DONMAR Sues Nissan Over SKYROOF(R) Trademark

JACKSONVILLE, Fla., March 16 -- Nissan launched their 2000 Xterra Sport Utility Vehicle in 1999, offering a "flip up skyroof" option. However, the mark SKYROOF(R) had been in use by DONMAR Enterprises, Inc. since 1985 for automotive sunroof products. In 1989, DONMAR was granted a federal trademark for SKYROOF(R), registration number 1,555,675.

DONMAR resolved the conflict in February 2001 by granting Nissan North America, Inc. and Nissan Jidosha Kobushiki Kaisha d/b/a Nissan Motor Co., Ltd., a license to use DONMAR's SKYROOF(R) trademark on model year 2000 and 2001 Xterra vehicles.

That license expired in August 2001. In the license agreement, Nissan expressly agreed to deliver a notice, a copy of which shall be provided to DONMAR, to all affiliated entities notifying them that SKYROOF(R) was not to be used on vehicles after the 2001 model year, and a different term would be used on subsequent model year vehicles. To date, DONMAR has not received a copy of such notice, and believes that Nissan's failure to issue such notice led to 2002 and newer model Nissan Xterra vehicles being advertised with the "flip up skyroof" feature.

In addition, beginning in model year 2002, Nissan adopted the term "SKYROOF" to describe the sunroof feature on their X-Trail SUV. Further, in 2003 Nissan launched the term "SKYVIEW ROOF" to describe a new sunroof feature offered in their 2004 Maxima and Quest vehicles. DONMAR has evidence indicating that Nissan dealers, the media and even consumers have called Nissan's new "SKYVIEW ROOF" a "SKYROOF."

DONMAR believes that Nissan's use of SKYROOF and SKYVIEW ROOF are in violation of the terms of the license agreement and their trademark rights. In June of 2003, DONMAR brought suit against Nissan in Federal Court*, claiming that Nissan breached the license agreement by failing to send the specified notice, by using "SKYROOF" to describe the sunroof feature on X-Trail, and by using "Skyview Roof," a confusingly similar term. DONMAR is seeking both damages and injunctive relief for breach of contract and trademark infringement. This lawsuit is ongoing.

DONMAR is a leading wholesale supplier of aftermarket automotive sunroofs, restyling products, and truck accessories based in Jacksonville, Florida. They have been servicing installation professionals nationwide and around the world since 1984.

* Civil Action No. 03:03CV-51521 TEM - U.S. District Court, Middle District of FL, Jacksonville Division