911 F. Supp. 2d 616
E.D. Tenn.2012Background
- Ford owns several registered marks including Ford in Script in Oval, Motorcraft, and Speeding Car Design; the Core Return Policy ties core parts to labeling and packaging that identify authenticity.
- Defendants allegedly sold Ford and Motorcraft parts in counterfeit packaging/labels to dodge confusion and to piggyback on Ford’s reputation.
- Ford obtained an ex parte seizure order and seized counterfeit packaging, labels, and parts at Collins’ residence and HMG’s Red Bank facility.
- Defendants admitted repackaging parts and using labels designed to resemble Ford’s, but claimed they only sold genuine parts and did so to avoid dealer confusion.
- Plaintiff asserted trademark infringement, counterfeiting, false designation of origin, and dilution; the court granted summary judgment on infringement, counterfeiting, false designation, and dilution, with damages and remedies to be resolved later via hearing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion in infringement | Ford shows use of identical labels and counterfeit packaging; intentional copying creates confusion | HMG inspected parts for genuineness and sold only genuine Ford parts | Likelihood of confusion established; infringement proven |
| First sale doctrine applicability | First sale does not apply due to deceptive repackaging | Repackaging falls within first sale protections | First sale doctrine not available due to repackaging that misleads customers |
| Genuineness/quality control interference | Defendants interfered with Ford’s quality control by repackaging under Ford’s mark | Defendants contend parts were genuine Ford products | Defendants infringed by repackaging outside Ford’s quality control; genuineness not a defense in this context |
| False designation of origin under § 1125(a) | Same analysis as infringement shows false designation | Not explicitly addressed separately | False designation of origin proven by same factors as infringement |
| Trademark dilution | Use of identical mark post-fame caused dilution of Ford’s distinctiveness | Not distinguished from original mark; dilution disputed | Trademark dilution proved; summary judgment granted on this claim |
Key Cases Cited
- Abercrombie & Fitch v. Fashion Shops of Kentucky, Inc., 363 F. Supp. 2d 952 (S.D. Ohio 2005) (eight-factor test for likelihood of confusion; factors weigh in Ford’s favor when counterfeit goods are involved)
- General Motors Corp. v. Autovation Technologies, Inc., 317 F. Supp. 2d 756 (E.D. Mich. 2004) (presumption of confusion when precise counterfeits are copied)
- Prestonettes, Inc. v. Coty, 264 U.S. 359 (Supreme Court 1924) (first sale not infringement when not deceptive (repackaging for sale))
- El Greco Leather Prods., Co. v. Shoe World, Inc., 806 F.2d 392 (2d Cir. 1986) (broad view of genuineness; quality-control concerns can be central)
- Monsanto Co. v. Haskel Trading, Inc., 13 F. Supp. 2d 349 (S.D.N.Y. 1998) (boxes/packaging as part of the product; relevance to source and quality)
- Zino Davidoff S.A. v. CVS Corp., 571 F.3d 238 (2d Cir. 2009) (quality-control and manipulation of branding can constitute infringement)
- PACCAR Inc. v. TeleScan Technologies, LLC, 319 F.3d 243 (6th Cir. 2003) (first-sale limitations where reseller’s use misleads as to producer’s affiliation)