NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit 

__________________________ 

MICHAEL DALTON, 

Appellant, 

v. 

HONDA MOTOR CO., LTD., 

Appellee. 

__________________________ 

2011-1077 

__________________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board. (Opposition 

No. 91173105). 

_________________________ 

Decided: June 13, 2011 

_________________________ 

MICHAEL DALTON, Cincinnati, Ohio, pro se. 

DYAN FINGUERRA-DUCHARME, White & Case, LLP, of 

New York, New York, for appellee. 

__________________________ 

Before PROST, MOORE and O’MALLEY, Circuit Judges. 

PER CURIAM. 
DALTON v. HONDA MOTOR 2

Michael Dalton (“Dalton”) appeals from the final decision of the Trademark Trial and Appeal Board (“the 

Board”) sustaining Honda Motor Co., Ltd.’s opposition 

and refusing Dalton’s registration of the mark 

“DEALERDASHBOARD” on grounds that it is merely 

descriptive. Honda Motor Co., Ltd. v. Dalton, 2010 TTAB 

LEXIS 358 (T.T.A.B. Aug. 6, 2010) (“Board Decision”). 

For the reasons explained below, we affirm. 

BACKGROUND

Dalton has applied to register the mark 

DEALERDASHBOARD for the following International 

Class 35 services: 

providing automotive dealerships managerial information concerning their Sales, Service, and 

Parts departments key financial indicators of how 

their dealership is performing via the Internet; 

and providing a web site featuring information 

about automobile dealerships, automobiles, automotive parts and accessories, at which users can 

link to the retail or wholesale web sites of others. 

Appendix (“A”) 20. Dalton asserted October 5, 1999 as the 

date of first use of the mark in commerce. 

In May 2006, Dalton sent a cease and desist letter to 

American Honda Motor Co., Inc. (“American Honda”), 

demanding that it cease using the mark 

DEALERDASHBOARD on its network. In the letter, 

Dalton informed American Honda that he owned the 

trademark/service mark DEALERDASHBOARD and 

operates the website DealerDashboard.com, which offers 

services to automotive dealerships. According to Dalton, 

it was brought to his attention that American Honda was 

using that same mark “to offer competing service to [its] 
3 DALTON v. HONDA MOTOR

dealer body.” The record reflects that American Honda is 

a wholly-owned subsidiary of Honda Motor Co., Ltd. 

On September 27, 2006, Honda Motor Co., Ltd. 

(“Honda”) filed a Notice of Opposition on grounds that the 

DEALERDASHBOARD mark “is a generic term, or, at 

best, a merely descriptive term.” A26. Honda explained 

that it is a corporation organized under Japanese law and 

that, through its subsidiaries and affiliates, it “manufactures, markets and sells, among other products, automobiles, motorcycles, motor scooters and all-terrain vehicles 

throughout the world.” A25. 

In the Notice of Opposition, Honda alleged, among 

other things, that: (1) “dashboard” is a “term of art in the 

Internet industry, denoting a user interface for organizing 

and displaying key information”; (2) it uses the term 

“dealer dashboard” on its internal network, which is 

accessible only to authorized Honda dealers, “to describe a 

tool that presents information to its authorized dealers 

about their sales, service and parts departments”; and 

(3) registration of the DEALERDASHBOARD mark would 

damage Honda because it “may subject [it] to an infringement suit” for using the “descriptive designations 

“Dealer Dashboard” or “Dashboard.” 

Dalton filed an Answer on January 6, 2007, in which 

he: (1) denied that the DEALERDASHBOARD mark was 

generic; and (2) argued that the Board lacked jurisdiction 

over Honda because it is a foreign corporation organized 

under the laws of Japan. Dalton also claimed that he 

“invested extensive time and resources” making 

DEALERDASHBOARD a “source identifier” and that it 

has become “alternatively distinctive and famous within 
DALTON v. HONDA MOTOR 4

the automotive industry.” Doc. 8, Answer at 5 (Jan. 6, 

2007).1

During the course of the Board proceedings, Honda 

served Dalton with interrogatories and document requests. When Dalton failed to respond to the discovery 

requests, Honda filed a motion to compel. In response, on 

April 2, 2007, Dalton filed a motion to dismiss, motion for 

sanctions, or in the alternative, motion to strike. In his 

motion, Dalton sought dismissal for failure to state a 

claim and for lack of jurisdiction. He also sought to strike 

Honda’s discovery requests and motion to compel. 

