Protecting Good Name : Volvo, O.C. Garage Battle in Court Over Trademark Use
Volvo Cars of North America wants to squash Jerry Fair flat as a Swedish pancake, but the proprietor of Dr. Volvo Independent Service says he isn’t going to give up without a fight.
He has already spent $125,000 in his efforts to rebuff Volvo’s legal challenge. The company is angry that Fair uses the sturdy Swedish car’s name as part of his own business identity. But Fair he says he’ll spend that much more, if he must, to protect his business.
Volvo’s suit, filed in U.S. District Court in Santa Ana, could also establish a guidepost for other independent garages that use a brand name as part of their own to let potential customers know what kinds of cars they repair. “If Volvo loses, it will make bad law for them” and open things up for independents, says Ken Combs, Fair’s Newport Beach attorney.
Volvo, which wants Fair to give up the Volvo name and surrender all the profit he has made since starting Dr. Volvo in June, 1988, says the suit wouldn’t set a precedent. Even if Fair prevails in court, the decision would be based on the specific facts of the case and would not allow other garages to usurp brand names for their own uses, said attorney Alan Grimaldi, a Washington-based trade law specialist representing Volvo.
The car maker’s concern, he said, is that Volvo cannot assure the quality of Dr. Volvo’s work because the Fountain Valley repair shop is independent. Volvo, he says, doesn’t want people who might have a bad experience at Dr. Volvo thinking they went to a dealer or factory-authorized repair shop.
Volvo also wants Fair to stop using blue for his signs and in his ads because the car maker uses blue--although a darker shade--in its signs and advertising.
Fair says the logic is ludicrous.
“Part of our name is Independent Service. The last thing I want is for someone to think I am a dealer. We get our customers from people who are fleeing the dealers,” he says.
Volvo is not the only car company that goes after independent garages. Several Mercedes-Benz specialty repair shops in Orange County say they have received letters from the German auto maker asking them to stop using Mercedes-Benz in their business names. And Volkswagen was a terror in the days when it was a strong franchise in the United States, garage owners say.
But while a lot of so-called “cease and desist” letters are written by lawyers for car makers, relatively few suits are filed.
A spokesman at Volvotech Superservice in Tustin said that the independent shop, which also repairs Mercedes-Benzes under the name Mercedes Autotech, has received letters from both car makers voicing their displeasure over the names, but that neither has sued.
At Dr. Jaguar in Costa Mesa, co-owner Ray Nierlich said his independent shop has never been asked to drop Jaguar from its name. “But I’m aware that it can happen,” he said. “And I know that others [who repair Jaguars] have been asked. I think it depends on whether someone complains.”
Combs said he believes that Volvo targeted Fair because of complaints by local Volvo dealers. Fair has more than 3,500 Volvo owners on his customer list and says that many came to him because they were dissatisfied with the service they got from their dealers. Three of Volvo’s 50 California dealers are located in Orange County.
In a letter he sent to his customers late last month, Fair says Volvo recently obtained a copy of his customer list through the pretrial discovery process and intends to use it to contact clients to see if any have ever been confused about Dr. Volvo’s relationship with the car maker.
Volvo, Grimaldi contends, believes that “a certain segment of the population will believe that he is sponsored by Volvo” because he uses the car’s identity in his business name.
But there are more than 100 other independent garages across the country with Volvo in their names, including another Dr. Volvo near Palm Springs, and Volvo isn’t suing any of them, Combs said.
Grimaldi scoffs at the claim that the suit against Fair’s shop is a case of selective prosecution in which Volvo is picking on an independent because local Volvo dealers are angry.
“We don’t have to sue everyone” who uses Volvo’s name, he said. “In any large trademark enforcement issue there are usually lots of offenders, but you don’t institute litigation against every one. It is too costly.” Volvo has filed about 30 similar suits since the mid-1980s, he said, and most were settled before going to trial.
The suit against Fair’s Dr. Volvo was filed last year after almost three years of letter writing and personal visits by Volvo representatives failed to achieve a settlement, Grimaldi said.
Volvo’s motion for a summary judgment was rejected in April and trial has been scheduled for May 28.
Fair started Dr. Volvo after careers as a schoolteacher and principal, high school basketball coach and private entrepreneur.
Dr. Volvo began as a one-mechanic, two-hoist operation in a 1,900-square-foot shop. It now occupies a 12,000-square-foot shop with eight hoists and is busy enough to keep 11 employees--including six mechanics--working six days a week. The company grosses “more than $1 million a year,” Fair said.
He said he is refusing to back down because he believes Volvo is using the business name issue as an excuse and that its real agenda is to curtail competition.
“Sure they’re competition,” said Vinnie Panariello, new-car sales manager at Orange County Volvo in Garden Grove. “And sometimes people come in and ask if Dr. Volvo is owned by Volvo. But I don’t know that we’ve ever complained about them.”
Fair added the designation Independent Service to his business name in 1992 in response to a cease-and-desist letter from Volvo. Last year he began including in his ads and on his business stationery a statement disclaiming any connection with Volvo or its dealer network.
“I don’t know what more they need,” he said.
As for Volvo’s claim that some people would be confused, Dr. Volvo customer Gregory Berk says that’s bunk.
“Including the name of the automobile helps consumers immediately understand exactly what type of repair service the business performs, and by tacking on the words Independent Service to the name, even a moron would understand that it is not an authorized dealer,” Berk wrote in an angry letter last week to officials at Volvo’s U.S. headquarters in New Jersey.
Berk, an Irvine resident who grew up in a Volvo-driving family and has owned two since 1988, says he was so upset when he received Fair’s letter to Dr. Volvo customers that he has decided to switch to a domestic brand when he buys his next car.
“I’m going shopping for a Buick,” he said.