Honda Motor
Co., Ltd.1

Michael Dalton, pro se.
______

Before Bucher, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Michael Dalton, seeks to register in
standard characters on the Principal Register the mark
DEALERDASHBOARD for the following services:
providing automotive dealerships managerial
information concerning their Sales, Service, and
Parts departments key financial indicators of how

1 Opposer’s July 1, 2010 revocation of previous power of attorney
and appointment of new attorney is noted and will be made of
record in due course. Inasmuch as opposer’s decision to
substitute its counsel does not affect applicant in this matter,
applicant’s objections thereto, filed July 2, 2010, and the
parties’ briefing thereof, will be given no consideration.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91173105
2
their dealership is performing via the Internet;
and providing a web site featuring information
about automobile dealerships, automobiles,
automotive parts and accessories, at which users
can link to the retail or wholesale web sites of
others

in International Class 35.2
Opposer, Honda Motor Co., Ltd., has opposed
registration of applicant’s involved mark. As grounds
therefor, opposer alleges as follows:
Opposer manufactures, markets and sells automobiles,
motorcycles, motor scooters and all-terrain vehicles in the
United States and throughout the world;
opposer uses the terms DEALER DASHBOARD and DASHBOARD
on its internal company computer network, accessible only by
opposer’s authorized dealers;
Dashboard is a common term of art in the Internet
industry, denoting a user interface for organizing
and displaying key information. Honda uses and/or
has used the terms DEALER DASHBOARD and DASHBOARD
to describe a tool that presents information to
its authorized dealers about their sales, service
and parts departments;3

the terms comprising the involved alleged mark are
generic for the services identified thereby;

2 Application Serial No. 78339571 was filed on December 11, 2003,
based upon applicant’s assertion of his bona fide intent to use
the mark in commerce under Section 1(b) of the Trademark Act.
During prosecution of the application, applicant amended his
filing basis to assert October 5, 1999 as the date of first use
of the mark anywhere and in commerce under Section 1(a) of the
Trademark Act.
3 Notice of Opposition, para. 5.
Opposition No. 91173105
3
the terms comprising the involved alleged mark are
merely descriptive of the services identified thereby;
on information and belief, Applicant has also
failed to use the mark DEALERDASHBOARD on all of
the goods or services for which he seeks
registration. Specifically, on information and
belief, Applicant is not using the mark
DEALERDASHBOARD in connection with “providing
automotive dealerships managerial information
concerning their Sales, Service, and Parts
departments key financial indicators of how their
dealership is performing via the Internet” as he
has claimed in his application. Because
Applicant’s identification of goods and services
for registration contains false statements,
Registration should be refused;4

and, opposer has a real commercial interest in using
the terms comprising applicant’s mark to identify goods
similar to applicant’s services, and would be damaged by
registration of applicant’s asserted mark.
In his answer, applicant denied the salient allegations
of the notice of opposition.5

4 Id., para. 9.
5 Applicant further asserted certain affirmative defenses, but
did not pursue them by motion or at trial. Accordingly, they are
deemed waived. The remainder of applicant’s asserted affirmative
defenses are more in the nature of amplifications of his denial
of the salient allegations of the notice of opposition and have
been so construed.
In addition, applicant attached exhibits to his answer to the
notice of opposition. Certain exhibits form part of the
proceeding file of the involved application and, as such, are
automatically of record. See Trademark Rule 2.122. The
remainder of the exhibits includes printouts from various third-
party Internet websites. Except in limited circumstances, which
are not present here, an exhibit to a pleading is not evidence on
behalf of the party to whose pleading the exhibit is attached
unless identified and introduced in evidence as an exhibit during
the period for the taking of testimony. Trademark Rule 2.122(c);
and TBMP §317 (2d ed. rev. 2004). Accordingly, these Internet
printouts are not part of the record.
Opposition No. 91173105
4
Evidentiary Objections
Opposer has objected to certain evidence introduced by
applicant. Specifically, opposer objects to Exhibits 43,
46, 47, 49, 51-54, 56, 58, 59, 61, 64-69, and 89-92 to
applicant’s trial testimony deposition as well as Exhibits
BB-LL to applicant’s notice of reliance on the ground that
these exhibits were the subject of opposer’s written
discovery requests but were not produced in response
thereto. Opposer asserts that it timely served
interrogatories and requests for production upon applicant
requesting, inter alia, documents of the type that are the
subject of opposer’s above objections.6 In an interlocutory
order issued on February 29, 2008, the Board ordered
applicant to respond without objection to opposer’s written
discovery requests.7 Opposer timely objected to the above-
numbered exhibits during applicant’s trial testimony
deposition8 and argues in its brief that the above-numbered
and lettered documents were not part of applicant’s
discovery responses. Applicant, for its part, did not file
a trial brief or otherwise respond to the evidentiary
objections raised by opposer in its brief.
Opposer’s objection is sustained. It is well-settled
that a party may not rely at trial upon documents that were

