Ford lost a case in the Fifth Circuit Court of Appeals yesterday when the court ruled that a Montgomery, Texas printer did not violate any law in printing the Ford logo for clients such as Ford dealers, used car dealers or anyone else using the Ford logo under standard fair use policies. The printer, George Atkinson, sued Ford after receiving a demand letter for $5,000 after he printed the Ford logo for a client. Mr. Atkinson sued Ford for unfair business practices and interference with third party contracts.
Mr. Atkinson says Ford has sent out thousands of letters to commercial printers, sign companies, advertising products companies and anyone else Ford finds using an image of the Ford logo for any reason, claiming users are infringing by using the Ford logo/trademark without Ford’s approval. Ford claims in the letters and in court that it has the right to approve the copy of the logo any printer uses. Ford also claims in the letters that any use not authorized by Ford amounts to counterfeiting. The letters all contain a standard $5000 demand for damages. The Ford demand letters also claim – falsely, according to Mr. Atkinson and to Ford’s OWN documents – that dealers are, by contract, allowed to use only six sources which Ford has “authorized” for the purpose.
“These false claims about their dealers’ contracts and trademark law is engaging in unfair business practices and drives out lawful print, sign, and promotional product competition. These patently false claims result in steering everyone to six ‘licensed’ sources or to spend hundreds of thousands in court defending the false claims.” Mr. Atkinson estimates that he has spent at least $200,000 himself fighting Ford over this issue.
“The ruling in our case proves that Ford’s claims are false,” says Mr. Atkinson. “If they were true, we would have lost in all categories. Ford admitted in their own filing that the 5th Circuit’s ruling and the lower Court’s final decision allows our company to print for any authorized dealer, any used car lot and any member of the general public using the mark in commentary that does not cause confusion, even though neither our company nor any of our customers are approved by Ford to copy or use the Ford logo.”
The 5th Circuit’s final ruling upheld Mr. Atkinson’s position that even though he (as well as all his customers/clients) is not approved by Ford to copy or use the Ford logo, the printer can:
(a) print materials including decals, license plate frames, inserts, signs, banners, business cards etc. for the category of authorized Ford dealers even though Ford will approve only six sources worldwide to print anything for anyone for any reason (according to Ford’s own testimony at trial in Mr. Atkinson’s case, claiming all others are counterfeiters). Ford also testified that it limits the number it will license to six, from whom it collects royalties.
(b) print for the category of used car lots advertising the sale of used Fords and Ford replacement and repair parts. The 5th Circuit found that doing so did not cause confusion as to a secondhand car dealer being an authorized dealer.
(c) print for the category of individual members of the general public using the logo to identify the company the logo is intended to represent in commentary on the markholder or their goods or services political statements, parody satire (for example, a “No bailout” sign).
Ford testified that it had not told its dealers it was accusing them of counterfeiting for using unapproved sources or that they were bound by Federal law to use only sources Ford was willing to approve them to use; but the automaker nonetheless told “unauthorized” printers in writing that it had an arrangement with dealers that required them to use one of six Ford-approved printers and that if the dealers used anyone else they were engaged in counterfeiting.
The ruling in this case seems to prove what almost everyone already knows, that “unauthorized” copying and use of a trademark does not infringe and is not counterfeiting if it is not used to mislead or misrepresent. “Confusing use” is the yardstick used to measure whether one has infringed on a trademark, which is not copy protected, so that anyone can use a trademark for many lawful purposes listed in the Lanham Act.
Further Resource: U.S. Trademark Law, Rules of Practice & Federal Statutes.
Please also see: Trademark Information