THE WINDSHIELD DOCTOR word mark infringes the GLASS DOCTOR word mark when used in connection with auto glass repair services, the Fourth Circuit found on November 30 in Synergistic Int’l v. Korman, No. 05-2295 (published). In so finding, the court affirmed the Eastern District of Virginia’s grant of summary judgment to Synergistic International, owner of the GLASS DOCTOR mark, but vacated the district court’s award of $142,000 in damages.
The district court’s award represented proprietor Jody Korman’s profits, less certain costs and deductions during the period of infringement. The district court stated that it had balanced the equities of the case in making the award, but did not specify the factors that it had considered, other than Korman’s net profit. The Fourth Circuit found that the district court’s failure to do so was error in light of the Lanham Act’s directive that a successful plaintiff be awarded lost profits, damages, and costs “subject to the principles of equity.” See 15 U.S.C. Sec. 1117(a). The Fourth Circuit adopted the equitable factors used in the Third and Fifth Circuits, namely:
“(1) whether the defendant had the intent to confuse or deceive, (2) whether sales have been diverted, (3) the adequacy of other remedies, (4) any unreasonable delay by the plaintiff in asserting his rights, (5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.”
Korman argued that the district court specifically found that she neither acted in bad faith nor was her use of the infringing mark “malicious, fraudulent, willful or deceitful.” The Fourth Circuit concluded that a “lack of willfulness or bad faith should weigh against an award of damages being made, but does not necessarily preclude such an award.” Instead, the six-factor test should control, which the Fourth Circuit directed the district court to apply in its discretion on remand.