Daniel Ryan owns and operates Caliber Automotive Liquidators, Inc., offering its services to car dealerships throughout the country. Caliber’s service follows a regimen it developed to reduce quickly a dealer’s existing inventory. Starting two weeks before a dealership’s sale, Caliber assists in a saturation of the local market with radio, television, and print ads. In the days immediately before the sale, its team arrives on-site to prepare the dealership, putting up marketing paraphernalia and energizing the dealership’s sales staff, as Caliber’s staff do not act as floor salespersons. Instead, during the sale, the dealer’s salespersons – performing for the customers – histrionically slash the car prices and seal the deals. Caliber enjoys a demand for its service, as its methods often help dealerships shrink inventory over three-day “blowouts.”
Caliber has held a federal registration for “Slash-It! Sales Event” since 1999. The registration provides that the service mark is used for “advertising agency services, namely, promoting the services of automobile dealerships through the distribution of printed and audio promotional materials and by rendering sales promotion advice.” The Slash-It! Sales Event mark, in trademark parlance, is “incontestible,” a status we will come to. Caliber also owns a federal registration for the service mark “Slasher Sale,” which the company purchased in 2005. Daniel Ryan scours the country’s automotive advertisements to ensure that no car dealer uses the slasher marks. Ryan has stopped hundreds of would-be infringers, sells a license to use both Slash-It! Sales Event and Slasher Sale, and has favorably settled several nascent legal actions against alleged infringers.
In the summer of 2006, Ryan learned that Premier Automotive Group, owned by Sam Kazran, was running infomercials called Slasher Shows for its dealerships in greater Atlanta, advertising drastically reduced-priced vehicles. The public could not buy cars through the infomercial, but instead had to come to the showroom. In addition to the Slasher title, the infomercial featured a Slasher Countdown, a Slasher Man complete with slasher jewelry, off-camera voices screaming “slash it,” and on camera uses of the term “slash it.” Premier also highlighted the Slasher Show theme on its website.
Judge(s): Black, Marcus, Higginbotham
Jurisdiction: U.S. Court of Appeals, Eleventh Circuit
Related Categories: Trademark
|Circuit Court Judge(s)|
|Plaintiff Lawyer(s)||Plaintiff Law Firm(s)|
|Arthur Gardner||Gardner Groff Greenwald & Villanueva PC|
|Bradley Groff||Gardner Groff Greenwald & Villanueva PC|
|Lauren Staley||Gardner Groff Greenwald & Villanueva PC|
|Defendant Lawyer(s)||Defendant Law Firm(s)|
|Bradley W. Grout||Hunton & Williams LLP|
|Joshua M. Kalb||Hunton & Williams LLP|
|Melinda Pillow||Kilpatrick Townsend & Stockton LLP|
|Robert Kiser||The Hines Firm|