Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co.

• Decision Date: 16 February 2012
• Docket Number: No. 10–20023.,10–20023.
• Citation: 101 U.S.P.Q.2d 1746,671 F.3d 526
• Parties: NATIONAL BUSINESS FORMS & PRINTING, INC., doing business as Graphxonline.com, doing business as Quickstickers.com, Plaintiff–Appellant Cross–Appellee, v. FORD MOTOR COMPANY, Defendant–Appellee Cross–Appellant.
• Court: U.S. Court of Appeals — Fifth Circuit

101 U.S.P.Q.2d 1746

671 F.3d 526

NATIONAL BUSINESS FORMS & PRINTING, INC., doing business as Graphxonline.com, doing business as Quickstickers.com, Plaintiff–Appellant Cross–Appellee,

v.FORD MOTOR COMPANY, Defendant–Appellee Cross–Appellant.

No. 10–20023.

United States Court of Appeals, Fifth Circuit.

Feb. 16, 2012.

Carl E. Person (argued), New York City, for Plaintiff–Appellant Cross–Appellee.

Gregory D. Phillips, Scott R. Ryther (argued), Phillips, Ryther & Winchester, Salt Lake City, UT, Charles Thomas Kruse, Baker & Hostetler, L.L.P., Houston, TX, for Defendant–Appellee Cross–Appellant.

Appeals from the United States District Court for the Southern District of Texas.

Before WIENER, GARZA, and PRADO, Circuit Judges.

EMILIO M. GARZA, Circuit Judge:

National Business Forms & Printing, Inc. (“NBFP”) appeals the district court's partial grant of summary judgment for Ford Motor Company (“Ford”); the district court's final judgment holding NBFP liable for trademark infringement; and the district court's order denying NBFP's motion to amend its complaint. Ford cross-appeals from the district court's final judgment, disputing that court's findings on infringement, dilution, and attorney's fees. For the reasons that follow, we AFFIRM in part and REVERSE in part.

I

NBFP is a small commercial printer that makes custom signs, stickers, banners, decals, and other advertising materials. NBFP's inventory consists only of the raw materials needed to process orders as they are placed; NBFP prefabricates nothing. Along with a retail outlet in Navasota, Texas, NBFP maintains two websites that allow customers to place orders online. Each website contains a bank of corporate logos and other clip art available for use as part of NBFP's custom design and printing services. To access NBFP's online catalog, a visitor must first enter a specific corporate name and then click “Go” or “Enter”. This query then returns corporate logos corresponding to the search term. The underlying suit focuses on NBFP's use of fourteen of Ford's trademarked logos in this manner.

NBFP's websites both state that “By clicking Go or Enter, you agree that any artwork submitted or requested by you is a representation and warranty to us that you have written authorization, if needed, to order its reproduction.” The websites also declare in red lettering that NBFP “is not affiliated with, licensed by, or endorsed by any company,” and that the product logos previewed on the websites are “trademarks of their respective companies, and are provided for accurate identification and reproduction for authorized users.”

This case began shortly after Ford sent a cease-and-desist letter to NBFP, demanding that NBFP pay $5,000 in damages and refrain from using Ford's trademarks on its websites. NBFP sued Ford in Texas state court, seeking a declaratory judgment that its online printing operations did not infringe Ford's trademark rights. Ford removed to the U.S. District Court for the Southern District of Texas and raised counterclaims of trademark infringement, counterfeiting, dilution and false designation of origin under federal law and trademark infringement under state law. Ford soon moved for summary judgment on all claims.

In evaluating Ford's motion, the district court segregated NBFP's alleged infringing uses into four categories: (i) advertising materials bearing the Ford marks and printed at the request of Ford's authorized dealers; (ii) advertising materials bearing the Ford marks and printed for independent used car dealers having no affiliation with Ford; (iii) a custom decal bearing the Ford oval logo alongside two other domestic automakers' corporate marks, displaying the term, “NO BIG 3 BAILOUT”; and (iv) a residual category of products—decals, stickers, banners, signs, license plate frames, and other promotional materials—that NBFP offered for design and sale on its website to which the Ford marks could be attached.