In an order dated February 29, 2008, the Board: 

(1) denied Dalton’s motion to dismiss on grounds that it 

was untimely, since it was filed roughly three months 

after he filed his answer; (2) granted Honda’s motion to 

compel discovery requests; and (3) ordered Dalton to 

provide, without objection, “full and proper responses” to 

the discovery requests within thirty days. Dalton failed to 

comply with the Board’s order, and subsequently sought 

to introduce documents and evidence not produced in 

discovery during his testimony deposition. Honda objected to the use of those documents on grounds that they 

were not previously produced and raised additional objections, including hearsay and lack of foundation. 

Honda sought and obtained an extension of time 

which reset its 30-day testimony period to close on October 27, 2008. As such, Honda’s testimony period opened 

on September 28, 2008 and continued until October 27, 

2008. Notwithstanding this timeframe, Honda conducted 

a trial deposition of Cynthia Mangham on September 16, 

2008. Mangham, the Manager of the Interactive Network 

 1 Citations to documents found on the TTAB online 

docket system are identified by docket number, title, date, 

and page number. 
5 DALTON v. HONDA MOTOR

Marketing and Rollout for American Honda, testified 

that, in 2004, American Honda began using the term 

“dealer dashboard” on its internal network to communicate “key operating indicators” to automotive dealers. 

Dalton did not participate in Mangham’s testimony 

deposition. Instead, roughly six (6) months after the 

deposition took place – on March 6, 2009 – Dalton filed a 

motion to strike Mangham’s trial testimony on grounds 

that it took place outside the set testimony period. On 

May 27, 2009, the Board denied Dalton’s motion to strike 

as untimely. In reaching this decision, the Board noted 

that, 

[w]hen a testimony deposition is noticed for a date 

prior to the opening of the deposing party’s testimony period, an adverse party that fails to 

promptly object to the scheduled deposition on the 

ground of untimeliness may be found to have 

waived this ground for objection, because the 

premature scheduling of a deposition is an error 

which can be corrected on seasonable objection. 

Doc. 53, Order Resetting Trial Dates at 2 (May 27, 2009) 

(citing Trademark Trial and Appeal Board Manual of 

Procedure (“TBMP”) § 707.03(a) (2d ed. 2004)).2 

On November 13, 2009, Honda filed its trial brief on 

the merits. Although he sought and obtained an exten-

 2 While Dalton argues on appeal that the Board 

erred by denying his motion to strike Mangham’s testimony, we find no error in the Board’s analysis. As the 

Board correctly noted, an objection to a testimony deposition “must be raised promptly if the defect is one that can 

be obviated or removed, failing which it is deemed 

waived.” TBMP § 707.03(a). Because Dalton filed his 

motion to strike roughly six months after the testimony 

deposition took place, the Board did not err in finding his 

motion untimely. 
DALTON v. HONDA MOTOR 6

sion of time in which to respond, Dalton failed to file a 

responsive trial brief. In a decision dated August 6, 2010, 

the Board sustained Honda’s opposition to registration of 

the DEALERDASHBOARD mark on grounds of mere 

descriptiveness. The Board found that: (1) Honda had 

standing to oppose Dalton’s mark on behalf of its whollyowned subsidiary; (2) DEALERDASHBOARD merely 

describes the services provided: “Internet-based information regarding sales, service, and inventory or parts to 

automobile dealerships”; (3) Honda failed to show that 

DEALERDASHBOARD is a generic term; (4) Dalton did 

not plead acquired distinctiveness, and there is no evidence to support such a claim. The Board also sustained 

Honda’s evidentiary objections and noted that, even if the 

excluded documents were considered, the outcome would 

be the same. 

Dalton timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B). 

STANDARD OF REVIEW

We review the Board’s legal conclusions de novo and 

its factual findings for substantial evidence. In re Pacer 

Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003). Substantial 

evidence is “‘more than a mere scintilla’ and ‘such relevant evidence as a reasonable mind would accept as 

adequate’ to support a conclusion.” Id. (quoting Consol. 

Edison v. NLRB, 305 U.S. 197, 229 (1938)). 

DISCUSSION

Dalton’s primary arguments on appeal fall into three 

categories. He argues that: (1) as a foreign corporation, 

Honda lacked standing to file an opposition on behalf of 

Honda America; (2) the Board erred when it found that 

the mark DEALERDASHBOARD was merely descriptive; 
7 DALTON v. HONDA MOTOR

and (3) the Board erred when it excluded certain evidence 

from his testimony deposition. 

