Overhead Door Corp. v. Burger

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Infringement, False Designation
  • Date Filed: 06-17-2013
  • Case #: 1:12–cv–101 (WLS)
  • Judge(s)/Court Below: United States District Court, M.D. Georgia, Albany Division
  • LexisNexis Citation: 2013 U.S. Dist. LEXIS 84486
  • Westlaw Citation: 2013 WL 3057796
  • Full Text Opinion

Default judgment for both trademark infringement and false designation was appropriate when a license to use a trademark was validly terminated.

Plaintiff Overhead Door Corporation (“Overhead Door”) brought suit against defendant William H. Burger (“Burger”) for using its federally registered mark, “OVERHEAD DOOR,” without its permission. Overhead Door filed complaint to which Burger failed to answer. After filing for and receiving an entry of default against Burger, Overhead door filed a motion for default judgment against Burger, which the court granted. Overhead Door alleged various violations of the Lanham Act, which prohibits any person, without the consent of the registrant, from using the registrant’s trademark. To prevail on an infringement claim, a plaintiff must show (1) that it possesses a valid mark, (2) that the defendant used the mark, (3) that the defendant’s use of the mark occurred “in commerce,” (4) that the defendant used the mark “in connection with the sale…or advertising of any goods,” and (5) that the defendant used the mark in a manner likely to confuse consumers. Overhead Door is the registered owner of the OVERHEAD DOOR trademark. While Overhead Door and Burger had had a Distributor’s Agreement through which Burger could use the trademark, that Distributor’s Agreement had been validly terminated by Overhead Door. As such, the court found Burger’s continued use of the trademark a violation. Thus, the court GRANTED Overhead Door’s motion for default judgment for trademark infringement. Because the claim of false designation under the Lanham Act is broader than the claim of trademark infringement, facts sufficient to establish the a trademark violation also establish a false designation claim. The court also GRANTED Overhead Door’s motion for default judgment on its claim of false designation.

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