The district court denied summary judgment on the first two categories of uses because Ford failed to meet its burden on summary judgment. The district court also denied Ford summary judgment on the third category of uses, finding that NBFP's use of Ford's trademarked logo threatened no likelihood of confusion or dilution, and, further, was protected by the fair-use doctrine. The district court further found that NBFP was entitled to declaratory judgment that the “NO BIG 3 BAILOUT” decal did not constitute actionable infringement or dilution. The district court granted summary judgment for Ford only on the fourth category of products and entered a permanent injunction targeting this category of products, enjoining NBFP from

performing, without authorization from Ford or its licensees, all of the following: advertising for sale, displaying on the internet, offering for sale on the internet, manufacturing, producing, transferring, consigning, selling, shipping, or otherwise moving in commerce any and all goods, decals, stickers, banners, packaging, products, or other materials that embody any of Ford's marks.¹

The district court did not reach Ford's claim of dilution as to this category of uses.

The remaining claims proceeded to a three-day bench trial. At trial, the district court found that: (1) NBFP did not infringe Ford's marks by selling Ford's trademarked products to authorized Ford dealers; (2) NBFP infringed Ford's mark by selling similar merchandise to three non-affiliated used car dealerships; and (3) NBFP did not dilute Ford's marks because it had not used the Ford oval or Ford script logos to identify or distinguish its goods or services. The district court awarded Ford statutory damages for its successful infringement claims but denied its request for attorney's fees. After trial, the district court denied NBFP's motion to amend its complaint to add an antitrust claim, which NBFP alleged was tried by consent. The court then entered judgment to reflect these rulings. The parties cross-appealed.

NBFP's and Ford's appeals center on their competing views of the district court's findings on Ford's federal claims of trademark infringement and dilution and the district court's denial of Ford's attorney's fees. ² NBFP also contests the district court's denial of its motion to amend its complaint. We turn first to their varied contentions on infringement.

II

A

The Lanham Act provides

Any person who shall, without the consent of the registrant ... use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive ... shall be liable in a civil action by the registrant for the remedies hereinafter provided.

15 U.S.C. § 1114(1) (2006).

To prevail on a claim of trademark infringement under the Lanham Act, Ford must show (1) Ford possesses a valid mark; and (2) NBFP's use of Ford's trademarks creates a likelihood of confusion as to source, affiliation, or sponsorship.³ See id.; Elvis Presley Enter., Inc. v. Capece, 141 F.3d 188, 193 (5th Cir.1998). “[T]he mere reproduction of a trademark does not constitute trademark infringement if there is no likelihood of confusion.” 4 J. Thomas McCarthy, McCarthy on Trademarks and sUnfair Competition § 25:28 (4th ed. 2009). A “likelihood of confusion” means that confusion is not just possible, but probable. Bd. of Supervisors for LSU A&M Coll. v. Smack Apparel Co., 550 F.3d 465, 478 (5th Cir.2008). Moreover, “[c]ontext is especially critical,” and we must “consider the marks in the context that a customer perceives them in the marketplace.” Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 485 (5th Cir.2004). “Prominent and pervasive use of a mark will suggest affiliation, but mere reference to a marked product will not.” Id.

In determining whether a likelihood of confusion exists, we often consider these “digits of confusion”: (1) the type of trademark allegedly infringed, (2) the similarity between the two marks, (3) the similarity of the products or services, (4) the identity of the retail outlets and purchasers, (5) the identity of the advertising media used, (6) the defendant's intent, and (7) any evidence of actual confusion. Capece, 141 F.3d at 194. “Courts also consider (8) the degree of care exercised by potential purchasers.” Smack Apparel, 550 F.3d at 478. The “digits of confusion” are not exhaustive, and no single factor is dispositive. Id. “Actual confusion that is later dissipated by further inspection of the goods, services, or premises, as well as post-sale confusion, is relevant to a determination of a likelihood of confusion.” Elvis Presley Enters., 141 F.3d at 204.

Likelihood of confusion is a question of fact that we review for clear error. Capece, 141 F.3d at 196. But if the trial court's finding on the likelihood of confusion is “inextricably bound up” in, or infected by, the lower court's erroneous view of the law, we may conduct a de novo review of the record. Id.

B

In appealing the district court's partial grant of summary judgment, NBFP contests the district court's finding that NBFP infringed Ford's marks by offering on its website products for design and sale to which Ford marks could be attached.

The district court found that nearly every digit of confusion confirmed the likelihood of confusion between Ford's products and those NBFP offered. Indeed, it was not seriously disputed before the district court or on appeal that (1) Ford's marks are strong; (2) NBFP's products consist of exact copies of Ford's marks; (3) these products are exact copies of products sold by Ford and its licensed marketers; (4) NBFP's products directly compete with products sold by Ford and their licensed marketers, and competition occurs in a relatively small market of buyers; (5) these products are sold on the internet by NBFP, Ford, and...