6 Opposer’s February 28, 2007 motion to compel, Exhibit 1.
7 Board’s February 29, 2008 order, p. 3.
8 Dalton Testimony, p. 22-91.
Opposition No. 91173105
5
not produced in response to written discovery requests.
See, for example, Super Valu Stores Inc. v. Exxon Corp., 11
USPQ2d 1539, 1543 (TTAB 1989); National Aeronautics and
Space Administration v. Bully Hill Vineyards Inc., 3 USPQ2d
1671, 1672 n.3 (TTAB 1987); and Shoe Factory Supplies Co. v.
Thermal Engineering Co., 207 USPQ 517, 519 n.1 (TTAB 1980).
Accordingly, these documents are stricken and will be given
no consideration.
Further, we note that applicant’s trial testimony with
regard to the stricken exhibits must be accorded minimal
probative value inasmuch as it is unsupported by any
evidence of record.9
Opposer’s further objections to: Exhibit BB on the
ground of lack of probative value; Exhibits 54, 56, 58, 59,
61, 64-66 on the ground of hearsay; Exhibits GG-KK on the
ground that such documents are not printed publications; and
all of the above documents produced by applicant that were
obtained by means of the Internet “Way Back Machine” on the
ground that such are neither official documents nor self-
authenticating, are moot in light of our above determination
excluding those documents from consideration herein.

9 We hasten to add that even if these documents and testimony had
been considered in our determination herein, the outcome would be
the same.
Opposition No. 91173105
6
The Record
The record consists of the pleadings and the file of
the involved application. In addition, opposer submitted
the trial testimony, with related exhibits, of Cynthia
Mangham, Manager of the Interactive Network Marketing and
Rollout for applicant’s wholly-owned subsidiary, American
Honda Motor Co., Ltd. Opposer further submitted by notice
of reliance the discovery deposition, with exhibits, of
applicant; applicant’s answers to opposer’s first set of
interrogatories and requests for admission; and copies of
printed publications available to the general public.
Applicant, in light of the above objections, submitted
his testimony deposition with related exhibits not otherwise
excluded. Applicant’s evidence submitted by notice of
reliance has been excluded based upon the objections
discussed above.
As noted above, only opposer filed a brief on the
merits of the case.10
Opposer’s Standing
Opposer must prove its standing as a threshold matter
in order to be heard on its substantive claims. See, e.g.,
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185 (CCPA 1982). The purpose of the standing

10 As last reset by the Board’s January 20, 2010 order,
applicant’s brief on the case was due no later than January 30,
2010.
Opposition No. 91173105
7
requirement is to prevent mere intermeddlers from initiating
proceedings. Thus, the Federal Circuit has enunciated a
liberal threshold for determining standing, namely, whether
a plaintiff’s belief in damage has a reasonable basis in
fact and reflects a real interest in the case. See Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d, 1023 (Fed. Cir. 1999).
See also Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988).
In this case, opposer has established that it makes use
of the term “dealer dashboard” to describe a program on its
internal computer network for use by its dealers.11 Opposer
uses the term “dealer dashboard” to describe this program so
that its users can easily find and access it on opposer’s
computer network.12 Furthermore, applicant sent opposer a
cease and desist letter demanding that opposer cease use of
“dealer dashboard” on its internal computer network.13
We find that because opposer seeks to make descriptive
use of the term “dealer dashboard” for a computer-based tool
available to its dealers, and applicant has demanded that
opposer cease such use, opposer has established its standing
to oppose applicant’s mark. See, e.g., Lipton Industries,
supra, (One basis for standing includes “descriptive use of
term in registered mark”); and Ferro Corp. v. SCM Corp., 219

