Dalton v. Honda Motor Co., Ltd.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
MICHAEL DALTON,
Appellant,
v.
HONDA MOTOR CO., LTD.,
Appellee.
__________________________
2011-1077
__________________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board. (Opposition
No. 91173105).
_________________________
Decided: June 13, 2011
_________________________
MICHAEL DALTON, Cincinnati, Ohio, pro se.
DYAN FINGUERRA-DUCHARME, White & Case, LLP, of
New York, New York, for appellee.
__________________________
Before PROST, MOORE and O’MALLEY, Circuit Judges.
PER CURIAM.
DALTON v. HONDA MOTOR 2
Michael Dalton (“Dalton”) appeals from the final deci-
sion of the Trademark Trial and Appeal Board (“the
Board”) sustaining Honda Motor Co., Ltd.’s opposition
and refusing Dalton’s registration of the mark
“DEALERDASHBOARD” on grounds that it is merely
descriptive. Honda Motor Co., Ltd. v. Dalton, 2010 TTAB
LEXIS 358 (T.T.A.B. Aug. 6, 2010) (“Board Decision”).
For the reasons explained below, we affirm.
BACKGROUND
Dalton has applied to register the mark
DEALERDASHBOARD for the following International
Class 35 services:
providing automotive dealerships managerial in-
formation concerning their Sales, Service, and
Parts departments key financial indicators of how
their dealership is performing via the Internet;
and providing a web site featuring information
about automobile dealerships, automobiles, auto-
motive parts and accessories, at which users can
link to the retail or wholesale web sites of others.
Appendix (“A”) 20. Dalton asserted October 5, 1999 as the
date of first use of the mark in commerce.
In May 2006, Dalton sent a cease and desist letter to
American Honda Motor Co., Inc. (“American Honda”),
demanding that it cease using the mark
DEALERDASHBOARD on its network. In the letter,
Dalton informed American Honda that he owned the
trademark/service mark DEALERDASHBOARD and
operates the website DealerDashboard.com, which offers
services to automotive dealerships. According to Dalton,
it was brought to his attention that American Honda was
using that same mark “to offer competing service to [its]
3 DALTON v. HONDA MOTOR
dealer body.” The record reflects that American Honda is
a wholly-owned subsidiary of Honda Motor Co., Ltd.
On September 27, 2006, Honda Motor Co., Ltd.
(“Honda”) filed a Notice of Opposition on grounds that the
DEALERDASHBOARD mark “is a generic term, or, at
best, a merely descriptive term.” A26. Honda explained
that it is a corporation organized under Japanese law and
that, through its subsidiaries and affiliates, it “manufac-
tures, markets and sells, among other products, automo-
biles, motorcycles, motor scooters and all-terrain vehicles
throughout the world.” A25.
In the Notice of Opposition, Honda alleged, among
other things, that: (1) “dashboard” is a “term of art in the
Internet industry, denoting a user interface for organizing
and displaying key information”; (2) it uses the term
“dealer dashboard” on its internal network, which is
accessible only to authorized Honda dealers, “to describe a
tool that presents information to its authorized dealers
about their sales, service and parts departments”; and
(3) registration of the DEALERDASHBOARD mark would
damage Honda because it “may subject [it] to an in-
fringement suit” for using the “descriptive designations
“Dealer Dashboard” or “Dashboard.”
Dalton filed an Answer on January 6, 2007, in which
he: (1) denied that the DEALERDASHBOARD mark was
generic; and (2) argued that the Board lacked jurisdiction
over Honda because it is a foreign corporation organized
under the laws of Japan. Dalton also claimed that he
“invested extensive time and resources” making
DEALERDASHBOARD a “source identifier” and that it
has become “alternatively distinctive and famous within
DALTON v. HONDA MOTOR 4
the automotive industry.” Doc. 8, Answer at 5 (Jan. 6,
2007). 1
During the course of the Board proceedings, Honda
served Dalton with interrogatories and document re-
quests. When Dalton failed to respond to the discovery
requests, Honda filed a motion to compel. In response, on
April 2, 2007, Dalton filed a motion to dismiss, motion for
sanctions, or in the alternative, motion to strike. In his
motion, Dalton sought dismissal for failure to state a
claim and for lack of jurisdiction. He also sought to strike
Honda’s discovery requests and motion to compel.
