Creation of advertising material by third party does not constitute infringement

United States of America

In National Business Forms and Printing Inc v Ford Motor Co (Case 10-20023, February 16 2012), the US Court of Appeals for the Fifth Circuit has reversed in part an award of summary judgment, holding that a commercial printer company that made banners and other advertising material did not use marks in commerce, as required for a finding of trademark infringement under federal law. 

National Business Forms and Printing, a commercial printing company, offers reproduction of trademark-protected corporate logos for use in custom design and printing services. National had a bank of corporate logos available on its website that it offered to its customers. Among other trademarks and logos, National offered reproductions of Ford Motor Co’s trademarks and logos. Following Ford’s objections to National’s use of its FORD marks, National filed a claim in Texas state court, seeking a declaration of non-infringement. Ford filed counterclaims for, among other things, trademark infringement and dilution, and moved for summary judgment.

The district court found that the sales to authorised Ford dealers were not infringing, but that sales to unauthorised used car dealers were infringing. 

On appeal, the Fifth Circuit upheld the district court’s ruling that the sale of advertising material using Ford’s corporate logos to authorised dealers did not infringe Ford’s trademarks. The court explained that Ford’s sales and service agreement with authorised dealers permitted Ford’s authorised dealers to meet their advertising needs through any vendors of their choosing, provided that such printed materials complied with the proscribed manner and form requirements. The Fifth Circuit also agreed with the district court that National’s “printed material was unlikely to result in consumer confusion or mistake as to the authenticity of the goods and services that the Ford dealers traded in”.

However, the Fifth Circuit did not agree with the district court’s finding that advertising material using Ford’s logos by unauthorised dealers was infringing. The Fifth Circuit rejected the district court’s finding that the unauthorised dealers “displayed the Ford logos and marks in a manner that is likely to cause confusion among the public” and were likely to “confuse consumers on whether Ford endorsed or approved those businesses’ sales of Ford vehicles”. Instead, the appeals court held that “the context in which the Ford marks appear in the promotional materials described above makes the likelihood of consumer confusion negligible”. The Fifth Circuit explained that National creates material bearing the logos of numerous car makers and that:

the grouping of several competitors extinguishes any possible confusion, particularly where nothing in the district court’s findings or in the record suggests that these used car dealers displayed the Ford marks elsewhere on their lots or showroom floors.” 

Finally, the appeals court upheld the district court’s dismissal of the dilution claim, holding that a commercial printer’s inclusion of a company’s trademark on advertising material did not constitute a use in commerce and thus could not be infringing. 

Ulrika E Mattsson, McDermott Will & Emery LLP, Chicago

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