Mercedes-Benz in conflict with DONMAR's SKYROOF® Trademark
2 November 1998
Jacksonville, FL - In March 1998 Mercedes-Benz of North America (MBNA) introduced their new "Sky Roof" sunroof option for their 1999 M-Class. However, the name SKYROOF® has been a registered trademark of DONMAR Enterprises, Inc. for automotive sunroofs since 1989. DONMAR, based in Jacksonville, Florida, is a leading wholesale supplier of aftermarket automotive accessories, including FUNSPORT® sunroofs, SKYROOF® sunroofs and wind deflectors, and other DONMAR® brand sunroofs, restyling products, and truck accessories. DONMAR notified MBNA in early April that "Sky Roof" infringes upon DONMAR's SKYROOF® trademark, and was asked to license it, purchase it, or stop using it. MBNA legal counsel acknowledged potential confusion and verbally admitted a failure to perform a trademark search before choosing the name, yet neglected to respond to DONMAR's demands in writing. DONMAR's legal counsel again contacted MBNA in June to demand action. Between April and August, MBNA failed to make adequate efforts to change the name. Official Mercedes-Benz websites promoted "Sky Roof" through mid August. SAE's Automotive Engineering Magazine August issue published a feature story on the Alabama Mercedes factory, referencing the new "Sky Roof." Several Mercedes-Benz Dealer websites continue to show the "Sky Roof," and PR Newswire, a paid service, continues to publish MBNA press releases on the M- Class "Sky Roof." In mid August MBNA changed the name to "Skyview Power Top," yet since has failed to effectively notify their dealer network, the press and the public that the name "Sky Roof" should no longer be used because SKYROOF® is owned by DONMAR. Further, MBNA has not published retractions, or compensated DONMAR for damages caused by their admitted error. SKYROOF® is a registered trademark of DONMAR Enterprises, Inc., Jacksonville, FL