Synergistic International, LLC v. Jody Fine Korman, individually

PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
 SYNERGISTIC INTERNATIONAL, LLC,
Plaintiff-Appellee,
v.
JODY FINE KORMAN, individually and
d/b/a The Windshield Doctor, d/b/a
A Windshield Doctor, d/b/a Glass No. 05-2295 Doctor,
Defendant-Appellant,
and
DARIN BLATNER; STEVEN ALAN
KORMAN,
Defendants. 
Appeal from the United States District Court
for the Eastern District of Virginia, at Norfolk.
Henry Coke Morgan, Jr., Senior District Judge.
(CA-05-49-2)
Argued: September 19, 2006
Decided: November 30, 2006
Before WILLIAMS and KING, Circuit Judges, and
James C. DEVER III, United States District Judge
for the Eastern District of North Carolina,
sitting by designation.
Affirmed in part, vacated in part, and remanded by published opinion.
Judge King wrote the opinion, in which Judge Williams and Judge
Dever joined.

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COUNSEL
ARGUED: John Warren Hart, BEATON & HART, P.C., Virginia
Beach, Virginia, for Appellant. William Merrill Bryner, KIL-
PATRICK STOCKTON, L.L.P., Winston-Salem, North Carolina, for
Appellee. ON BRIEF: Christopher P. Bussert, James H. Sullivan,
KILPATRICK STOCKTON, L.L.P., Atlanta, Georgia, for Appellee.
OPINION
KING, Circuit Judge:
Defendant Jody Fine Korman appeals from the district court’s
award of summary judgment and damages to plaintiff Synergistic
International, LLC, in this trademark dispute. See Synergistic Int’l,
LLC v. Korman, No. 2:05-CV-49 (E.D. Va. Oct. 20, 2005) (the
"Opinion"). Korman makes two contentions of error: first, that the
court erred in ruling that Korman’s trademark, "THE WINDSHIELD
DOCTOR," infringed Synergistic’s trademark, "GLASS DOC-
TOR®"; and second, that the court erred in awarding more than
$142,000 in damages to Synergistic. As explained below, we affirm
on the liability ruling, but vacate the court’s award of damages and
remand.
I.
A.
Synergistic is a nationwide franchiser and operator of a glass instal-
lation and repair business, doing business under the trade name
"GLASS DOCTOR®."1 On May 31, 1977, Synergistic’s predecessor-
1The facts underlying this appeal are drawn primarily from stipulated
facts in the district court (the "Stipulations") and Korman’s testimony
during the court’s one-day trial on remedies. The Stipulations, found at
J.A. 479-87, were spelled out in the court’s "Order of Final Pretrial Con-
ference" of August 29, 2005. (Citations to "J.A. ___" refer to the Joint
Appendix filed in this appeal.)
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in-interest (a company called Glass Doctor, Inc.) received a federal
service mark from the United States Patent and Trademark Office (the
"PTO") for "GLASS DOCTOR" in connection with the "installation
of glass in buildings and vehicles." Stipulations ¶ 31.2 Synergistic’s
"GLASS DOCTOR®" stores install, as well as repair, glass in both
buildings and vehicles, and its trademark has been used since 1991 in
connection with the windshield repair aspect of its business. Ninety
to ninety-five percent of Synergistic’s business involves windshield
repair and installation, performed through mobile facilities that travel
to its customers’ locations.
The "GLASS DOCTOR®" mark has become incontestable under
the Lanham Act, specifically the provisions of 15 U.S.C. § 1065, in
that it has been continuously used in commerce for more than five
years since its initial PTO registration.3 The parties have stipulated
that Synergistic’s "GLASS DOCTOR®" mark qualifies for legal pro-
tection under the Lanham Act. See Stipulations ¶ 31. The PTO issued
the "GLASS DOCTOR®" registration on the ground that the mark is
inherently distinctive.4 As a condition thereof, however, the PTO
required Synergistic to disclaim an exclusive right in the word
"GLASS," apart from its use in its mark. Therefore, the dominant
word of Synergistic’s "GLASS DOCTOR®" mark is "DOCTOR."
2Throughout this opinion, we use the terms "federal service mark,"
"trademark," and "mark" interchangeably. These terms refer to a mark
used in commerce that is registered by the PTO and placed on the PTO’s
official list of trademarks, called the "principal register."
3The Lanham Act was enacted in 1946 to provide government protec-
tion for trademarks by prohibiting infringements upon the rights of trade-
mark holders. See Pub. L. No. 79-489 (1946). The Act is codified at 15
U.S.C. §§ 1051-1127.