11 Mangham Testimony at 16-18.
12 Id.
13 Answer, para. 4; Dalton Discovery Deposition at 203.
Opposition No. 91173105
8
USPQ 346, 352 (TTAB 1983) (Opposer “has a real interest
sufficient to give it standing. The rationale is that a
competitor should be free from harassment based on the
presumed exclusive right which registration of a generic
term would erroneously accord”) (citation omitted). Based
upon the foregoing, we find that opposer has demonstrated
such an interest.
Claim of Mere Descriptiveness
We turn now to opposer’s claim that DEALERDASHBOARD is
merely descriptive of the services recited in the involved
application. A term is deemed to be merely descriptive of
goods or services, within the meaning of Trademark Act
Section 2(e)(1), if it forthwith conveys an immediate idea
of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. See,
e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). It
further is settled that “[t]he question is not whether
Opposition No. 91173105
9
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods and services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 ( TTAB 2002).
In this case, opposer has introduced dictionary
definitions of the term DEALER. According to these
definitions, DEALER is defined, inter alia, as “one engaged
in buying and selling.”14 In addition, opposer has
introduced by deposition and notice of reliance evidence of
use by third parties of the term DEALER DASHBOARD or
DASHBOARD to describe Internet-based goods or services that
provide managerial and other information to businesses. The
following examples are illustrative:
The Dealer Dashboard appears in your home page
when you login to Autogate Pro. It provides a
real time snapshot of the performance of your
business. The dashboard gauges are clearly
marked, with green indicating the ideal range.
Using Autogate, you can ensure your dealership
operates in the green, maximizing your return on
investment.15

An auto dealership sales management dashboard
<>
So what or who is The Dashboard Spy? As his about
page states, The Dashboard Spy is just a guy
interested in the design of business dashboards.
He could not find any executive dashboard design
source books and so set about creating his own.
Finally convinced to post his extensive collection
of dashboard screenshots online, he was amazed to

14 The American Heritage College Dictionary, 3rd ed. (1993).
15 Dalton Discovery Deposition, Exhibit 23 (www.datamotive.com).
Opposition No. 91173105
10
find how popular it has become.16

What is a Dashboard?
Known by many names (enterprise dashboard,
executive dashboard, digital dashboard, business
dashboard, business intelligence dashboard,
performance dashboard, balanced scorecard, kpi
summary, data visualization, and so on…), it’s
basically a way for business users to get an at-a-
glance understanding of metrics of importance to
them. In addition to acting as a summarization
device, the dashboard also serves to highlight
specific data and allows the user to drill down
and inspect specific items. …17

Using Siebel Dealer Dashboards (Dealer)
Siebel Dealer provides dealer employees with
dashboards that allow them to view the most
important information that they need for their
work on one screen. The following dashboards are
available:
Sales Consultant Dashboard. Includes actual
and goal unit sales, today’s activities, my
calendar, current opportunities, and my
promotions.
Sales Manager Dashboard. Includes actual and
goal unit sales for team, today’s activities, my
calendar, current opportunities, team’s promotion,
and team’s calendar.
Service Employee Dashboard. Includes today’s
activities, my calendar, my promotions, and
current service requests.
Service Management Dashboard. Includes
today’s activities, my calendar, store promotions,
and current service request for team.
Store Dashboard. Includes actual and goal
unit sales for store, today’s activities, my
calendar, current opportunities, team’s
promotions, and teams calendar. To be used by the
store general manager.18

Dashboard
From a simple excel dashboard to a fully

16 Dalton Discovery Deposition, Exhibit 25 (www.dashboardspy.com).
17 Id.
18 Id, Exhibit 27 (http://downlaod.oracle.com).
Opposition No. 91173105
11
integrated enterprise reporting suite, the
Business Dashboard is being quickly adopted as the
new face of Business Intelligence. An enterprise
dashboard allows at-a-glance visualization of
company health and monitoring of key performance
indicators. Simple to understand and high in ROI,
these executive dashboards are becoming “must-
haves” for all enterprises. …19

Dealer Dashboard
Dealer Dashboard Key Performance Indicators
(KPI’s) provide the dealer and service manager
with visibility to the crucial numbers that drive
the performance of the service department. You
have the ability to set target goals for the
average labor dollars per repair order, one line
work order percentages and average hours per
repair order and see the results by year, month,
week or day. By comparing it to the prior year’s
results, you have visibility to improvements in
your department and more importantly areas of
concern.20

Denon Dealer Dashboard
The Dealer Dashboard is the easiest way for Denon
dealers to get the latest information on Denon
products, events, company information and more.
As a Denon dealer, the Dashboard provides you with
all kinds of product related items such as
downloads, images, sell sheets, and more.21

In addition ADP Lightspeed provides a New Dealer
Dashboard that will allow a user to customize
their view of performance factors and track what
is important to them and their department. For
instance sales managers can pick out the specific
performance indicator views as critical in
managing their people and departments and easily
view them at any time. The charts and graphs are
real time and reflect actual transactions as they
happen. The Dashboard makes it easy to know what
is happening in the dealership right now, when