In an order dated February 29, 2008, the Board:
(1) denied Dalton’s motion to dismiss on grounds that it
was untimely, since it was filed roughly three months
after he filed his answer; (2) granted Honda’s motion to
compel discovery requests; and (3) ordered Dalton to
provide, without objection, “full and proper responses” to
the discovery requests within thirty days. Dalton failed to
comply with the Board’s order, and subsequently sought
to introduce documents and evidence not produced in
discovery during his testimony deposition. Honda ob-
jected to the use of those documents on grounds that they
were not previously produced and raised additional objec-
tions, including hearsay and lack of foundation.
Honda sought and obtained an extension of time
which reset its 30-day testimony period to close on Octo-
ber 27, 2008. As such, Honda’s testimony period opened
on September 28, 2008 and continued until October 27,
2008. Notwithstanding this timeframe, Honda conducted
a trial deposition of Cynthia Mangham on September 16,
2008. Mangham, the Manager of the Interactive Network
1 Citations to documents found on the TTAB online
docket system are identified by docket number, title, date,
and page number.
5 DALTON v. HONDA MOTOR
Marketing and Rollout for American Honda, testified
that, in 2004, American Honda began using the term
“dealer dashboard” on its internal network to communi-
cate “key operating indicators” to automotive dealers.
Dalton did not participate in Mangham’s testimony
deposition. Instead, roughly six (6) months after the
deposition took place – on March 6, 2009 – Dalton filed a
motion to strike Mangham’s trial testimony on grounds
that it took place outside the set testimony period. On
May 27, 2009, the Board denied Dalton’s motion to strike
as untimely. In reaching this decision, the Board noted
that,
[w]hen a testimony deposition is noticed for a date
prior to the opening of the deposing party’s testi-
mony period, an adverse party that fails to
promptly object to the scheduled deposition on the
ground of untimeliness may be found to have
waived this ground for objection, because the
premature scheduling of a deposition is an error
which can be corrected on seasonable objection.
Doc. 53, Order Resetting Trial Dates at 2 (May 27, 2009)
(citing Trademark Trial and Appeal Board Manual of
Procedure (“TBMP”) § 707.03(a) (2d ed. 2004)). 2
On November 13, 2009, Honda filed its trial brief on
the merits. Although he sought and obtained an exten-
2 While Dalton argues on appeal that the Board
erred by denying his motion to strike Mangham’s testi-
mony, we find no error in the Board’s analysis. As the
Board correctly noted, an objection to a testimony deposi-
tion “must be raised promptly if the defect is one that can
be obviated or removed, failing which it is deemed
waived.” TBMP § 707.03(a). Because Dalton filed his
motion to strike roughly six months after the testimony
deposition took place, the Board did not err in finding his
motion untimely.
DALTON v. HONDA MOTOR 6
sion of time in which to respond, Dalton failed to file a
responsive trial brief. In a decision dated August 6, 2010,
the Board sustained Honda’s opposition to registration of
the DEALERDASHBOARD mark on grounds of mere
descriptiveness. The Board found that: (1) Honda had
standing to oppose Dalton’s mark on behalf of its wholly-
owned subsidiary; (2) DEALERDASHBOARD merely
describes the services provided: “Internet-based informa-
tion regarding sales, service, and inventory or parts to
automobile dealerships”; (3) Honda failed to show that
DEALERDASHBOARD is a generic term; (4) Dalton did
not plead acquired distinctiveness, and there is no evi-
dence to support such a claim. The Board also sustained
Honda’s evidentiary objections and noted that, even if the
excluded documents were considered, the outcome would
be the same.
Dalton timely appealed to this court. We have juris-
diction pursuant to 28 U.S.C. § 1295(a)(4)(B).
STANDARD OF REVIEW
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Pacer
Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Substantial
evidence is “‘more than a mere scintilla’ and ‘such rele-
vant evidence as a reasonable mind would accept as
adequate’ to support a conclusion.” Id. (quoting Consol.
Edison v. NLRB, 305 U.S. 197, 229 (1938)).