4The PTO is authorized, pursuant to 15 U.S.C. § 1052(f), to register a
trademark that is distinctive. "An identifying mark is distinctive and
capable of being protected if it either (1) is inherently distinctive or (2)
has acquired distinctiveness through secondary meaning." Two Pesos,
Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992). Synergistic’s
"GLASS DOCTOR®" mark was registered without a showing of sec-
ondary meaning by the PTO, indicating that the PTO determined the
"GLASS DOCTOR®" mark to be inherently distinctive on its face. See
Stipulations ¶ 31.
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Although Synergistic and its predecessors-in-interest have renewed
the "GLASS DOCTOR®" registration several times since the PTO’s
initial approval in 1977, they have never updated the application;
therefore, their registration of "GLASS DOCTOR®" does not specifi-
cally identify the mark’s use in connection with the repair of wind-
shields. Synergistic has used the "GLASS DOCTOR®" mark in
nationwide advertising, but it did not enter the Virginia Beach, Vir-
ginia, area — or use its "GLASS DOCTOR®" mark there — until
January 2005, when it decided to operate a "GLASS DOCTOR®"
store in Virginia Beach.
Korman, on the other hand, started her business, which she called
"THE WINDSHIELD DOCTOR," in Virginia Beach in 1987.5 Since
its inception, Korman’s business has been engaged in windshield
repair; her business does not install any glass. Korman’s business is
mobile, in that she normally travels to her customers’ locations to pro-
vide windshield repair services. She advertises her business in the
telephone yellow pages and through fliers and business cards. In
2000, Korman used the name "GLASS DOCTOR" as a single line
listing in the telephone book. Unaware of Synergistic’s "GLASS
DOCTOR®" 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, Korman 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." Stipulations ¶ 23.
In order to obtain her PTO registration, Korman was required to dis-
claim any use of the word "WINDSHIELD," apart from "THE
WINDSHIELD DOCTOR" mark. As a result, the dominant word in
Korman’s "THE WINDSHIELD DOCTOR" mark is "DOCTOR," the
same dominant word used in Synergistic’s "GLASS DOCTOR®"
mark.
On August 25, 2004, Synergistic’s lawyer sent Korman a cease and
desist letter, complaining of her use of the name "GLASS DOCTOR"
5Our use of Korman’s "THE WINDSHIELD DOCTOR" mark in this
opinion does not contain the registered symbol "®" because the district
court, by its Opinion, exercised its authority under 15 U.S.C. § 1119 and
cancelled the mark’s registration.
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and her "THE WINDSHIELD DOCTOR" mark. Synergistic was then
contemplating a move into the Virginia Beach area and wanted to pre-
clude Korman’s use of the names "GLASS DOCTOR" and "THE
WINDSHIELD DOCTOR." In Synergistic’s view, "THE WIND-
SHIELD DOCTOR" mark caused confusion among consumers
because both Synergistic and Korman would list their businesses
under the same heading in the telephone yellow pages. And, even
though Korman offered only windshield repair services (in contrast to
the repair and installation services provided by Synergistic’s "GLASS
DOCTOR®" stores), the businesses would be in competition with
each other. Indeed, as stipulated here, potential customers made calls
to Korman about windshield installation (rather than repair) services,
and such potential customers had to decide whether to repair their
windshields or have new ones installed. See Stipulations ¶ 41.
After receiving the cease and desist letter from Synergistic, Kor-
man spoke to her father, who had previously used the name "GLASS
DOCTOR" in a similar business he operated in Richmond, Virginia,
between 1974 and 1989. Korman learned that her father had received
the same kind of letter in 1989 from an unknown "GLASS DOC-
TOR" entity, asserting that he was not entitled to use that name. As
a result, her father ceased using the name "GLASS DOCTOR" in his
business, and the issue was not further pursued. When Korman
received Synergistic’s cease and desist letter in August 2004, she
stopped using the name "GLASS DOCTOR." Despite the objection
of Synergistic, however, she continued to use her own mark, "THE
WINDSHIELD DOCTOR," believing it to be protected by her PTO
registration.
B.
Because of Korman’s continued use of "THE WINDSHIELD
DOCTOR" mark, Synergistic initiated this proceeding in the Eastern
District of Virginia, on January 22, 2005. Synergistic alleged two
Lanham Act claims, 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,
see Va. Code Ann. §§ 59.1-196 to -207. Synergistic’s lawsuit sought
cancellation, pursuant to the Lanham Act, of Korman’s "THE WIND-
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SHIELD DOCTOR" mark; an injunction prohibiting Korman from
using the name "GLASS DOCTOR" as well as her "THE WIND-
SHIELD DOCTOR" mark; plus damages and attorney fees.