In response, Honda submits that: (1) it has standing 

to file suit on behalf of American Honda because American Honda is a wholly-owned subsidiary; (2) the term 

DEALERDASHBOARD is merely descriptive of the 

identified services; and (3) the Board properly sustained 

Honda’s objection to certain documents on grounds that 

they were not previously produced during discovery in 

accordance with the Board’s order compelling discovery 

responses. 

For the reasons set forth below, we find Honda’s arguments well-taken. Because we find no error in the 

Board’s decision, we affirm. 

I. 

Under Article III of the United States Constitution, a 

plaintiff must show a “case or controversy” between the 

parties to establish standing. Ritchie v. Simpson, 170 

F.3d 1092, 1094 (Fed. Cir. 1999). The “case” and “controversy” restrictions do not, however, apply to matters 

before administrative agencies. Id. Instead, for an 

agency such as the PTO, standing is conferred by statute. 

Here, standing is conferred by Section 13 of the Lanham 

Act, which provides, in pertinent part, that “[a]ny person 

who believes that he would be damaged by the registration of a mark . . . may, upon payment of the prescribed 

fee, file an opposition in the Patent and Trademark Office, 

stating the grounds therefor.” 15 U.S.C. § 1063(a). The 

purpose of the standing requirement is “to prevent litigation where there is no real controversy between the parties, where a plaintiff, petitioner or opposer, is no more 

than an intermeddler.” Lipton Indus., Inc. v. Ralston 

Purina Co., 670 F.2d 1024, 1028-29 (C.C.P.A. 1982). 
DALTON v. HONDA MOTOR 8

In addition to meeting the broad requirements of § 13, 

an opposer must satisfy two judicially-created standing 

requirements. Ritchie, 170 F.3d at 1095. Specifically, an 

opposer has standing under § 13 if it can show: (1) a “real 

interest” in the proceeding; and (2) a “reasonable basis” 

for believing that it would suffer damage if the mark is 

registered. Id. Under the “real interest” requirement, an 

opposer must have “a legitimate personal interest in the 

opposition.” Id. With respect to the second inquiry, the 

opposer’s belief of damage “must have a reasonable basis 

in fact.” Id. at 1098 (citation omitted). 

A parent company has standing to file an opposition 

on behalf of its wholly-owned subsidiary because it can 

“reasonably believe that damage to the subsidiary will 

naturally lead to financial injury to itself.” See Universal 

Oil Prods. Co. v. Rexall Drug & Chem. Co., 463 F.2d 1122, 

1124 (C.C.P.A. 1972) (finding that the parent corporation 

had a “real interest” in the proceeding and thus “standing 

to institute and maintain it”); see also Jewelers Vigilance 

Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 493 (Fed. 

Cir. 1987) (citing Universal Oil for the proposition that “a 

parent corporation has standing to oppose on the basis of 

a mark owned and controlled by its subsidiary”); Lipton, 

670 F.2d at 1029 (noting that the court has found standing to protect a subsidiary’s mark). The Board similarly 

has found that a parent company of a wholly-owned 

subsidiary has a “sufficient commercial interest” to satisfy 

standing requirements. See British-American Tobacco Co. 

v. Philip Morris Inc., 55 U.S.P.Q.2d 1585, 1591 (T.T.A.B. 

2000) (“Because petitioners allege that TISA is BATCo’s 

wholly owned subsidiary, we find that petitioners have 

alleged a sufficient commercial interest by BATCo in this 

proceeding for us to conclude that the petition contains an 

acceptable assertion of BATCo’s standing.”); cf. Target 

Brands, Inc. v. Hughes, 85 U.S.P.Q.2d 1676, 1679 
9 DALTON v. HONDA MOTOR

(T.T.A.B. 2007) (finding that a wholly-owned subsidiary 

had standing to oppose registration on behalf of its parent 

corporation because the parties were in privity and any 

harm to the parent would harm the subsidiary). 

Dalton argues that Honda lacked standing to oppose 

registration because it “is a foreign entity and applicant 

only made cease and desist demands on domestic organizations.”3 Appellant Informal Brief at 6. In response, 

Honda argues that it has a real interest and a reasonable 

basis for believing that it would be damaged if 

DEALERDASHBOARD was registered as a mark. Specifically, Honda argues that its wholly-owned subsidiary 

American Honda: (1) uses the phrase “dealer dashboard” 

to identify key information on its dealer interactive network; and (2) received a cease and desist letter from 

Dalton. 