DISCUSSION
Dalton’s primary arguments on appeal fall into three
categories. He argues that: (1) as a foreign corporation,
Honda lacked standing to file an opposition on behalf of
Honda America; (2) the Board erred when it found that
the mark DEALERDASHBOARD was merely descriptive;
7 DALTON v. HONDA MOTOR
and (3) the Board erred when it excluded certain evidence
from his testimony deposition.
In response, Honda submits that: (1) it has standing
to file suit on behalf of American Honda because Ameri-
can Honda is a wholly-owned subsidiary; (2) the term
DEALERDASHBOARD is merely descriptive of the
identified services; and (3) the Board properly sustained
Honda’s objection to certain documents on grounds that
they were not previously produced during discovery in
accordance with the Board’s order compelling discovery
responses.
For the reasons set forth below, we find Honda’s ar-
guments well-taken. Because we find no error in the
Board’s decision, we affirm.
I.
Under Article III of the United States Constitution, a
plaintiff must show a “case or controversy” between the
parties to establish standing. Ritchie v. Simpson, 170
F.3d 1092, 1094 (Fed. Cir. 1999). The “case” and “contro-
versy” restrictions do not, however, apply to matters
before administrative agencies. Id. Instead, for an
agency such as the PTO, standing is conferred by statute.
Here, standing is conferred by Section 13 of the Lanham
Act, which provides, in pertinent part, that “[a]ny person
who believes that he would be damaged by the registra-
tion of a mark . . . may, upon payment of the prescribed
fee, file an opposition in the Patent and Trademark Office,
stating the grounds therefor.” 15 U.S.C. § 1063(a). The
purpose of the standing requirement is “to prevent litiga-
tion where there is no real controversy between the par-
ties, where a plaintiff, petitioner or opposer, is no more
than an intermeddler.” Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 1028-29 (C.C.P.A. 1982).
DALTON v. HONDA MOTOR 8
In addition to meeting the broad requirements of § 13,
an opposer must satisfy two judicially-created standing
requirements. Ritchie, 170 F.3d at 1095. Specifically, an
opposer has standing under § 13 if it can show: (1) a “real
interest” in the proceeding; and (2) a “reasonable basis”
for believing that it would suffer damage if the mark is
registered. Id. Under the “real interest” requirement, an
opposer must have “a legitimate personal interest in the
opposition.” Id. With respect to the second inquiry, the
opposer’s belief of damage “must have a reasonable basis
in fact.” Id. at 1098 (citation omitted).
A parent company has standing to file an opposition
on behalf of its wholly-owned subsidiary because it can
“reasonably believe that damage to the subsidiary will
naturally lead to financial injury to itself.” See Universal
Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122,
1124 (C.C.P.A. 1972) (finding that the parent corporation
had a “real interest” in the proceeding and thus “standing
to institute and maintain it”); see also Jewelers Vigilance
Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 493 (Fed.
Cir. 1987) (citing Universal Oil for the proposition that “a
parent corporation has standing to oppose on the basis of
a mark owned and controlled by its subsidiary”); Lipton,
670 F.2d at 1029 (noting that the court has found stand-
ing to protect a subsidiary’s mark). The Board similarly
has found that a parent company of a wholly-owned
subsidiary has a “sufficient commercial interest” to satisfy
standing requirements. See British-American Tobacco Co.
v. Philip Morris Inc., 55 U.S.P.Q.2d 1585, 1591 (T.T.A.B.
2000) (“Because petitioners allege that TISA is BATCo’s
wholly owned subsidiary, we find that petitioners have
alleged a sufficient commercial interest by BATCo in this
proceeding for us to conclude that the petition contains an
acceptable assertion of BATCo’s standing.”); cf. Target
Brands, Inc. v. Hughes, 85 U.S.P.Q.2d 1676, 1679
9 DALTON v. HONDA MOTOR
(T.T.A.B. 2007) (finding that a wholly-owned subsidiary
had standing to oppose registration on behalf of its parent
corporation because the parties were in privity and any
harm to the parent would harm the subsidiary).
