A Mercedes dealership obtains the toll-free number 1-800-MERCEDES in the mid-80’s. Mercedes complains but doesn’t really do anything about it. The dealership goes a step further, and licenses the number out to six other Mercedes dealerships around the country (so if calls come from certain area codes, they are routed to those delaerships, otherwise they go to the original dealership). Where Mercedes is during this, the case doesn’t say. In 1997 Mercedes terminates the dealership. It then takes three years to file suit against the dealership, which still, apparently, is licensing out the 1-800-MERCEDES phone number. The District Court rejects Mercedes on summary judgment.
On appeal, the Court says “There is no dispute that [the dealership] only licensed the phone number but did not advertise or promote Mercedes’ protected marks.” Which strikes me as odd. The Court then says that domain name cases don’t apply here. It then concludes that:
. . . the licensing of a toll-free telephone number, without more, is not a “use” within the meaning of the Lanham Act, even where one possible alphanumeric translation of such a number might spell-out a protected mark.
And affirms the dismissal.
OK, maybe this decision was right on the record, but I’m skeptical that it is possible to market a service involving routing of calls to 1-800-MERCEDES to MERCEDES dealerships without using the mark MERCEDES, as use is defined in the Lanham Act. Also, I would have liked to have known how the Court felt about the laches and estoppel issues here.
If anybody gets the number 1-800-TRADEMARK BLOG and markets it to trademark lawyers, I’m coming after them not only on trademark grounds but on unjust enrichment and conversion as well.