We agree that Honda sufficiently demonstrated its 

standing to file an opposition on behalf of American 

 3 Dalton also argues that, as a foreign entity, 

Honda was shielded from discovery. Informal Brief at 6. 

To the extent Dalton is claiming that he sought discovery 

from Honda and was denied, there is no evidence supporting that argument in the record. In any event, there are 

mechanisms for obtaining discovery from a foreign entity. 

See 37 C.F.R. § 2.120(c)(1) (“The discovery deposition of a 

natural person residing in a foreign country who is . . . a 

person designated under Rule 30(b)(6) . . . shall, if taken 

in a foreign country, be taken in the manner prescribed by 

§ 2.124 unless the Trademark Trial and Appeal Board, 

upon motion for good cause, orders or the parties stipulate, that the deposition be taken by oral examination.”); 

see also 37 C.F.R. § 2.123(a)(2) (“A testimonial deposition 

taken in a foreign country shall be taken by deposition 

upon written questions as provided by § 2.124, unless the 

Board, upon motion for good cause, orders that the deposition be taken by oral examination, or the parties so stipulate.”). 
DALTON v. HONDA MOTOR 10

Honda. Although the Board did not specifically address 

the parent-subsidiary relationship, it applied the correct 

test and found that Honda demonstrated a real interest 

sufficient to give it standing to oppose Dalton’s application. See Board Decision, 2010 TTAB LEXIS 358 at *8-10. 

Because American Honda is Honda’s wholly-owned subsidiary, we find that Honda has alleged a “real interest” 

in the proceeding, including a reasonable belief that harm 

to American Honda would cause harm to Honda. See

Universal Oil, 463 F.2d at 1124; see also British-American 

Tobacco, 55 U.S.P.Q.2d at 1591. Accordingly, the Board 

did not err in finding that Honda had standing to oppose 

Dalton’s registration application. 

II. 

Dalton next argues that the Board erred when it: 

(1) found that the mark DEALERDASHBOARD was 

merely descriptive; and (2) failed to consider third-party 

registrations that contain the term DEALER and/or 

DASHBOARD.4 For the reasons discussed below, we find 

 4 Dalton also argues that the Board erred when it 

concluded that he failed to show acquired distinctiveness. 

In response, Honda argues that, because Dalton did not 

raise acquired distinctiveness below, he waived his right 

to assert it on appeal. As the Board correctly noted, an 

applicant bears the burden of establishing acquired 

distinctiveness. See Yamaha Int’l Corp v. Hoshino Gakki 

Co., Ltd., 840 F.2d 1572, 1576 (Fed. Cir. 1988). Although, 

as Honda points out, Dalton did not file a trial brief with 

the Board, the Board specifically addressed acquired 

distinctiveness and found that: (1) Dalton’s application to 

register the mark DEALERDASHBOARD did not include 

a claim of acquired distinctiveness; (2) he failed to assert 

acquired distinctiveness in his answer to the Notice of 

Opposition; and (3) even if statements in his answer could 

be construed as a claim of acquired distinctiveness, he 

submitted no evidentiary support for such a claim. Re-
11 DALTON v. HONDA MOTOR

that the Board’s descriptiveness determination was 

supported by substantial evidence. 

A. Merely Descriptive 

A mark is merely descriptive “if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In 

re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 

2007) (“Bayer”) (citing In re Gyulay, 820 F.2d 1216, 1217 

(Fed. Cir. 1987)). A mark may be merely descriptive 

“even if it does not describe the ‘full scope and extent’ of 

the applicant’s goods or services.” In re Oppedahl & 

Larson LLP, 373 F.3d 1171, 1173 (Fed. Cir. 2004) (citation omitted). It is well-established that 

“[d]escriptiveness of a mark is not considered in the 

abstract.” Bayer, 488 F.3d at 963-64. Instead, the mark 

must be “considered in relation to the particular goods for 

which registration is sought, the context in which it is 

being used, and the possible significance that the term 

would have to the average purchaser of the goods because 

of the manner of its use or intended use.” Id. at 964. 

Stated differently, “[t]he question is not whether someone 

presented with only the mark could guess what the goods 

or services are. Rather, the question is whether someone 

who knows what the goods or services are will understand 

the mark to convey information about them.” In re Tower 

Tech Inc., 64 U.S.P.Q.2d 1314, 1316-17 (T.T.A.B. 2002). 