19 Id., Exhibit 28 (www.enterprise-dashboard.com).
20 Id., Exhibit 29 (www.goallinesolutions.com).
21 Id,. Exhibit 30 (http://ca.denon.com).
Opposition No. 91173105
12
it’s most important.22

Excel 2007 Dashboards & Reports For Dummies
Full-color inserts show dashboard reports you can
create.
Excel 2007 offers some new conditional formatting
rules that allow you to add icons to your
dashboards. With icons, you can represent and
distinguish values from one another by using
different shapes and colors. …23

The evidence of record, of which the above is a sample,
supports a finding that DASHBOARD possesses a recognized
meaning in the field of Internet-based business information
tracking and presentation. Specifically, a DASHBOARD is a
real-time graphical presentation of business information
regarding sales, service, parts or inventory, and costs,
displayed as the gauges, lights and numbers on an automobile
dashboard. A DEALER DASHBOARD is the graphical display of
sales, service and other information relating to businesses
engaged in buying and selling goods, particularly
automobiles. As such, DEALERDASHBOARD merely describes,
without conjecture or speculation, a significant
characteristic or feature of applicant’s services, namely,
that they provide Internet-based information regarding
sales, service, and inventory or parts to automobile
dealerships. The evidence of record demonstrates that the

22 Dalton Discovery Deposition, Exhibit 21 (www.boating-
industry.com).
23 Manghan Testimony, Exhibit 21 (Excel 2007 Dashboards & Reports
for Dummies, Wiley Publishing, Inc. (2008)).
Opposition No. 91173105
13
term DEALERDASHBOARD is recognized and used by numerous
third parties to describe Internet-based goods and services
that are used to provide such information. We find,
therefore, that DEALERDASHBOARD merely describes the
services identified thereby within the meaning of Trademark
Act § 2(e)(1); 15 U.S.C. § 1052(e)(1).
Claim of Genericness
As discussed above, the evidence of record establishes
that DEALERDASHBOARD merely describes a function, feature or
use of the recited services. However, we find the evidence
of record is not sufficient to support a finding that
DEALERDASHBOARD is a generic designation for such services.
A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001), citing H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986). The test for determining whether a mark
is generic is its primary significance to the relevant
public. See Section 14(3) of the Act. See also In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra.
Opposition No. 91173105
14
Opposer correctly states that we analyze the primary
significance of the designation in question to the relevant
public by determining
[f]irst, what is the category or class of the
goods or services at issue? Second, is the term
sought to be registered or retained on the
register understood by the relevant public
primarily to refer to that genus of goods or
services?

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
228 USPQ at 530 (Fed. Cir. 1986). In this case, we agree
with opposer that the category or class of the services at
issue is Internet-based information provided to automobile
dealerships regarding sales, services and parts. However,
the evidence of record falls short of establishing that the
relevant consuming public recognizes DEALERDASHBOARD
primarily to refer to that genus of services. As a result,
we are constrained to find on the record before us that
opposer has failed to meet its burden of establishing that
DEALERDASHBOARD is a generic term as applied to the recited
services.
Acquired Distinctiveness
We note that applicant applied for the mark
DEALERDASHBOARD on the Principal Register without a claim of
acquired distinctiveness under Section 2(f) of the Trademark
Act, 15 U.S.C. § 1052(f). We further note that applicant
did not plead acquired distinctiveness in his answer to the
notice of opposition. Applicant’s assertion of “exclusive
Opposition No. 91173105
15
and continuous use of the source identifier and
organizational servicemark DealerDashboard beginning October
5, 1999,”24 even if construed as a claim of acquired
distinctiveness, is not supported by declaration, affidavit,
or evidence. It is settled that applicant has the burden to
establish a prima facie case of acquired distinctiveness.
See Yamaha International Corp. v. Hoshino Gakki Co., Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Accordingly, we find that applicant has failed to
assert a claim of acquired distinctiveness; and to the
extent that applicant’s statements in his answer to the
notice of opposition may be construed as asserting such a
claim, there is no evidentiary support therefor in the
record.
Opposer’s Remaining Claims
Having found that applicant’s mark is merely
descriptive, we do not reach the issue of whether applicant
failed to use the DEALERDASHBOARD mark in connection with
all of the services recited in the involved application. In
addition, opposer’s unpleaded claim of fraud, asserted for
the first time in its brief on the case, will be given no
consideration.
DECISION: Opposer’s opposition to the registration of
application Serial No. 78339571 is sustained on the ground

24 Answer, para 1.
Opposition No. 91173105
16
of mere descriptiveness.