CFE Racing Products, Inc. v. BMF Wheels, Inc.
793 F.3d 571
| 6th Cir. | 2015Background
- CFE Racing Products (Plaintiff) uses a registered BMF trademark (letters “BMF”, no style restrictions) on aftermarket cylinder heads and related goods since 2003; registration issued 2007.
- BMF Wheels, Inc. (Defendant) began using the mark “BMF Wheels” and a logo visually similar to CFE’s mark in commerce in 2007 and obtained a federal registration for “BMF Wheels” in 2008.
- Plaintiff sued in 2011 under the Lanham Act and Michigan Consumer Protection Act (MCPA), and sought cancellation of Defendants’ registration.
- A jury found Defendants’ use likely to cause confusion with Plaintiff’s registered and unregistered BMF marks, but found no willfulness and awarded no actual damages.
- The district court entered a narrowly tailored permanent injunction requiring redesigns/disclaimers, allowed continued use of the phrase “BMF Wheels” (with limits), and declined to cancel the registration or award MCPA attorneys’ fees.
- On appeal the Sixth Circuit affirmed most rulings but remanded for fee award under the MCPA, required cancellation of the “BMF Wheels” registration, and ordered the injunction modified to bar Defendants’ use of the infringing mark.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Sufficiency of evidence / JMOL | Jury verdict supported by mark similarity, related goods, anecdotal confusion | Insufficient evidence; JMOL warranted | Defendants waived JMOL by not moving before submission; claim foreclosed |
| New trial based on evidentiary error & counsel misconduct | Admission of PTO "BMF Offroad" file and other evidence was proper; no prejudice | PTO evidence, hearsay and improper counsel remarks required new trial | No abuse of discretion; evidentiary rulings not plainly erroneous and errors harmless |
| Cancellation of Defendants’ trademark registration | Cancellation required because jury found likelihood of confusion with Plaintiff’s registered BMF (registration has no style limits) | Limiting injunction (redesign/disclaimers) sufficiently protects Plaintiff | Court abused discretion by not cancelling; remand to order cancellation |
| Attorneys’ fees under MCPA | Fees recoverable despite zero monetary damages because "loss" need not be proven as monetary actual damages | Fees unavailable absent proof of actual damages | Remand to award reasonable attorneys’ fees under Michigan law ("loss" interpreted broadly) |
Key Cases Cited
- Innovation Ventures, LLC v. N2G Distrib., Inc., 763 F.3d 524 (6th Cir. 2014) (likelihood-of-confusion / appellate standards)
- Weisgram v. Marley Co., 528 U.S. 440 (2000) (appellate remedies when erroneously admitted evidence is excised)
- Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006) (procedural requirement to preserve Rule 50 challenges)
- Frisch's Restaurants, Inc. v. Shoney's, Inc., 759 F.2d 1261 (6th Cir. 1985) (multi-factor likelihood-of-confusion test)
- Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) (weight of similarity of marks)
- Patsy's Italian Restaurant, Inc. v. Banas, 658 F.3d 254 (2d Cir. 2011) (§ 1119 review is for abuse of discretion)
- Gracie v. Gracie, 217 F.3d 1060 (9th Cir. 2000) (court should cancel registrations invalidated by verdict)