Dalton argues that Honda lacked standing to oppose
registration because it “is a foreign entity and applicant
only made cease and desist demands on domestic organi-
zations.” 3 Appellant Informal Brief at 6. In response,
Honda argues that it has a real interest and a reasonable
basis for believing that it would be damaged if
DEALERDASHBOARD was registered as a mark. Spe-
cifically, Honda argues that its wholly-owned subsidiary
American Honda: (1) uses the phrase “dealer dashboard”
to identify key information on its dealer interactive net-
work; and (2) received a cease and desist letter from
Dalton.
We agree that Honda sufficiently demonstrated its
standing to file an opposition on behalf of American
3 Dalton also argues that, as a foreign entity,
Honda was shielded from discovery. Informal Brief at 6.
To the extent Dalton is claiming that he sought discovery
from Honda and was denied, there is no evidence support-
ing that argument in the record. In any event, there are
mechanisms for obtaining discovery from a foreign entity.
See 37 C.F.R. § 2.120(c)(1) (“The discovery deposition of a
natural person residing in a foreign country who is . . . a
person designated under Rule 30(b)(6) . . . shall, if taken
in a foreign country, be taken in the manner prescribed by
§ 2.124 unless the Trademark Trial and Appeal Board,
upon motion for good cause, orders or the parties stipu-
late, that the deposition be taken by oral examination.”);
see also 37 C.F.R. § 2.123(a)(2) (“A testimonial deposition
taken in a foreign country shall be taken by deposition
upon written questions as provided by § 2.124, unless the
Board, upon motion for good cause, orders that the deposi-
tion be taken by oral examination, or the parties so stipu-
late.”).
DALTON v. HONDA MOTOR 10
Honda. Although the Board did not specifically address
the parent-subsidiary relationship, it applied the correct
test and found that Honda demonstrated a real interest
sufficient to give it standing to oppose Dalton’s applica-
tion. See Board Decision, 2010 TTAB LEXIS 358 at *8-10.
Because American Honda is Honda’s wholly-owned sub-
sidiary, we find that Honda has alleged a “real interest”
in the proceeding, including a reasonable belief that harm
to American Honda would cause harm to Honda. See
Universal Oil, 463 F.2d at 1124; see also British-American
Tobacco, 55 U.S.P.Q.2d at 1591. Accordingly, the Board
did not err in finding that Honda had standing to oppose
Dalton’s registration application.
II.
Dalton next argues that the Board erred when it:
(1) found that the mark DEALERDASHBOARD was
merely descriptive; and (2) failed to consider third-party
registrations that contain the term DEALER and/or
DASHBOARD. 4 For the reasons discussed below, we find
4 Dalton also argues that the Board erred when it
concluded that he failed to show acquired distinctiveness.
In response, Honda argues that, because Dalton did not
raise acquired distinctiveness below, he waived his right
to assert it on appeal. As the Board correctly noted, an
applicant bears the burden of establishing acquired
distinctiveness. See Yamaha Int’l Corp v. Hoshino Gakki
Co., Ltd., 840 F.2d 1572, 1576 (Fed. Cir. 1988). Although,
as Honda points out, Dalton did not file a trial brief with
the Board, the Board specifically addressed acquired
distinctiveness and found that: (1) Dalton’s application to
register the mark DEALERDASHBOARD did not include
a claim of acquired distinctiveness; (2) he failed to assert
acquired distinctiveness in his answer to the Notice of
Opposition; and (3) even if statements in his answer could
be construed as a claim of acquired distinctiveness, he
submitted no evidentiary support for such a claim. Re-
11 DALTON v. HONDA MOTOR
that the Board’s descriptiveness determination was
supported by substantial evidence.
A. Merely Descriptive
A mark is merely descriptive “if it immediately con-
veys knowledge of a quality, feature, function, or charac-
teristic of the goods or services with which it is used.” In
re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir.
2007) (“Bayer”) (citing In re Gyulay, 820 F.2d 1216, 1217
(Fed. Cir. 1987)). A mark may be merely descriptive
“even if it does not describe the ‘full scope and extent’ of
the applicant’s goods or services.” In re Oppedahl &
Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004) (cita-
tion omitted). It is well-established that
“[d]escriptiveness of a mark is not considered in the
abstract.” Bayer, 488 F.3d at 963-64. Instead, the mark
must be “considered in relation to the particular goods for
which registration is sought, the context in which it is
being used, and the possible significance that the term
would have to the average purchaser of the goods because
of the manner of its use or intended use.” Id. at 964.
