Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...
By Anandashankar Mazumdar
A commercial printer that made banners and other advertising material including Ford trademarks for car dealers did not use those marks in commerce as required for a finding of trademark infringement under federal law, the U.S. Court of Appeals for the Fifth Circuit ruled Feb. 16 (National Business Forms and Printing Inc. v. Ford Motor Co., 5th Cir., No. 100023, 2/16/12).
Affirming in part an award of summary judgment, the court did find error in the lower court's finding of likelihood of confusion in the use of a Ford logo on a used car dealer sign along with several other car company logos.
National Business Forms and Printing of Navasota, Texas, is a commercial printer that offers local businesses services relating to custom signs, stickers, banners, and other materials.
On its website, users can enter the name of a company and view a display of corporate logos stored in an online database. A user can then order items including the logo. The website displays a disclaimer stating that the purchaser affirms that it has authorization to order the logo-bearing item.
Ford Motor Co. discovered that 14 of its trademarks were included in the online database. When Ford objected, National filed a claim in Texas state court, seeking a declaration of noninfringement.
Ford sought removal of the proceeding to federal court and filed counterclaims of trademark infringement, counterfeiting, dilution, and false designation of origin and moved for summary judgment.
Judge Ewing Werlein Jr. of the U.S. Court of Appeals for the Fifth Circuit denied summary judgment with regard to three types of materials: Advertising material ordered by authorized Ford dealers, materials ordered by independent used car dealers, and a sign objecting to the bailout of the big three American automakers.
However, with respect to other categories of materials, the district court granted summary judgment in Ford's favor and issued a permanent injunction.
After a trial, the district court found that the sales to authorized Ford dealers were not infringing; however, the sales to unauthorized used car dealers were infringing. The court also ruled that there was no dilution.
Both parties appealed.
Judge Emilio M. Garza first ruled that National had waived the argument that the district court had erred in determining generally that its offering items for sale bearing Ford trademarks was infringing. According to the court, this waiver was based on National's failure to substantively address the district court's findings on this question.
However, with regard to the sales of materials to the used car dealerships, the court found clear error on the district court's part the infringement finding.
In these instances, National created materials bearing the logos of numerous auto makers, which, according to the court, dispelled any possibility of confusion.
“Ford's emphasis on the potential of confusion … does not convince us that the typical consumer likely would perceive that Ford endorsed or approved this diverse array of corporate logos, particularly at dealerships operating under the names ‘Greenspoint Dodge Used Car Sales' and ‘Tomball Dodge,' ” the court said.
Next, the court found no error in the ruling that the sales of materials to authorized Ford dealers were not infringing. Here, the court determined that the uses in question were permitted by the license granted by Ford to its authorized dealers.
Turning to the dismissal of the dilution claim, the court agreed with the district court that a commercial printer's inclusion of a company's trademark on an advertising item did not constitute a use in commerce and thus could not be infringing.
Specifically, the court said, a use in commerce by a party, as indicated by federal trademark law, constitutes a use of a distinguishing mark in order to identify or distinguish that party's goods or services.
Finally, the court affirmed the lower court's denial of Ford's request for attorneys' fees.
The court's opinion was joined by Judges Jacques L. Wiener Jr. and Edward C. Prado.
National Business Forms was represented by Lester Raymond Buzbee III of Humble, Texas. Ford was represented by Troy Steven Allen of Baker Hostetler, Houston.
Opinion at http://pub.bna.com/ptcj/1020023Feb16.pdf
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to email@example.com.
Put me on standing order
Notify me when new releases are available (no standing order will be created)