## Facts

- Synergistic International, LLC operated a nationwide glass installation and repair business under the federally registered service mark “GLASS DOCTOR®,” registered in 1977 for installation of glass in buildings and vehicles.
- The “GLASS DOCTOR®” mark became incontestable under the Lanham Act, and the parties stipulated the mark qualified for legal protection.
- Synergistic used the mark in connection with windshield repair by at least 1991; approximately 90–95% of its business involved windshield repair and installation, often through mobile service units.
- Jody Fine Korman operated a mobile windshield-repair business under the name “THE WINDSHIELD DOCTOR,” offering services substantially overlapping with Synergistic’s windshield-focused business.
- Synergistic sued Korman under the Lanham Act in the Eastern District of Virginia for trademark infringement and related claims based on Korman’s use of “THE WINDSHIELD DOCTOR.”
- The district court granted summary judgment to Synergistic on liability and, after a bench trial on remedies, awarded Synergistic more than $142,000 in monetary relief, including disgorgement of Korman’s profits.
- Korman appealed the infringement ruling and the damages award.

## Issues

1. Whether Korman’s use of “THE WINDSHIELD DOCTOR” created a likelihood of confusion with Synergistic’s incontestable “GLASS DOCTOR®” mark, constituting infringement under the Lanham Act.
2. Whether the district court properly exercised equitable discretion in awarding more than $142,000 in monetary relief, including disgorgement of Korman’s profits.

## Decision

- The Fourth Circuit affirmed the district court’s summary judgment finding that Korman infringed Synergistic’s “GLASS DOCTOR®” mark.
- The Fourth Circuit vacated the monetary award and remanded for reconsideration, holding the district court abused its discretion in its analysis and calculation of damages, including profits.

## Legal Principles

- A federally registered, incontestable service mark is presumptively valid and entitled to protection under the Lanham Act.
- Trademark infringement turns on whether the defendant’s use of a mark is likely to cause consumer confusion in light of the marks’ similarity and the commercial context, including overlap in services and channels of trade.
- Monetary relief under the Lanham Act, including disgorgement of profits, is equitable and must be justified by the statute’s remedial purposes (such as compensation, deterrence, and prevention of unjust enrichment).
- In determining whether to award profits and in what amount, courts must evaluate relevant equitable considerations, including (as applicable) willfulness or bad faith, actual confusion or actual damages, the adequacy of other remedies, direct competition, deterrence, and avoidance of punitive or windfall recoveries.
- A damages award that does not reflect a properly reasoned equitable analysis constitutes an abuse of discretion.

## Conclusion

The Fourth Circuit held that “THE WINDSHIELD DOCTOR” infringed Synergistic’s incontestable “GLASS DOCTOR®” mark given the similarity of the marks and their direct overlap in mobile windshield-repair services, but it vacated and remanded the monetary award because the district court’s profits-based remedies analysis did not adequately apply the required equitable framework.


Synergistic Int'l, LLC v. Korman, 470 F.3d 162 (4th Cir. 2006)