Evidence that a term is merely descriptive “may be 

obtained from any competent source, such as dictionaries, 

newspapers, or surveys.” Bayer, 488 F.3d at 964 (quoting 

In re Bed & Breakfast Registry, 791 F.2d 157, 160 (Fed. 

Cir. 1986)). A determination that a mark is merely descriptive is a factual finding that this court reviews for 

 

gardless of whether Dalton can raise this issue on appeal, 

we find no error in the Board’s analysis. 
DALTON v. HONDA MOTOR 12

substantial evidence. Bayer, 488 F.3d at 964. For the 

reasons that follow, we conclude that the Board’s factual 

findings were supported by substantial evidence. 

First, the Board looked to the dictionary definitions in 

the record which defined the term “dealer” as “one engaged in buying and selling.” Board Decision, 2010 TTAB 

LEXIS 358 at *11. The Board then considered documents 

in the record – including printed publications introduced 

as exhibits during Dalton’s discovery deposition – to 

determine the meaning of the term “dashboard.” Honda 

submitted evidence including dozens of examples of third 

parties who use the term “dealer dashboard” or 

“dashboard” to describe an Internet-based system that 

provides dealers with key performance indicators. As the 

Board noted, the record includes the following representative examples: 

• Denon Dealer Dashboard: “The Dealer 

Dashboard is the easiest way for Denon 

dealers to get the latest information on 

Denon products, events, company information and more. As a Denon dealer, the 

Dashboard provides you with all kinds of 

product related items such as downloads, 

Images, sell sheets, and more.” A168. 

• GoalLine Solutions: “Dealer Dashboard 

Key Performance Indicators (KPIs) provide the dealer and service manager with 

visibility to the crucial numbers that drive 

the performance of the service [sic] Department. You have the ability to set target goals for the average labor dollars per 

repair order, one line work order percentages and average hours per repair order 

and see the results by year, month, week 
13 DALTON v. HONDA MOTOR

or day. By comparing it to the prior year’s 

results, you have visibility to improvements in your department and more importantly areas of concern. By using our 

secure data extraction portal we provide 

daily updating on Labor sales, Repair order counts and total hours sold for all 

sales categories.” A176. 

• Using Siebel Dealer Dashboards (Dealer): 

“Siebel Dealer provides dealer employees 

with dashboards that allow them to view 

the most important information that they 

need for their work on one screen.” A165. 

Based on the third-party examples provided, and other 

evidence in the record, the Board found that the term 

“dashboard” “possesses a recognized meaning in the field 

of Internet-based business information tracking and 

presentation.” Board Decision, 2010 TTAB LEXIS 358 at 

*16. 

The Board further found that the terms DEALER and 

DASHBOARD have descriptive significance when used in 

connection with the services identified in Dalton’s application. Specifically, the Board found that a DEALER 

DASHBOARD “is the graphical display of sales, service 

and other information relating to businesses engaged in 

buying and selling goods, particularly automobiles.” Id. 

The Board concluded that DEALERDASHBOARD 

“merely describes, without conjecture or speculation, a 

significant characteristic or feature of applicant’s services, 

namely, that they provide Internet-based information 

regarding sales, service, and inventory or parts to automobile dealerships.” Id.

As Honda correctly argues, although the combination 

of two descriptive words may, in some instances, create a 
DALTON v. HONDA MOTOR 14

distinctive mark, the combination of the two terms at 

issue here “does not diminish the common descriptive 

significance of Applicant’s mark: A DEALER 

DASHBOARD is a dashboard for dealers.” Appellee Brief 

at 20. See In re Petroglyph Games, Inc., 91 U.S.P.Q.2d 

1332, 1341 (T.T.A.B. 2009) (finding that, “because the 

combination of the terms does not result in a composite 

that alters the meaning of either of the elements, refusal 

on the ground of descriptiveness is appropriate”); In re 

Nat’l Shooting Sports Foundation, Inc., 219 U.S.P.Q. 

