March 2012 Issue
Nat’l Bus. Forms & Printing Inc. v. Ford Motor Co.,
101 U.S.P.Q.2d 1746 (5th Cir. Feb. 16, 2012)
National Business Forms & Printing Inc. (“NBFP”) is a small commercial printer, located in Texas, that makes custom signs, stickers, banners, and other advertising materials. NBFP’s website contains a “bank” of corporate logos available on its website available for use as part of NBFP’s custom printing services, including fourteen trademarks owned by Ford Motor Co. (“Ford” and the “Ford marks”). To access NBFP’s online catalog, a visitor must enter a corporate name and then click “Go” or “Enter.” NBFP’s websites state that “[b]y clicking Go or Enter, you agree that any artwork submitted or requested by you is a representation and warranty to us that you have written authorization, if needed, to order its reproduction.” The websites also state in red lettering that NBFP “is not affiliated with, licensed by, or endorsed by any company.” NBFP filled orders from authorized Ford dealerships and independent used car dealerships for advertising materials bearing the Ford marks, and had used one of the Ford marks on its website in connection with a “NO BIG 3 BAILOUT” bumper sticker.
Following its receipt of a cease-and-desist letter from Ford, NBFP sued Ford in Texas state court seeking a declaratory judgment that its use of the Ford marks did not constitute trademark infringement. Ford removed the case to the U.S. District Court for the Southern District of Texas and raised counterclaims of trademark infringement, counterfeiting, dilution, and false designation of origin under the Lanham Act and state law. Ford moved for summary judgment on all of its claims.
The district court divided NBFP’s uses of the Ford marks into four categories: (1) advertising materials bearing the Ford marks and printed at the request of authorized Ford dealerships; (2) advertising materials bearing the Ford marks and printed for independent used car dealerships not affiliated with Ford; (3) custom decals bearing the Ford logo and the message “NO BIG 3 BAILOUT”; and (4) a residual category of products, including decals, stickers, banners, and license-plate frames that NBFP offered for design and sale to which Ford logos could be attached.
The district court granted NBFP’s motion for declaratory judgment and denied Ford summary judgment with regard to NBFP’s use of the Ford marks in connection with advertising materials printed at the request of authorized Ford dealerships and advertising materials printed for independent used car dealerships. The district court also found that NBFP’s use of the Ford marks in connection with the NO BIG 3 BAILOUT sticker constituted a fair use. The district court granted Ford’s motion for summary judgment with regard to residual products, such as decals, banners, stickers, and signs offered for design and sale on NBFP’s website to which the Ford marks could be attached, and entered a permanent injunction targeting this category of products. Following a three-day bench trial, the district court ruled that (1) NBFP did not infringe the Ford marks by selling trademarked products to authorized Ford dealers; (2) NBFP did infringe the Ford marks by selling similar merchandise to three nonaffiliated used car dealerships; and (3) NBFP did not dilute the Ford marks because it did not use the Ford marks to identify or distinguish its goods or services. The parties cross-appealed.
On appeal, NBFP challenged the district court’s finding that NBFP infringed Ford’s marks by offering products for design and sale on its website to which the Ford marks could be attached, as well as the district court’s finding that NBFP’s sale of promotional materials bearing the Ford marks to used car dealerships constituted trademark infringement.
The Fifth Circuit reviewed the district court’s ruling that NBFP’s offering for sale of decals, stickers, banners, and license-plate frames to which Ford logos could be attached, (the “fourth category” of products) constituted trademark infringement, but noted that on appeal NBFP failed to “adequately target” any aspects of the district court’s grant of summary judgment that warranted reversal. Accordingly, the Fifth Circuit found that NBFP waived this issue on appeal.
With regard to sales of promotional materials to used car dealerships not affiliated with Ford, the Fifth Circuit disagreed with the district court’s holding, finding that printed stickers containing the Ford “oval logo,” printed banners, and vinyl decals used by used car dealerships did not create a likelihood of confusion because the “grouping of several competitors extinguishes any possible confusion,” particularly in light of the fact that the used car dealers did not display the Ford marks elsewhere on the showroom floors or lots. The appeals court further noted that “the context in which the Ford marks appear in the promotional materials . . . makes the likelihood of consumer confusion negligible,” due to the appearance of the Ford marks alongside several other domestic automakers’ logos. The court was not convinced that the “typical consumer” would mistakenly deduce that Ford approved the used car dealerships’ use of the Ford marks.
Ford also challenged the district court’s finding that NBFP’s use of the Ford marks for promotional materials sold to authorized Ford dealerships did not constitute trademark infringement, as well as the district court’s dismissal of its dilution claim. However, the Fifth Circuit affirmed the district court’s finding that those did not constitute trademark infringement, finding that the Ford Sales and Service Agreement (“SSA”) between Ford and its authorized dealers did not instruct Ford dealerships how to meet their advertising and visual media needs, and did not require these dealerships to purchase advertising through Ford-licensed printers.
Regarding Ford’s dilution claim, the Fifth Circuit agreed that NBFP did not “use” the Ford marks since NBFP, in filling its orders, did not use the Ford marks to identify or distinguish its own goods and services as required by the Trademark Dilution Revision Act (“TDRA”). The appeals court further agreed that NBFP did not use the marks for purposes of the TDRA because its use was “merely by reproducing them for customers as part of its commercial printing business,” and NBFP “had not appropriated Ford’s marks as its own.”
Finally, the Fifth Circuit affirmed the district court’s denial of attorneys’ fees to Ford, finding that the district court did not err in finding that this was not an “exceptional” case for Lanham Act purposes. Ford had argued before the district court that this case was “exceptional” due to the bad faith shown by NBFP in its filing a declaratory judgment action. The Fifth Circuit found, however, that NBFP brought its declaratory judgment action in good faith based on its belief that it had a legitimate defense to Ford’s claims of trademark infringement. The Fifth Circuit was further persuaded that no bad faith existed on the part of NBFP, based on the disclaimers found on its websites, and the fact that the president of NBFP regularly attended trademark law seminars to ensure that NBFP complied with the law.
This decision shows that while a commercial printer’s use of a famous trademark in connection with a “bank” of trademark logos and sale of promotional materials bearing that mark may constitute trademark infringement, such use may not give rise to a successful trademark dilution claim unless the commercial printer “uses” the mark in connection with its own goods and services. Since a commercial printer typically sells promotional materials that promote the goods and services of others, this decision suggests that a dilution claim may only succeed against a commercial printer under a very narrow set of circumstances.