Ford Motor Co. v. O.E. Wheel Distributors, LLC
868 F. Supp. 2d 1350
M.D. Fla.2012Background
- Ford sued OEW for federal trademark infringement, counterfeiting, unfair competition, dilution, FDUTPA, and related state claims over OEW wheels and center caps bearing Ford marks.
- OEW sold Ford-compatible wheels, sometimes using Ford mark designs on center caps sourced from Ford dealers or OEW manufacture.
- Ford issued a cease-and-desist; OEW redesigned its cobra cap but Ford pursued ongoing infringement claims.
- Ford obtained an ex parte seizure of OEW wheels; the parties entered a stipulated injunction but damages remained unresolved.
- OEW asserted counterclaims for wrongful seizure and abuse of process; Ford asserted affirmative defenses and counterclaims.
- The court considered motions for summary judgment on Ford’s affirmative claims, OEW’s defenses, and OEW’s counterclaims; rulings granted in part and denied in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement and unfair competition likelihood of confusion | Ford owns the marks; OEW used them without authorization; likelihood of confusion shown | OEW contends fair use, first sale, and other defenses; some uses not confusing | Summary judgment for Ford on several specific mark uses; genuine issues remain on others |
| Defendants’ asserted defenses (laches, estoppel, waiver, acquiescence, unclean hands) | Ford did not abandon rights; no bad faith; defenses fail | Some defenses raise material facts (bad faith seizure, estoppel) | Laches, waiver, estoppel, acquiescence, and unclean hands denied or reserved where genuine issues exist; laches granted on other grounds |
| Counterfeiting claim against OEW for unregistered marks | Ford seeks counterfeiting for marks including registered cobra | Cobra mark not covering wheels at seizure time; counterfeiting not shown | Granted in part: OEW not liable for counterfeiting of unregistered cobra mark on wheels; other marks remain unresolved |
Key Cases Cited
- Babbitt Elecs., Inc. v. Dynascan Corp., 38 F.3d 1161 (11th Cir. 1994) (establishes likelihood-of-confusion factors and protection for strong marks)
- Dieter v. B & H Indus., of Sw. Florida, 880 F.2d 322 (11th Cir. 1989) (likelihood of confusion seven-factor test; strength of mark; similarity of marks/goods)
- General Motors Corp. v. Keystone Auto. Indus., 453 F.3d 351 (6th Cir. 2006) (post-sale confusion; strong factors favor infringement findings)
- Exxon Corp. v. Texas Motor Exch., Inc., 628 F.2d 500 (5th Cir. 1980) (similarity of goods; strength of marks; likelihood of confusion)
- Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275 (6th Cir. 1997) (evidence of confusion aids likelihood-of-confusion analysis)
- Century 21 Real Estate Corp. v. Lendingtree, Inc., 425 F.3d 211 (3d Cir. 2005) (nominative fair use; proper use of marks to identify compatible products)
- New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992) (fair use considerations in trademark contexts)