In 2003, Daimler-Chrysler proudly introduced the Jeep Wrangler Rubicon. Billed as an off-road ready vehicle, the Rubicon was a game changer from the beginning. Before the Rubicon, production Jeep Wranglers needed to be upgraded, at a cost of $5000 or $6000, to be fully off-road ready. Few customers understood this, but off-road enthusiasts did and they were more than willing to make the additional investment. There was another issue with Jeep Wranglers – a shortage of space for cargo and passengers. Eventually, Chrysler addressed the lack of sufficient cargo and passenger and cargo space by introducing four door Jeep Wranglers.

Before the introduction of the four door Jeep Wrangler, and before the introduction of the Rubicon Jeep Wrangler, local inventor and entrepreneur Dennis Ewald came up with a solution to solve the problem of inadequate cargo space in conventional Jeeps. It was elegantly simple and it looked good. It was a trailer and it matched the appearance of the Jeep Wrangler.

He obtained design patents to protect the ornamental design of his trailer, but his first idea for a trailer trademark did not pan out. He wanted to use the mark trademark Wrangler. When he applied to register Wrangler, the Patent and Trademark Office refused to register his Wrangler trademark for trailers because it was too similar to the Wrangler trademark for Jeeps. The marks were identical and the products were related – closely. His next idea for a trailer trademark was Rubicon. He applied to register Rubicon for trailers and he started manufacturing Rubicon trailers. Then he started selling Rubicon trailers and the Patent and Trademark Office issued Registration No. 2,282,128 to him for the trademark Rubicon for cargo trailers.

Denny went to the Detroit Auto Show, and that’s where he first saw a Jeep Wrangler Rubicon. His Rubicon trailer was a perfect match for the two door Jeep Wrangler Rubicon. He optimistically, and naively, supposed that Daimler-Chrysler would be as thrilled as he would be to work together to bring the Rubicon cargo trailer to the market. He was wrong. Daimler-Chrysler made it clear that it wanted nothing to do with Denny or his Rubicon trailer. Before the first Jeep Wrangler Rubicon was sold, he filed a lawsuit against Daimler-Chrysler for trademark infringement. What the heck? If Wrangler for trailers was too similar to Wrangler for Jeeps, then Rubicon for Jeeps must be too similar to Rubicon for trailers.

Judge Katz denied Denny’s motion for a preliminary injunction and Daimler-Chrysler filed a motion for summary judgment. I met Denny just before the deadline for opposing the motion for summary judgment. We did some digging and found some interesting facts. Daimler-Chrysler filed an application to register Rubicon for automobiles, and registration was refused because it was too similar to Denny’s Rubicon trademark registered for trailers. Trademark counsel for Daimler-Chrysler filed an inch thick request for reconsideration and he hammered the “fact” that no automobile company made or sold trailers, so no one would be confused. The Patent and Trademark Office relented and issued a registration to Daimler-Chrysler for the mark Rubicon for automobiles.

Someone forgot to tell learned trademark counsel for Daimler-Chrysler that it was selling a trailer for its Plymouth Prowler. In fact, Daimler-Chrysler owned five US trademark registrations for marks registered for both automobiles and trailers! We filed a motion asking for summary judgment that the Daimler-Chrysler registration was procured by fraud – false statements were made and the Patent and Trademark Office relied on those statements in withdrawing its refusal to register Rubicon for automobiles.

Before the Court ruled on the motions for summary judgment, the parties agreed to mediation before former Federal District Court Judge Dick McQuade. Soon after, the case settled and Denny sold his Rubicon trademark to Daimler-Chrysler. The other terms of the settlement were, and remain, confidential. I can tell you, however, that Denny got in his Jeep and drove to Arizona. He had plenty of gas money.

Fact checking is important in every legal matter because what you do not know can hurt you, and your client. When you make false statements to the Patent and Trademark Office and the Office relies on those statements and issues a registration, your reputation and the validity of the registration are in grave peril.

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