Stated differently, “[t]he question is not whether 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 or services are will understand
the mark to convey information about them.” In re Tower
Tech Inc., 64 U.S.P.Q.2d 1314, 1316-17 (T.T.A.B. 2002).
Evidence that a term is merely descriptive “may be
obtained from any competent source, such as dictionaries,
newspapers, or surveys.” Bayer, 488 F.3d at 964 (quoting
In re Bed & Breakfast Registry, 791 F.2d 157, 160 (Fed.
Cir. 1986)). A determination that a mark is merely de-
scriptive is a factual finding that this court reviews for
gardless of whether Dalton can raise this issue on appeal,
we find no error in the Board’s analysis.
DALTON v. HONDA MOTOR 12
substantial evidence. Bayer, 488 F.3d at 964. For the
reasons that follow, we conclude that the Board’s factual
findings were supported by substantial evidence.
First, the Board looked to the dictionary definitions in
the record which defined the term “dealer” as “one en-
gaged in buying and selling.” Board Decision, 2010 TTAB
LEXIS 358 at *11. The Board then considered documents
in the record – including printed publications introduced
as exhibits during Dalton’s discovery deposition – to
determine the meaning of the term “dashboard.” Honda
submitted evidence including dozens of examples of third
parties who use the term “dealer dashboard” or
“dashboard” to describe an Internet-based system that
provides dealers with key performance indicators. As the
Board noted, the record includes the following representa-
tive examples:
• Denon Dealer Dashboard: “The Dealer
Dashboard is the easiest way for Denon
dealers to get the latest information on
Denon products, events, company infor-
mation 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.” A168.
• GoalLine Solutions: “Dealer Dashboard
Key Performance Indicators (KPIs) pro-
vide the dealer and service manager with
visibility to the crucial numbers that drive
the performance of the service [sic] De-
partment. You have the ability to set tar-
get goals for the average labor dollars per
repair order, one line work order percent-
ages and average hours per repair order
and see the results by year, month, week
13 DALTON v. HONDA MOTOR
or day. By comparing it to the prior year’s
results, you have visibility to improve-
ments in your department and more im-
portantly areas of concern. By using our
secure data extraction portal we provide
daily updating on Labor sales, Repair or-
der counts and total hours sold for all
sales categories.” A176.
• 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.” A165.
Based on the third-party examples provided, and other
evidence in the record, the Board found that the term
“dashboard” “possesses a recognized meaning in the field
of Internet-based business information tracking and
presentation.” Board Decision, 2010 TTAB LEXIS 358 at
*16.
The Board further found that the terms DEALER and
DASHBOARD have descriptive significance when used in
connection with the services identified in Dalton’s appli-
cation. Specifically, the Board found that a DEALER
DASHBOARD “is the graphical display of sales, service
and other information relating to businesses engaged in
buying and selling goods, particularly automobiles.” Id.The Board concluded that 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 auto-
mobile dealerships.” Id.As Honda correctly argues, although the combination
of two descriptive words may, in some instances, create a
DALTON v. HONDA MOTOR 14
distinctive mark, the combination of the two terms at
issue here “does not diminish the common descriptive
significance of Applicant’s mark: A DEALER
DASHBOARD is a dashboard for dealers.” Appellee Brief
at 20. See In re Petroglyph Games, Inc., 91 U.S.P.Q.2d
1332, 1341 (T.T.A.B. 2009) (finding that, “because the
combination of the terms does not result in a composite
that alters the meaning of either of the elements, refusal
on the ground of descriptiveness is appropriate”); In re
Nat’l Shooting Sports Foundation, Inc., 219 U.S.P.Q.
