Ford Motor Company v. Ford
| Decision Date | 03 August 1972 |
| Docket Number | Patent Appeal No. 8704. |
| Citation | 462 F.2d 1405 |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
| Parties | FORD MOTOR COMPANY, Appellant, v. Sherman FORD, Jr., d/b/a Ford Records, Appellee. |
G. Franklin Rothwell, Sughrue, Rothwell, Mion, Zinn & MacPeak, Washington, D.C., attorneys of record, for appellant. Glenn S. Arendsen, Dearborn, Mich., of counsel.
Royall, Koegel & Wells, New York City, attorneys of record, for appellee. Loren C. Berry, John J. Sheehy, New York City, of counsel.
Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and MALETZ, Judge, United States Customs Court, sitting by designation.
This appeal is from the decision of the Trademark Trial and Appeal Board, reported in full at 162 USPQ 418 (1969), dismissing Ford Motor Company's opposition to the registration of FORD RECORDS,1 stylized as shown in the board's published opinion,2 for "phonograph records and recording tapes." We reverse.
The record shows that since late in 1958 appellee has been using the mark FORD RECORDS in connection with the production of records in the musical entertainment field. Prior thereto, appellant produced records for sale to its dealerships, the content being directed to matters of interest to a Ford dealer, e.g., methods of selling Ford automobiles and mechanic training information. The labels on those records bore the Ford Motor Company trade name, and, in some cases, the Ford Division trade name, as well as the name of the record manufacturer, such as RCA VICTOR and COLUMBIA. Appellant has since expanded to the production of educational records and films. Although it has no prior trademark registration on records, appellant has many registrations of the FORD trademark in connection with a wide diversity of goods. It is uncontested that appellant is one of this country's largest corporations and that the FORD mark and FORD MOTOR COMPANY trade name in connection with its many products are well known.
Appellant alleged that appellee's use of FORD on records would be likely to cause confusion, mistake or deception as to the source of the goods. Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). It relies on certain of its prior registrations, such as one for "radio receiving sets and parts," as well as the general use of its trademark FORD and trade name FORD MOTOR COMPANY. We focus on its specific use of the company trade name in connection with the production of records for sale to its dealerships described above since we find that use sufficient to compel reversal of the board's decision.
The board concluded that there would be no likelihood of confusion primarily because it perceived a difference in the goods to which the parties apply the name FORD, i.e., phonograph records versus automotive products, and the attendant differences in the channels of trade and distribution of those goods. The board's premise was that "opposer's claim of damage * * * must be predicated on its extensive use of `FORD' in the automotive field." This conclusion was reached despite a finding by the board that "Opposer has sold about seven hundred and twenty thousand of such records in commerce in the period from 1950 to 1958, and it was estimated that between three thousand and thirty-three hundred out of opposer's approximately six thousand dealers purchase the training materials." Those figures indicate substantial record production on appellant's part, and appellant's sales far exceeded appellee's. We think the board was in error in failing to base the likelihood of confusion inquiry on appellant's activity in record production.
Appellee takes the position that its use of FORD in connection with records was prior to that of appellant's since appellant used only the FORD MOTOR COMPANY trade name on its records prior to appellee's use of FORD. Appellee confuses several pr...
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