A former Minnesota Mercedes-Benz dealer may continue to use and license a toll-free number that translates to 1-800-MERCEDES, a federal appeals court has ruled.
Donald Bloom and his company, MBZ Communications Inc., aren't violating the trademarks and service marks of Mercedes-Benz USA LLC and DaimlerChrysler, the panel said.
"There is no dispute that MBZ only licensed the phone number but did not advertise or promote Mercedes' protected marks," said Chief Judge David Hansen of the Eighth Circuit Court of Appeals in St. Louis.
There will be no further appeal, Mercedes-Benz spokeswoman Donna Boland says.
The unanimous decision clears the way for Bloom to continue licensing the vanity number 1-800-637-2333 to Mercedes-Benz dealers nationwide.
Only MBZ's six client dealerships -which were not sued - promoted the number as 1-800-MERCEDES, the court noted. Those dealerships pay for the exclusive right to use the number in a designated area.
Calls from other areas are routed to MBZ, which the court said receives about 100 calls daily from customers trying to reach Mercedes-Benz's Client Assistance Center.
Says Boland: "Our concern is that people believe they're reaching Mercedes-Benz headquarters in the United States."
The court rejected the argument that a vanity phone number - which has multiple possible alphanumeric translations - is equivalent for infringement purposes to a unique Web domain name.
Bloom was a Mercedes-Benz dealer in Owatonna and St. Paul from 1984 to 1997, when the carmaker terminated its dealer agreements, the court said.
Both Boland and Bloom's lawyer, Elliot Kaplan of Minneapolis, say the termination was not related to the telephone number dispute.