1018, 1020 (T.T.A.B. 1983) (internal citations omitted) 

(“Combinations of merely descriptive components have 

been found registrable if the juxtaposition of the words is 

inventive or evokes a unique commercial impression, or if 

the term has a bizarre or incongruous meaning as applied 

to the goods.”). Dalton does not argue that the combination of terms alters their meaning, and, even if he did, 

there is no evidence in the record to support that argument.5 

 5 Dalton argues that there was no evidence that 

DEALERDASHBOARD was merely descriptive when he 

filed his application for registration in 2003. Informal 

Brief at 5. In response, Honda argues that, by 2003, the 

terms DEALER and DASHBOARD were descriptive “in 

connection with the applied-for services.” Appellee Brief 

at 19. According to Honda, the term “dashboard” was 

“commonly used to describe the presentation of managerial information and key financial indicators to businesses 

via the Internet well before 2003.” Id. In support of this 

argument, Honda points to a printed publication in the 

record entitled Information Dashboard Design: The Effective Visual Communication of Data, which discusses 

companies’ use of the term “dashboard” at least as early 

as 2003. Honda further argues that, to the extent Dalton 

claims to be the “first user” of DEALERDASHBOARD, 

there is no supporting evidence to that effect in the record. Even if there was, moreover, the “fact that an 
15 DALTON v. HONDA MOTOR

We find that substantial evidence supports the 

Board’s decision that DEALERDASHBOARD is merely 

descriptive. The dictionary definitions in the record, 

coupled with evidence of third parties that use the term 

“dealer dashboard” to describe services that are similar to 

those identified in Dalton’s application, support the 

Board’s descriptiveness finding. Accordingly, we find no 

error in the Board’s decision. 

As the Board recognized in its decision, Dalton’s application to register the mark DEALERDASHBOARD did 

not include a claim of acquired distinctiveness under 

Section 2(f). Nor did Dalton specifically assert acquired 

distinctiveness in his answer to the Notice of Opposition. 

Instead, Dalton merely alleged that his “exclusive and 

continuous use” of the mark DEALERDASHBOARD 

began in October 1999. Doc. 8, Answer at 1 (Jan. 6, 2007). 

He also claimed that he “invested extensive time and 

resources” making DEALERDASHBOARD a “source 

identifier” that has become “alternatively distinctive and 

famous within the automotive industry.” Id. at 5. The 

Board found that, even if Dalton’s statements in his 

answer were construed as a claim of acquired distinctiveness, he submitted no evidentiary support for such a 

claim. We agree. Because Dalton failed to establish that 

DEALERDASHBOARD acquired secondary meaning or 

distinctiveness “in the minds of the public,” we find no 

 

applicant may be the first and only user of a merely 

descriptive or generic designation does not justify registration if the only significance conveyed by the term is 

merely descriptive.” Trademark Manual of Examining 

Procedure § 1209.03(c) (7th ed. 2010). Because we find 

that the Board’s descriptiveness determination was 

supported by substantial evidence, Dalton’s unsupported 

arguments lack merit. 
DALTON v. HONDA MOTOR 16

error in the Board’s decision. See Dial-A-Mattress, 240 

F.3d at 1347. 

B. Third-Party Registrations 

Dalton next argues that the Board erred by not considering evidence of third-party registrations that include 

the term DEALER and/or DASHBOARD. This argument 

is without merit. 

It is well-established that third-party registrations 

“are not conclusive on the question of descriptiveness.” In 

re Scholastic Testing Serv., Inc., 196 U.S.P.Q. 517, 519 

(T.T.A.B. 1977) (disregarding third-party registrations 

including the term “SCHOLASTIC” on grounds that they 

did not involve the services set forth in the application 

before the Board). Even if there are third-party registrations using similar words, the Board “must decide each 

case on its own merits.” In re Nett Designs, Inc., 236 F.3d 

1339, 1342 (Fed. Cir. 2001); see also In re Rodale Inc., 80 

U.S.P.Q.2d 1696, 1700 (T.T.A.B. 2006) (“Although consistency in examination is a goal of the Office, the decisions 

of previous Trademark Examining Attorneys are not 

binding on us, and we must decide each case based on the 

evidence presented in the record before us.”). Accordingly, 

a merely descriptive mark does not qualify for registration simply because other similar marks appear on the 

register. See Nett Designs, 236 F.3d at 1342 (finding that 

prior registrations of marks including the term 

ULTIMATE “do not conclusively rebut the Board’s finding 

that ULTIMATE is descriptive in the context of this 

mark”). 