On August 2, 2005, after discovery, Korman filed a motion for
summary judgment. Thereafter, on August 15, 2005, Synergistic filed
a cross-motion seeking summary judgment. Before ruling on either
motion, the district court conducted a pre-trial conference, and the
parties agreed to the Stipulations. In the Stipulations, Synergistic
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 busi-
nesses. See Stipulations ¶¶ 27-29. Synergistic asserted, however, that
it was nevertheless entitled to damages from Korman for any costs it
would incur informing the public about the differences between the
two businesses, and it claimed that Korman had been unjustly
enriched by her use of the name "GLASS DOCTOR" from June 1,
2000, to December 31, 2004.
Relying on the Stipulations and its interpretation of the applicable
legal principles, the district court advised the parties, on September
9, 2005, that it would award summary judgment to Synergistic on all
of its claims, federal and state, and that it would deny Korman’s
cross-motion for summary judgment. The court then conducted a brief
trial on September 19, 2005, for the sole purpose of assessing reme-
dies. At trial, Synergistic called Korman to testify, and she was exam-
ined by counsel for both parties. Korman did not present any evidence
beyond her own testimony.
Following the remedies trial, the district court issued its Opinion of
October 20, 2005, from which this appeal emanates.6 In analyzing
Synergistic’s four claims, the court determined that the Lanham Act
claims for trademark infringement and unfair competition, as well as
the two state law claims, required the same proof on liability. See
Opinion 5-6, 17-18. The court concluded that Synergistic’s "GLASS
DOCTOR®" trademark was the senior of the two marks (first in time
of use and first to register with the PTO) and that it was a suggestive,
strong mark, entitled to protection from the use of similar marks for
6The Opinion is found at J.A. 790-813.
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similar products. See id. at 7-11. Because Korman’s "THE WIND-
SHIELD DOCTOR" mark was similar to Synergistic’s "GLASS
DOCTOR®" mark, and had been used in connection with similar
products, the court concluded that "THE WINDSHIELD DOCTOR"
mark was likely to result in confusion by consumers and infringed on
Synergistic’s trademark rights. See id. at 7-17.
In addition to ruling on liability, the court made several findings
relating to the remedies issue. First, it found that Korman did not act
in bad faith in using the name "GLASS DOCTOR" or in using the
"THE WINDSHIELD DOCTOR" mark. See Opinion 20-21. Second,
the court found that Synergistic had not suffered any actual damages
from Korman’s infringement activities. See id. at 22. Third, it found
that this case was neither exceptional nor entailed bad faith infringe-
ment, and thus that attorney fees should not be awarded. See id. at 23.
By its Opinion, the district court awarded damages to Synergistic,
in the sum of $142,084, on the Lanham Act claims. See Opinion 22.
This award represented Korman’s profits, less certain costs and
deductions, from June 1, 2000, through December 31, 2004 — the
period during which Korman had used the names "GLASS DOC-
TOR" and "THE WINDSHIELD DOCTOR" interchangeably. In so
ruling, the court found that the financial remedy should be limited to
the foregoing four-and-a-half year time period. See id.7 The court
observed, in making the damages award, that it had balanced the equi-
ties of the case. See id. It did not, however, specify any factors it had
considered in that regard, other than Korman’s net profit. The court
also awarded Synergistic $500 on its state law Virginia Consumer
Protection Act claim. See id. at 21-22. Finally, the court cancelled
Korman’s "THE WINDSHIELD DOCTOR" mark, pursuant to its
authority under the Lanham Act,8 and it awarded an injunction to
7Korman’s gross sales for the relevant time period were $466,010, a
sum deduced from her tax returns and interrogatories. Korman asserted
that her sales were not all profit, however, and sought to deduct the sum
of $323,926, representing the costs of running her business during the
relevant period. Synergistic, on the other hand, asserted that Korman’s
proper deductions were $284,275, resulting in a $38,651 discrepancy.
The district court ultimately found that $142,084 was Korman’s net
profit during the applicable time frame. See Opinion 22.
8Section 1119 of Title 15, in pertinent part, vests a federal court with
the authority to "order the cancelation of registrations."
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Synergistic against Korman’s future use of the name "GLASS DOC-
TOR" and her use of "THE WINDSHIELD DOCTOR" mark. See id.
at 23.
