Creation of Advertising Materials Using Ford Marks by Printer Not a Use in Commerce

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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.

Printer Makes Materials for Car Dealers

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.

No Likely Confusion for Used Car Dealers

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.

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