Windshield Doctor- The trademark dispute

A news story from Eastern Idaho reports of a battle between two businesses containing the mark "Windshield Doctor." Rande Oksendahl, owner of Windshield Doctor in Idaho Falls, received notice a year ago to change his business name. The news story indicates that a national chain of windshield repair shops is responsible for this action, but did not mention the name of the chain. We're told that Rande has used this name for 26 years.

Since this is a trademark infringement matter, and I'm going to guess that the two names were similar, I suspect that the chain is indeed called Windshield Doctor. Also, since Rande changed his name, I'm going to assume that someone with superior trademark rights got him to change his name. He's been using his mark locally for 26 years, which gives him significant local trademark rights. A search of the USPTO returned one currently registered trademark for "Windshield Doctor," a cancelled registration, and four abandoned trademark applications.

1- THE WINDSHIELD DOCTOR, U.S. Trademark No. 2790862, was registered on December 9, 2003. This trademark was first used in August of 1987. The owner of this mark is Jody Fine Korman, of Virginia Beach, VA. This registered trademark is still valid.

2- WINDSHIELD DOCTOR, U.S. Trademark No. 1826625, was registered on March 15, 1994. This trademark was first used in October 1979. The owner is (was?) Windshield Doctor of Bismarck, Inc., of Bismarck, ND. This registered trademark was cancelled on April 28, 2001, and is thus no longer enforceable as a registered trademark. There may still be common law trademark rights associated with this mark, such as use in a local market.

3- WINDSHIELD DOCTOR, U.S. Trademark Application No. 78207101, filed January 24, 2003. The applicant is Windshield Doctor Inc., of Mission Viejo, CA. The trademark application was abandoned.

4- THE WINDSHIELD DOCTOR & Design, U.S. Trademark Application No. 73810721, filed June 30, 1989, with first use in August 1980. This trademark also included the graphical component of a first aid cross (see the mark here). The applicant is The Windshield Doctor, Inc., of St. Louis, MO. The trademark application was abandoned.

5- THE WINDSHIELD DOCTOR, U.S. Trademark Application No. 73810698, filed June 30, 1989, with first use in August 1980. The applicant is also The Windshield Doctor, Inc., of St. Louis, MO. The trademark application was abandoned.

6- WINDSHIELD DOCTOR, U.S. Trademark Application No. 73519571, filed January 28, 1985, with first use of January 21, 1981. The applicant was Franklin Delano Reheim, DBA The Windshield Doctor, of New Plymouth, ID. The trademark application was abandoned.

Number 6 is of note, as it is in Idaho, however it is not the person in the story. New Plymouth is over 300 miles from Idaho Falls, and business in the story does not have "The" in the name (see Yellow Page listing).

According to the news story, Rande Oksendahl had been using the name "Windshield Doctor" for 26 years. That puts his first use date in the year 1978. None of the above marks had an earlier use date than Rande. It's a safe assumption that if someone is coming after him to change their business, they have a federally registered trademark- that was you show you are serious about your mark, and are not merely enforcing common law trademark rights. My question is: which one of the marks above were used to shut Rande down? Why were they able to do so? Rande has longer use than any of them- assuming my news story was accurate. Given the facts I have, I think Rande should still be using his mark.