Korman has timely appealed, and we possess jurisdiction pursuant
to 28 U.S.C. § 1291.
II.
In assessing a trademark dispute, we review de novo a district
court’s award of summary judgment. CareFirst of Md., Inc. v. First
Care, P.C., 434 F.3d 263, 267 (4th Cir. 2006). Summary judgment is
proper "if the pleadings, depositions, answers to interrogatories, and
admissions on file, together with the affidavits, if any, show that there
is no genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law." Fed. R. Civ. P. 56(c).
Summary judgment may be granted in a trademark dispute when the
material, undisputed facts disclose a likelihood of confusion. See
Lone Star Steakhouse & Saloon, Inc. v. Alpha of Va., Inc., 43 F.3d
922, 935 (4th Cir. 1995). On the other hand, we review for abuse of
discretion a district court’s award of damages in a trademark dispute.
See 15 U.S.C. § 1117(a) ("The court shall assess such profits and
damages or cause the same to be assessed under its discretion."); Shell
Oil Co. v. Commercial Petroleum, Inc., 928 F.2d 104, 108-09 (4th
Cir. 1991). A district court has abused its discretion in making an
award of damages if it was "guided by erroneous legal principles" or
the award rested "upon a clearly erroneous factual finding." Morris v.
Wachovia Secs., Inc., 448 F.3d 268, 277 (4th Cir. 2006) (internal quo-
tation marks omitted).
III.
Korman makes two contentions of error in this appeal. First, she
maintains that the district court erred in concluding that the use of her
mark, "THE WINDSHIELD DOCTOR," constituted trademark
infringement and unfair competition on Synergistic’s "GLASS DOC-
TOR®" mark. Second, she contends that the court abused its discre-
tion in awarding more than $142,000 in damages to Synergistic
pursuant to the Lanham Act. We assess these contentions in turn.
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A.
In order to prevail on claims of trademark infringement and unfair
competition under the Lanham Act, a plaintiff is obliged to show the
court that "it ha[d] a valid, protectible trademark and that the defen-
dant’s use of a colorable imitation of the trademark is likely to cause
confusion among consumers." Lone Star Steakhouse & Saloon, Inc.
v. Alpha of Va., Inc., 43 F.3d 922, 930 (4th Cir. 1995).9 In this pro-
ceeding, the parties have stipulated that Synergistic’s mark is protect-
ible because it is incontestable. See Stipulations ¶ 31. This stipulation
of "incontestability provides a strong presumption in favor of the
mark’s predictability and validity," but it does not, in and of itself,
establish the statutory requirement of likelihood of confusion. Lone
Star, 43 F.3d at 933. Therefore, we are obligated to examine de novo
whether the confusion element of Synergistic’s claims has been satis-
fied. In assessing the likelihood of confusion issue, our Court has
identified seven factors that should be considered:
(1) the strength or distinctiveness of the [plaintiff’s] mark;
(2) the similarity of the two marks;
(3) the similarity of the goods and services that the marks
identify;
(4) the similarity of the facilities that the two parties use
in their businesses;
(5) the similarity of the advertising the two parties use;
(6) the defendant’s intent; and
9Like the district court, we analyze Synergistic’s claims under the
applicable Lanham Act principles for infringement and unfair competi-
tion. See Lone Star, 43 F.3d at 930 n.10 ("The test for trademark
infringement and unfair competition under the Lanham Act is essentially
the same as that for common law unfair competition under Virginia law
because both address the likelihood of confusion as to the source of the
goods or services involved.").
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(7) actual confusion.
Id. at 933 (citing Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527
(4th Cir. 1984)). Not all of these factors will be relevant in every
trademark dispute, and there is no need for each factor to support
Synergistic’s position on the likelihood of confusion issue. See Pizze-
ria Uno, 747 F.2d at 1527. We emphasized in Pizzeria Uno, however,
that the first factor — the strength or distinctiveness of the plaintiff’s
mark — is important to an assessment of the confusion issue. See id.
The parties in this dispute have understandably focused on that factor.10
Specifically, Korman contends that the district court erred in its
ruling on the first factor in three ways: (1) in deciding that Synergis-
tic’s "GLASS DOCTOR®" mark was "suggestive" rather than "de-
scriptive"; (2) in affording Synergistic’s mark, even if it is suggestive,
an overly broad scope of protection against others using similar trade-
marks for similar services; and (3) in failing to find that Synergistic’s
mark, even if it is suggestive, is nevertheless weak and subject to lim-
ited protection. We examine these assertions in turn.
1.