1018, 1020 (T.T.A.B. 1983) (internal citations omitted)
(“Combinations of merely descriptive components have
been found registrable if the juxtaposition of the words is
inventive or evokes a unique commercial impression, or if
the term has a bizarre or incongruous meaning as applied
to the goods.”). Dalton does not argue that the combina-
tion of terms alters their meaning, and, even if he did,
there is no evidence in the record to support that argu-
ment. 5
5 Dalton argues that there was no evidence that
DEALERDASHBOARD was merely descriptive when he
filed his application for registration in 2003. Informal
Brief at 5. In response, Honda argues that, by 2003, the
terms DEALER and DASHBOARD were descriptive “in
connection with the applied-for services.” Appellee Brief
at 19. According to Honda, the term “dashboard” was
“commonly used to describe the presentation of manage-
rial information and key financial indicators to businesses
via the Internet well before 2003.” Id. In support of this
argument, Honda points to a printed publication in the
record entitled Information Dashboard Design: The Effec-
tive Visual Communication of Data, which discusses
companies’ use of the term “dashboard” at least as early
as 2003. Honda further argues that, to the extent Dalton
claims to be the “first user” of DEALERDASHBOARD,
there is no supporting evidence to that effect in the re-
cord. Even if there was, moreover, the “fact that an
15 DALTON v. HONDA MOTOR
We find that substantial evidence supports the
Board’s decision that DEALERDASHBOARD is merely
descriptive. The dictionary definitions in the record,
coupled with evidence of third parties that use the term
“dealer dashboard” to describe services that are similar to
those identified in Dalton’s application, support the
Board’s descriptiveness finding. Accordingly, we find no
error in the Board’s decision.
As the Board recognized in its decision, Dalton’s ap-
plication to register the mark DEALERDASHBOARD did
not include a claim of acquired distinctiveness under
Section 2(f). Nor did Dalton specifically assert acquired
distinctiveness in his answer to the Notice of Opposition.
Instead, Dalton merely alleged that his “exclusive and
continuous use” of the mark DEALERDASHBOARD
began in October 1999. Doc. 8, Answer at 1 (Jan. 6, 2007).
He also claimed that he “invested extensive time and
resources” making DEALERDASHBOARD a “source
identifier” that has become “alternatively distinctive and
famous within the automotive industry.” Id. at 5. The
Board found that, even if Dalton’s statements in his
answer were construed as a claim of acquired distinctive-
ness, he submitted no evidentiary support for such a
claim. We agree. Because Dalton failed to establish that
DEALERDASHBOARD acquired secondary meaning or
distinctiveness “in the minds of the public,” we find no
applicant may be the first and only user of a merely
descriptive or generic designation does not justify regis-
tration if the only significance conveyed by the term is
merely descriptive.” Trademark Manual of Examining
Procedure § 1209.03(c) (7th ed. 2010). Because we find
that the Board’s descriptiveness determination was
supported by substantial evidence, Dalton’s unsupported
arguments lack merit.
DALTON v. HONDA MOTOR 16
error in the Board’s decision. See Dial-A-Mattress, 240
F.3d at 1347.
B. Third-Party Registrations
Dalton next argues that the Board erred by not con-
sidering evidence of third-party registrations that include
the term DEALER and/or DASHBOARD. This argument
is without merit.
It is well-established that third-party registrations
“are not conclusive on the question of descriptiveness.” In
re Scholastic Testing Serv., Inc., 196 U.S.P.Q. 517, 519
(T.T.A.B. 1977) (disregarding third-party registrations
including the term “SCHOLASTIC” on grounds that they
did not involve the services set forth in the application
before the Board). Even if there are third-party registra-
tions using similar words, the Board “must decide each
case on its own merits.” In re Nett Designs, Inc., 236 F.3d
1339, 1342 (Fed. Cir. 2001); see also In re Rodale Inc., 80
U.S.P.Q.2d 1696, 1700 (T.T.A.B. 2006) (“Although consis-
tency in examination is a goal of the Office, the decisions
of previous Trademark Examining Attorneys are not
binding on us, and we must decide each case based on the
evidence presented in the record before us.”). Accordingly,
a merely descriptive mark does not qualify for registra-
tion simply because other similar marks appear on the
register. See Nett Designs, 236 F.3d at 1342 (finding that
prior registrations of marks including the term
ULTIMATE “do not conclusively rebut the Board’s finding
that ULTIMATE is descriptive in the context of this
mark”).
On appeal, Dalton argues that, because the Board
previously registered the mark “Banker Dashboard,” it
should “be consistent” and find that “DealerDashboard is
a registerable mark.” Informal Brief at 6. Although
“Banker Dashboard” and “DealerDashboard” both contain
17 DALTON v. HONDA MOTOR
the term “Dashboard,” this alone is insufficient to rebut
the Board’s decision that DEALERDASHBOARD is
merely descriptive in the context of the identified services.
