National Business Forms & Printing, Inc. v. Ford Motor Co.
671 F.3d 526
5th Cir.2012Background
- NBFP operates two websites offering NBFP design/printing using Ford logos; customers search by corporate name to view logos.
- Ford sent cease-and-desist; Ford sued NBFP in district court asserting federal and state trademark claims, including infringement, counterfeiting, dilution, and false designation of origin.
- District court categorized alleged infringements into four uses; denied summary judgment on first two categories; found NBFP's use in category four (broad promotional materials) infringing and entered a broad injunction.
- Three-day bench trial determined NBFP infringed by selling Ford-marked products to three independent used-car dealers, but not when dealing with authorized Ford dealers; dilution deemed unfounded; damages awarded to Ford; attorney’s fees denied.
- NBFP moved to amend to add an antitrust claim; district court denied, and NBFP, Ford cross-appealed on infringement, dilution, and fees.
- This Fifth Circuit opinion affirms in part, reverses in part, and remands for entry of judgment for NBFP on one category of products.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement properly analyzed? | NBFP contends no likelihood of confusion; district court erred in summary judgment. | Ford asserts strong marks and confusion; NBFP copied marks and marketed online. | Partial summary judgment for Ford affirmed on the challenged category. |
| Use of Ford marks by NBFP to non-authorized dealers infringing? | Ford shows NBFP’s products bearing Ford marks to used-car dealers infringe. | NBFP argues lack of consumer confusion and legitimate fair-use defenses. | NBFP’s sales to three independent dealers held infringing; later reversed for that category—no likelihood of confusion. |
| Dilution under TDRA, NBFP’s use? | Ford argues NBFP’s reproduction dilutes Ford’s marks. | TDRA use requires NBFP to identify/distinguish its own goods; reproduction for customers not a use. | NBFP did not “use” Ford marks to identify NBFP’s goods; dilution claim fails. |
| Attorney’s fees, exceptional case? | Ford seeks fees for exceptional case. | NBFP acted in good faith; not exceptional. | District court’s denial of attorney’s fees affirmed. |
| Post-trial amendment for antitrust claim? | NBFP implies consent to try antitrust claim by implication. | No implied consent; no trial evidence of tying. | District court did not abuse discretion in denying amendment. |
Key Cases Cited
- Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir. 1998) (likelihood of confusion factors; context matters)
- Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (digits of confusion; multifactor test; deference to district court findings)
- Bd. of Supervisors for LSU A&M Coll. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (likelihood of confusion; prominence and perception in market context)
- AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (leading factors for likelihood of confusion)
- Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007) (dilution framework for famous marks under TDRA)