Korman first contends on the confusion issue that Synergistic’s
"GLASS DOCTOR®" mark is "descriptive" rather than, as the district
court found, "suggestive." Under the applicable principles, a mark
submitted to the PTO for registration falls into one of "four groups in
an ascending order of strength or distinctiveness: (1) generic; (2)
descriptive; (3) suggestive; and (4) arbitrary or fanciful." Pizzeria
Uno, 747 F.2d at 1527. We have recognized that the line between a
"descriptive" mark and a "suggestive" mark is thinly drawn, and we
have defined the distinction as follows:
[A] word or figure is descriptive if it identifies a characteris-
tic or quality of an article or service, and a suggestive term
10Although an analysis of the first factor is the most probative to this
appeal, a court should generally evaluate a trademark dispute in light of
all relevant factors. In this appeal, we agree with the district court’s anal-
ysis on the other factors, which also supports its determination of
infringement and unfair competition. See Opinion 11-17.
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is one which suggests rather than describes, some character-
istic of the goods to which it is applied and requires the con-
sumer to exercise his imagination to reach a conclusion as
to the nature of these goods.
Id. at 1528 (internal quotation marks omitted). As Judge Russell
explained in Pizzeria Uno, "[g]enerally speaking, if the mark imparts
information directly, it is descriptive. If it stands for an idea which
requires some operation of the imagination to connect it with the
goods, it is suggestive." Id. (internal quotation marks omitted). The
distinction between a "descriptive" mark and a "suggestive" mark is
important, of course, because a mark’s classification determines the
level of protection it is entitled to receive. See id. at 1527. When a
registered trademark contains a disclaimed word (here, the words
"GLASS" in Synergistic’s "GLASS DOCTOR®" mark and "WIND-
SHIELD" in Korman’s "THE WINDSHIELD DOCTOR" mark), a
reviewing court must look mainly at the use of the dominant word
("DOCTOR" for both marks) in making its assessment of whether a
mark is "suggestive" or "descriptive." See id. at 1529-30.
In determining that the "GLASS DOCTOR®" mark is "sugges-
tive," the district court observed that the dominant word "DOCTOR"
suggests "the characteristics or quality of healing, from which a con-
sumer must imagine that ‘healing glass’ means repairing or replac-
ing." Opinion 9. Korman, on the other hand, asserts that the court
erred because the dominant word is only a "descriptive" one, in light
of the accepted dictionary definition of "doctor." She asserts that
"doctor" means "to restore to good condition" or "to repair." Accord-
ing to Korman, the dominant word "DOCTOR" in Synergistic’s mark
stands for repairing glass or windshields, and it thus is "descriptive"
only, as the word "DOCTOR" in the mark connotes "repair," without
the use of any imagination.
In these circumstances, we agree with the district court that Syner-
gistic’s "GLASS DOCTOR®" mark is properly deemed "suggestive."
In this regard, we are obliged to defer to the determination of the
PTO, which constitutes "prima facie evidence of whether the mark is
descriptive or suggestive." Lone Star, 43 F.3d at 934. If the PTO
believes a mark to be "descriptive," the registrant must establish some
secondary meaning before it grants registration. See id. If the PTO did
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not require proof of secondary meaning, it has presumptively deter-
mined the mark to be "suggestive." See id. This presumption, how-
ever, can be rebutted by a party defending against an infringement
claim. See id. Here, the parties have stipulated that Synergistic’s
"GLASS DOCTOR®" mark was registered by the PTO without any
proof of secondary meaning, and that the PTO determined the
"GLASS DOCTOR®" mark to be "suggestive." See Stipulations ¶ 31.
As a result, Synergistic is entitled by law to the rebuttable presump-
tion that its "GLASS DOCTOR®" mark is suggestive. See Lone Star,
43 F.3d at 934. And, although Korman had the opportunity to rebut
the presumption, she failed to do so.
Indeed, the public is more likely to view the word "doctor" to mean
"healing," as Synergistic maintains, rather than to connote "repair," as
Korman asserts. See CareFirst, 434 F.3d at 267 (concluding that deci-
sions on likelihood to confuse should be viewed in light of what con-
sumers perceive, not "‘in a prolonged and minute comparison of the
conflicting marks in the peace and quiet of judicial chambers’" (quot-
ing 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:58 (4th ed. 2005))). In viewing the word "doctor"
to mean "healing," some imagination is necessary in order to deduce
that "healing" applies to the repair or installation of glass and wind-
shields. And, because the use of imagination is essential to an under-
standing of the real meaning behind Synergistic’s "GLASS
DOCTOR®" mark, the district court properly concluded that the
"GLASS DOCTOR®" mark was "suggestive," rather than "descrip-
tive."