See Nett Designs, 236 F.3d at 1342. Specifically, the
Board found that the term DEALERDASHBOARD “is
recognized and used by numerous third parties to describe
Internet-based goods and services that are used to provide
such information.” Board Decision, 2010 TTAB LEXIS
358 at *16-17. Because the Board properly assessed the
mark on its merits in the context of the services involved,
we find no error in the Board’s analysis.
III.
Finally, turning to the Board’s evidentiary rulings,
Dalton argues that the Board erred when it sustained
Honda’s objections to certain documents he sought to
introduce during his testimony deposition. In response,
Honda argues that the Board properly struck the docu-
ments from the record because they were not produced in
accordance with the Board’s discovery order. We agree.
This court reviews evidentiary rulings for abuse of
discretion. Crash Dummy Movie, LLC v. Mattel, Inc., 601
F.3d 1387, 1390 (Fed. Cir. 2010) (citing Chen v. Bouchard,
347 F.3d 1299, 1307 (Fed. Cir. 2003)). We will reverse
only if the Board’s evidentiary ruling was: (1) “clearly
unreasonable, arbitrary, or fanciful”; (2) “based on an
erroneous conclusion[] of law”; (3) premised on “clearly
erroneous findings of fact”; or (4) the record “contains no
evidence on which the Board could rationally base its
decision.” Id. at 1390-91.
As noted, Honda served discovery requests on Dalton,
and, when Dalton failed to respond, Honda filed a motion
to compel production. In an order dated February 29,
2008, the Board ordered Dalton to provide, without objec-
tion, “full and proper responses” to the discovery requests
DALTON v. HONDA MOTOR 18
within thirty days. In its requests for production, Honda
sought, among other things, “[a]ll exhibits that Applicant
will introduce during any witness’s deposition or testi-
mony” and “[a]ll exhibits that Applicant will rely on, refer
to, or introduce during the testimony period in this pro-
ceeding.” A72. According to Honda, Dalton “produced
only a limited set of materials” in response to these re-
quests. During Dalton’s testimony deposition, however,
he sought to introduce numerous documents that were not
included in his prior production. Honda objected to these
documents on grounds that they were not produced dur-
ing the discovery period, and, in its trial brief on the
merits, Honda asked the Board to strike the documents
from the record.
The Board sustained Honda’s objections and excluded
the documents at issue on grounds that “a party may not
rely at trial upon documents that were not produced in
response to written discovery requests.” Board Decision,
2010 TTAB LEXIS 358 at *6. In reaching this decision,
the Board cited prior instances where it excluded evidence
on grounds that it had not been produced during discov-
ery. See Shoe Factory Supplies Co. v. Thermal Eng’g Co.,
207 U.S.P.Q. 517, 519 n.1 (T.T.A.B. 1980) (“[O]pposer is
correct in its contention that a party may not properly
introduce a document in evidence in its behalf after
having refused to make it available to an adverse party
seeking discovery thereof.”); see also Nat’l Aeronautics &
Space Admin. v. Bully Hill Vineyards, Inc., 3 U.S.P.Q.2d
1671, 1672 n.3 (T.T.A.B. 1987) (excluding exhibits that
were requested during discovery “but which were not
produced until opposer sought to introduce them during
trial”). The Board noted, moreover, that, even if it had
considered the documents, “the outcome would be the
same.” Board Decision, 2010 TTAB LEXIS 358 at *6, n.9.
19 DALTON v. HONDA MOTOR
We find no error in the Board’s decision to exclude
documents which were requested during discovery but
were introduced for the first time during Dalton’s testi-
mony deposition. Because the Board specifically indicated
that the excluded evidence had no bearing on the outcome
of the proceeding, moreover, Dalton cannot show that
consideration of that evidence would have led to a differ-
ent result. Accordingly, we affirm the Board’s evidentiary
rulings.
CONCLUSION
For the foregoing reasons, and because we find that
Dalton’s remaining arguments are without merit, we
affirm the Board’s final decision.
AFFIRMED
COSTS
No costs.