On appeal, Dalton argues that, because the Board 

previously registered the mark “Banker Dashboard,” it 

should “be consistent” and find that “DealerDashboard is 

a registerable mark.” Informal Brief at 6. Although 

“Banker Dashboard” and “DealerDashboard” both contain 
17 DALTON v. HONDA MOTOR

the term “Dashboard,” this alone is insufficient to rebut 

the Board’s decision that DEALERDASHBOARD is 

merely descriptive in the context of the identified services. 

See Nett Designs, 236 F.3d at 1342. Specifically, the 

Board found that the term DEALERDASHBOARD “is 

recognized and used by numerous third parties to describe 

Internet-based goods and services that are used to provide 

such information.” Board Decision, 2010 TTAB LEXIS 

358 at *16-17. Because the Board properly assessed the 

mark on its merits in the context of the services involved, 

we find no error in the Board’s analysis. 

III. 

Finally, turning to the Board’s evidentiary rulings, 

Dalton argues that the Board erred when it sustained 

Honda’s objections to certain documents he sought to 

introduce during his testimony deposition. In response, 

Honda argues that the Board properly struck the documents from the record because they were not produced in 

accordance with the Board’s discovery order. We agree. 

This court reviews evidentiary rulings for abuse of 

discretion. Crash Dummy Movie, LLC v. Mattel, Inc., 601 

F.3d 1387, 1390 (Fed. Cir. 2010) (citing Chen v. Bouchard, 

347 F.3d 1299, 1307 (Fed. Cir. 2003)). We will reverse 

only if the Board’s evidentiary ruling was: (1) “clearly 

unreasonable, arbitrary, or fanciful”; (2) “based on an 

erroneous conclusion[] of law”; (3) premised on “clearly 

erroneous findings of fact”; or (4) the record “contains no 

evidence on which the Board could rationally base its 

decision.” Id. at 1390-91. 

As noted, Honda served discovery requests on Dalton, 

and, when Dalton failed to respond, Honda filed a motion 

to compel production. In an order dated February 29, 

2008, the Board ordered Dalton to provide, without objection, “full and proper responses” to the discovery requests 
DALTON v. HONDA MOTOR 18

within thirty days. In its requests for production, Honda 

sought, among other things, “[a]ll exhibits that Applicant 

will introduce during any witness’s deposition or testimony” and “[a]ll exhibits that Applicant will rely on, refer 

to, or introduce during the testimony period in this proceeding.” A72. According to Honda, Dalton “produced 

only a limited set of materials” in response to these requests. During Dalton’s testimony deposition, however, 

he sought to introduce numerous documents that were not 

included in his prior production. Honda objected to these 

documents on grounds that they were not produced during the discovery period, and, in its trial brief on the 

merits, Honda asked the Board to strike the documents 

from the record. 

The Board sustained Honda’s objections and excluded 

the documents at issue on grounds that “a party may not 

rely at trial upon documents that were not produced in 

response to written discovery requests.” Board Decision, 

2010 TTAB LEXIS 358 at *6. In reaching this decision, 

the Board cited prior instances where it excluded evidence 

on grounds that it had not been produced during discovery. See Shoe Factory Supplies Co. v. Thermal Eng’g Co., 

207 U.S.P.Q. 517, 519 n.1 (T.T.A.B. 1980) (“[O]pposer is 

correct in its contention that a party may not properly 

introduce a document in evidence in its behalf after 

having refused to make it available to an adverse party 

seeking discovery thereof.”); see also Nat’l Aeronautics & 

Space Admin. v. Bully Hill Vineyards, Inc., 3 U.S.P.Q.2d 

1671, 1672 n.3 (T.T.A.B. 1987) (excluding exhibits that 

were requested during discovery “but which were not 

produced until opposer sought to introduce them during 

trial”). The Board noted, moreover, that, even if it had 

considered the documents, “the outcome would be the 

same.” Board Decision, 2010 TTAB LEXIS 358 at *6, n.9. 
19 DALTON v. HONDA MOTOR

We find no error in the Board’s decision to exclude 

documents which were requested during discovery but 

were introduced for the first time during Dalton’s testimony deposition. Because the Board specifically indicated 

that the excluded evidence had no bearing on the outcome 

of the proceeding, moreover, Dalton cannot show that 

consideration of that evidence would have led to a different result. Accordingly, we affirm the Board’s evidentiary 

rulings. 

CONCLUSION

For the foregoing reasons, and because we find that 

Dalton’s remaining arguments are without merit, we 

affirm the Board’s final decision. 

AFFIRMED 

COSTS

No costs.