2.
Korman’s fallback contention on the confusion issue is that, even
though Synergistic’s "GLASS DOCTOR®" mark may be suggestive,
the district court should have limited the scope of the mark’s protec-
tion to the context in which it was registered. Here, Synergistic’s
"GLASS DOCTOR®" mark was registered with the PTO for use in
connection with the "installation of glass in buildings and vehicles."
Stipulations ¶ 31. As a result, Korman contends that Synergistic can-
not own the exclusive right to use its "GLASS DOCTOR®" mark in
connection with the repair of windshields, in that it was never regis-
tered for that purpose. In support of this assertion, Korman relies on
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the Third Circuit’s ruling in Natural Footwear Ltd. v. Hart, Schaffner
& Marx, 760 F.2d 1383 (3d Cir. 1985). There, the court concluded
that the purpose behind requiring business owners to register trade-
marks "is best served by limiting the impact of a registered mark to
only the specific terms of the registration so as to allow parties inter-
ested in marketing products with a new mark to rely as fully as possi-
ble on the registry." Id. at 1396.
We, however, have not adopted such a narrow view of a trade-
mark’s registration. As Judge Russell explained in Pizzeria Uno, a
suggestive mark is entitled to protection against "the same or a con-
fusing mark on the same product, or related products, and even on
those which may be considered by some to be unrelated but which the
public is likely to assume emanate from the trademark owner." 747
F.2d at 1527 (emphasis removed) (internal quotation marks omitted).
As a result, the PTO’s registration of a suggestive mark should be
broadly construed, and the appropriate reading is not limited to the
text of the mark’s registered purpose. See id.11 In this regard, it is
apparent that windshield repair and windshield installation are related
services. In fact, the parties have stipulated that potential customers
have called Korman assuming that her business also installs wind-
shields. See Stipulations ¶ 41. In these circumstances, the district
court did not improperly afford Synergistic’s "GLASS DOCTOR®"
mark an overly broad scope of protection against Korman’s use of a
similar trademark for similar services.
3.
Korman finally contends, on the confusion issue, that even though
Synergistic’s "GLASS DOCTOR®" mark is suggestive, it must nev-
ertheless be deemed "weak" because the dominant word "DOCTOR"
is commonly used by businesses providing similar services. A deter-
mination that a challenged mark is suggestive or descriptive is, of
11Certain of our sister circuits have also concluded that a trademark’s
protection is not limited to the purposes specified in its PTO registration,
and that such protection applies to similar goods if another trademark is
likely to cause confusion. See, e.g., E. Remy Martin & Co., S.A. v. Shaw-
Ross Int’l Imps., Inc., 756 F.2d 1525, 1530 (11th Cir. 1985); Am. Foods,
Inc. v. Golden Flake, Inc., 312 F.2d 619, 623 (5th Cir. 1963).
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course, only the first step in an analysis of the likelihood of confusion
issue. See Pizzeria Uno, 747 F.2d at 1530-31. After making the initial
determination, a court is obliged to assess the strength or weakness
of the mark. See CareFirst, 434 F.3d at 269. If the mark is found to
be "weak," it is entitled to less protection from potential infringers.
See id. at 270. As we emphasized in CareFirst, "[t]he strength of a
mark is the degree to which a consumer in the relevant population,
upon encountering the mark, would associate the mark with a unique
source." Id. at 269. The strength issue is thus properly evaluated on
the basis of the mark’s conceptual and commercial strength. See id.
A court should measure a mark’s conceptual strength by focusing
on "the linguistic or graphical ‘peculiarity’ of the mark . . . considered
in relation to the product, service, or collective organization to which
the mark attaches." CareFirst, 434 F.3d at 269. In assessing the con-
ceptual strength of a challenged mark, the frequency with which a lin-
guistic or graphical term is used in other trademark registrations must
be carefully examined. See id. at 270 (concluding that CareFirst’s
mark, used in connection with HMO health care organization, was
weak because many health care businesses used some variation of
words "care" and "first" in their marks); Petro Stopping Ctrs, L.P. v.
James River Petroleum, Inc., 130 F.3d 88, 93-94 (4th Cir. 1997) (rec-
ognizing that word "PETRO" is commonly used in marks dealing
with fuel stations; therefore, mark using "PETRO" within fuel service
industry is weak); Arrow Distilleries, Inc. v. Globe Brewing Co., 117
F.2d 347, 351 (4th Cir. 1941) (observing that word "arrow" is com-
monly used in marks in beer industry; therefore, mark using that word
within beer industry is weak).
