Synergistic seeks an injunction, compensatory and punitive damages, and surrender of the the iGlassDoc.com URL for Berry’s alleged service mark infringement, unfair competition and false designation of origin under Section 43 of the Lanham Act, unfair competition in violation of O.C.G.A. § 23-2-55 (2007) and the common law of Georgia, service mark infringement under the Georgia Uniform Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 et seq. and the common law of Georgia, and for dilution under O.C.G.A. § 10-1-451(b).
On March 20, 2014 Synergistic International, LLC. (“Synergistic”), of Waco, Texas filed a complaint against Kyle D. Berry of Atlanta, Georgia, individually and doing business as “iGlass Doctor,” alleging Trademark infringement.
Synergistic International, LLC is a franchisor of a nationwide system of more than 180 licensed franchises known as the “Glass Doctor” in the United States and Canada, including a franchise in the Atlanta metropolitan area, that provide glass repair, replacement, and installation services to residential, automotive, and commercial customers.
Each authorized franchisee of Synergistic International, LLC allegedly operates under the name and mark GLASS DOCTOR® in word and design form, and operates pursuant to a franchise agreement under which Synergistic imposes certain obligations and retains certain rights to help ensure protection of their service marks and uniform quality of services.
According to the complaint, Synergistic, its predecessors-in-interest, and their respective franchisees have used the GLASS DOCTOR® service mark since at least as early as September 1968 in connection with glass installation and repair services. On May 31, 1977, one of Synergistic’s predecessors in interest allegedly received United States Registration No. 1,066,929 covering the GLASS DOCTOR® service mark for “installation of glass in buildings and vehicles.”
The original registrant of U.S. Registration No. 1,066,929 was Glass Doctor, Inc. of Kent, Washington. The registrant assigned the registration, and the associated goodwill, to Royalties International, Inc. of Auburn, Washington on or about April 21, 1977. Royalties International, Inc. assigned the registration, and the associated goodwill, to Glassmarks, Inc. of Kent, Washington on or about January 5, 1984. Glassmarks, Inc.’s business and assets, including the GLASS DOCTOR Registration, merged into Synergistic International, Inc. on or about September 23, 1998. Synergistic International, Inc. filed a certificate of conversion transferring the title of the GLASS DOCTOR Registration to Plaintiff Synergistic International, LLC on or about April 1, 2004.
According to the complaint, the GLASS DOCTOR registration is incontestable pursuant to 15 U.S.C. § 1065 as the mark has been in continuous use in commerce for more than five years from the date of registration and the required affidavit of incontestability has been filed with the United States Patent and Trademark Office. Where such an affidavit is filed, registration is considered conclusive evidence of the validity of the registered mark.
Synergistic alleges that Berry currently operates a wireless device glass screen repair business in or around the Atlanta area and has adopted a website with the domain address www.iGlassDoc.com in connection with his business. Additionally, Berry allegedly operates Facebook and Twitter accounts identifying his business as “iGlassDoctor.”
According to the complaint, Berry’s current web presence is likely to confuse consumers into thinking his business is sponsored by, affiliated with, or endorsed by Glass Doctor, and Berry’s alleged use of the term “iGlass Doctor” is likely to dilute the distinctive quality of the GLASS DOCTOR® mark by diminishing its distinctiveness.
The case is Synergistic International, LLC. v. Berry, Case No. 1:14-cv-00813 in the United States District Court for the Northern District of Georgia, Atlanta Division, and is assigned to Judge Thomas W. Thrash, Jr.