Although the district court did not specifically assess the concep-
tual strength of Synergistic’s "GLASS DOCTOR®" mark, we never-
theless see it as conceptually strong. First, Korman admitted that,
although the word "doctor" is commonly used in other industries, it
is not commonly used in businesses dealing with glass or windshield
installation and repair. See Interrogatory Responses ¶ 19.12 And Kor-
man has presented no evidence that similar installation and repair
businesses use the word "doctor" in their marks. Second, "[t]he
commercial-strength inquiry, by contrast, looks at the marketplace
12Korman’s Interrogatory Responses are found at J.A. 110-30.
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and asks if in fact a substantial number of present or prospective cus-
tomers understand the designation when used in connection with a
business to refer to a particular person or business enterprise." Care-
First, 434 F.3d at 269 (internal quotation marks omitted). By its Opin-
ion, the court determined Synergistic’s mark to be commercially
strong, in that Synergistic has done extensive national advertising and
supports a 133-unit franchise business. See Opinion 10. Korman does
not contest this aspect of this dispute, and we accept the conclusion
that Synergistic’s "GLASS DOCTOR®" mark is commercially
strong.
In these circumstances, we agree with the district court that Kor-
man infringed on Synergistic’s legitimate rights under the Lanham
Act because the "THE WINDSHIELD DOCTOR" mark created a
likelihood of confusion with Synergistic’s "GLASS DOCTOR®"
mark. As a result, we affirm the court’s finding of liability against
Korman on Synergistic’s Lanham Act and state law claims.
B.
Korman next maintains that, even if she is liable under the Lanham
Act, the district court erred in its award of damages to Synergistic
under the Act. In this regard, she maintains that the court, in contra-
vention of applicable law, failed to apply the appropriate equitable
principles in making the damages award. Section 1117(a) of Title 15
provides, as to Lanham Act claims, that a successful plaintiff is enti-
tled, "subject to the principles of equity, to recover (1) defendant’s
profits, (2) any damages sustained by the plaintiff, and (3) the costs
of the action." Importantly, it also provides that such damages "shall
constitute compensation and not a penalty." 15 U.S.C. § 1117(a). In
general, however, the Lanham Act gives little guidance on the equita-
ble principles to be applied by a court in making an award of dam-
ages.
By its Opinion, the district court awarded damages of more than
$142,000 to Synergistic, but did not specify the equitable factors it
had utilized in making such an award. The court summarily stated,
however, that the equities had been balanced. See Opinion 22. In
making a damages award under the Lanham Act, the Third and the
Fifth Circuits have identified six factors to guide the process. See
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Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 175 (3d Cir. 2005);
Quick Techs., Inc. v. The Sage Group PLC, 313 F.3d 338, 349 (5th
Cir. 2002). As those courts have spelled out, these factors include:
(1) whether the defendant had the intent to confuse or
deceive, (2) whether sales have been diverted, (3) the ade-
quacy 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.
Quick Techs., 313 F.3d at 349 (internal quotation marks omitted); see
also Banjo Buddies, 399 F.3d at 175.
We agree with Korman that the district court abused its discretion
in making the damages award, and that the foregoing factors are
appropriate for consideration in connection with damages issues in
Lanham Act litigation. And we will briefly discuss each of these fac-
tors. The first — whether the defendant had an intent to confuse or
deceive — addresses whether there has been a willful infringement on
the trademark rights of the plaintiff, or whether the defendant has
acted in bad faith. See Banjo Buddies, 399 F.3d at 174-75; Quick
Techs., 313 F.3d at 349. In her appeal, Korman contends that a willful
infringement is an essential predicate for any damages award, and
that, in its absence here, the court abused its discretion in making such
an award. As Korman emphasizes, the court specifically found that
she neither acted in "bad faith" nor was the use of her "THE WIND-
SHIELD DOCTOR" mark "malicious, fraudulent, willful or deceit-
ful." Opinion 20-21. We agree, however, with the Third and Fifth
Circuits that although willfulness is a proper and important factor in
an assessment of whether to make a damages award, it is not an
essential predicate thereto. See Banjo Buddies, 399 F.3d at 174-75;
Quick Techs., 313 F.3d at 349. In other words, a lack of willfulness
or bad faith should weigh against an award of damages being made,
but does not necessarily preclude such an award.13
13Korman’s willfulness contention may have been more persuasive
prior to a 1999 amendment to the Lanham Act. Prior to the amendment,
there was no reference in § 1117(a) to the term "willful." See Pub. L. No.
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The second factor identified above — whether sales have been
diverted — involves the issue of whether the plaintiff lost sales as a
result of the defendant’s trademark infringement activities, and the
extent to which the plaintiff had entered the market area where the
infringement occurred. Korman contends that, in this dispute, the dis-
trict court was not entitled to award damages because Synergistic had
not conducted any business in the Virginia Beach area during the
period of infringement. See Dawn Donut Co. v. Hart’s Food Stores,
Inc., 267 F.2d 358, 365 (2d Cir. 1959) (observing that court should
not assess damages for trademark infringement if plaintiff has not
entered defendant’s market area). We are satisfied that, in this situa-
tion, Synergistic’s non-entry into the Virginia Beach marketplace is
an important factor with respect to the assessment of any damages.
The fact that a plaintiff had not entered the relevant marketplace when
the infringement was ongoing, in combination with the fact that no
sales were diverted, should weigh against an award being made.
The third of the six factors — the adequacy of other remedies —
addresses whether another remedy, such as an injunction, might more
appropriately correct any injury the plaintiff suffered from the defen-
dant’s infringement activities. If an injunction is an adequate remedy,
this factor should weigh against a damages award. See Minn. Pet
Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1247 (8th
Cir. 1994) (concluding that "an accounting will be denied with a
trademark infringement action where an injunction will satisfy the
equities of the case" (internal quotation marks omitted)). Here, the
court granted injunctive relief against Korman, prohibiting her from
using "THE WINDSHIELD DOCTOR" mark and the name "GLASS
DOCTOR" with her windshield repair business. See Opinion 23.
The fourth factor — unreasonable delay by the plaintiff in asserting
its rights — addresses the temporal issue of whether the plaintiff
106-43 (1999). The 1999 amendment replaced the language "or a viola-
tion under section 43(a) [§ 1125(a)]" with the phrase "a violation under
section 43(a) [§ 1125(a)], or a willful violation under section 43(c)
[§ 1125(c)]." Id. (emphasis added). In light of this revision, we agree that
willfulness is not an essential prerequisite for a damages award, but that
it remains a highly pertinent factor.
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waited too long, after the infringement activities began, before seek-
ing court relief. A substantial delay between the commencement of
infringement activities and the plaintiff seeking judicial relief should
weigh against an award of damages. The fifth factor — the public
interest in making the infringing misconduct unprofitable —
addresses the balance that a court should strike between a plaintiff’s
right to be compensated for the defendant’s trademark infringement
activities, and the statutory right of the defendant to not be assessed
a penalty.14
The sixth and final factor — whether the situation involved a case
of "palming off" — involves the issue of whether the defendant used
its infringement of the plaintiff’s mark to sell its products, misrepre-
senting to the public that the defendant’s products were really those
of the plaintiff. See Tex. Pig Stands, Inc. v. Hard Rock Café Int’l, Inc.,
951 F.2d 684, 695 (5th Cir. 1992) (concluding that "palming off" did
not occur when there was no basis for inferring that profits received
by defendant were attributable to infringement). We agree that, if
"palming off" is shown, such activity should weigh in favor of a dam-
ages award.
In conclusion, a trial court, in assessing the issue of damages under
18 U.S.C. § 1117(a), should weigh the equities of the dispute and
exercise its discretion on whether an award is appropriate and, if so,
the amount thereof. In each instance, of course, the court should
explain its reasoning and the impact of the relevant factors. And,
although each trademark dispute is fact specific, the foregoing factors,
as well as others that may be relevant in the circumstances, should
guide a court’s consideration of the damages issue.
Having provided this guidance to the district court, we vacate its
Opinion as to the Lanham Act damages award and remand for further
proceedings. We affirm the court’s liability ruling, however, and
observe that its injunction ruling, its cancellation of Korman’s "THE
WINDSHIELD DOCTOR" mark, its denial of attorney fees, and its
14As we have noted, § 1117(a) of Title 15 specifically provides that
any damages award "shall constitute compensation and not a penalty."
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award of $500 to Synergistic on the Virginia Consumer Protection
Act claim stand.15
IV.
Pursuant to the foregoing, we affirm in part, vacate in part, and
remand.
AFFIRMED IN PART,
VACATED IN PART, AND REMANDED
15Korman initially appealed the district court’s award of $500 to Syn-
ergistic under the Virginia Consumer Protection Act. Korman abandoned
this issue at oral argument, however, and we do not address it.
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