Plasticolor Molded Products v. Ford Motor Co.

• Decision Date: 09 May 1988
• Docket Number: No. CV 85-3863-AK (Tx).,CV 85-3863-AK (Tx).
• Citation: 698 F. Supp. 199
• Parties: PLASTICOLOR MOLDED PRODUCTS, Plaintiff-Counterdefendant, v. FORD MOTOR COMPANY, Defendant-Counterclaimant.
• Court: U.S. District Court — Central District of California

698 F. Supp. 199

PLASTICOLOR MOLDED PRODUCTS, Plaintiff-Counterdefendant, v. FORD MOTOR COMPANY, Defendant-Counterclaimant.

No. CV 85-3863-AK (Tx).

United States District Court, C.D. California.

May 9, 1988.

Harold L. Jackson, Stanley R. Jones, Jackson & Jones, Tustin, Cal., Richard B. Hoegh, Los Angeles, Cal., for plaintiff-counterdefendant, Plasticolor Molded Products, Inc.

Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, David C. Hilliard, Craig S. Fochler, Charles R. Mandly, Jr., Chicago, Ill., Lawler, Felix & Hall, Richard L. Fruin, Jr., Mark S. Lee, Los Angeles, Cal., for defendant-counterclaimant, Ford Motor Co.

MEMORANDUM OPINION AND ORDER

KOZINSKI, Circuit Judge, Sitting by Designation.

This lawsuit was brought by Plasticolor Molded Products, Inc., which seeks a declaratory judgment of its rights to use Ford Motor Company trademarks on the automobile accessories it produces. Ford then counterclaimed for trademark infringement and unfair competition under the Lanham Act, 15 U.S.C. §§ 1114, 1125(a) (1982), and California law. On November 30, 1987, the court heard argument on Ford's motion for summary judgment under federal and state law. This memorandum opinion and order memorializes the findings and conclusions of the court rendered orally at the hearing.

FACTS

The court finds that the following facts were proved by Ford in its moving papers and not controverted by Plasticolor in its opposition:

1. Ford is a Delaware corporation with its principal place of business in Dearborn, Michigan. It has for many decades manufactured, advertised and sold motor vehicles, parts and accessories, including floor mats, mudflaps and step treads (collectively, "floor mats"). It has advertised its automotive parts and accessories extensively throughout the country, and has sold them through independent Ford dealers. In addition, it sells its parts through repair shops, discount stores and other mass merchandisers.

2. Ford has long used various arbitrary and distinctive marks to identify its products, including FORD, AEROSTAR, BRONCO, CAPRI, COUGAR, COURIER, ESCORT, EXP, FIESTA, LYNX, MERCURY, MUSTANG, PINTO, RANGER, TEMPO, THUNDERBIRD, and TOPAZ, as well as certain pictorial designs, among them the Mustang "running horse" and Thunderbird symbols. Through Ford's long and extensive use of these trademarks, they have acquired a secondary meaning signifying Ford and its products, and have acquired substantial good will that increases Ford's recognition and the attractiveness of its products to consumers.

3. Ford has attempted to protect its trademarks through federal trademark registration. It owns federal registrations for the FORD trademark for a variety of automotive products, including a 1929 registration for floor mats. Ford has also registered its BRONCO, CAPRI, COUGAR, COURIER, FIESTA, MERCURY, PINTO, RANGER, and THUNDERBIRD trademarks; these registrations have become incontestable and are conclusive evidence of Ford's exclusive rights to the marks. See 15 U.S.C. §§ 1065, 1115(b) (1982). Ford has also registered its Mustang and Thunderbird designs.

4. Plasticolor is a California corporation with its principal place of business in Fullerton, California. Since 1971 it has engaged in the business of manufacturing and selling plastic automobile accessories, including floor mats. It produces these items in a variety of designs and colors, some bearing designs or other graphics. Plasticolor sells its products through independent Ford dealers, automotive chains, catalog houses, mass merchandisers, van converters, repair shops and garages — many of the same outlets Ford uses for its own similar products or other parts. Plasticolor has promoted its products through brochures and industry trade shows, but has not engaged in substantial media advertising aimed at the consuming public.

5. In 1973, Plasticolor began selling small quantities of its accessories bearing Ford's PINTO trademark and Mustang design without license or any other authorization from Ford. Later, still without authorization, Plasticolor began selling mats and other accessories bearing other Ford Marks: FORD, CAPRI, BRONCO, MERCURY, COUGAR, COURIER, FIESTA, ESCORT, RANGER and the Mustang and Thunderbird designs. In choosing to use the Ford trademarks, Plasticolor relied on the success of the genuine Ford products sold under those marks and the good will that Plasticolor would be able to exploit.

6. Most of Plasticolor's mats bearing Ford marks are packaged with cardboard header cards bearing the word "Plasticolor"; some bear as well the description "Ford Custom Carpet Front." The header cards do not indicate that "Plasticolor" is the manufacturer, and there is no indication of any relation to Ford or disclaimer thereof. Plasticolor has distributed a not insubstantial number of mats without any header cards; moreover, it has distributed some bearing Ford trademarks to customers with the designation "O.E.," which is understood in the industry to mean "original equipment," even though the mats were not original equipment or authorized by Ford, the original equipment manufacturer.

CONCLUSIONS OF LAW

I. Lanham Act Claims

A. Liability

With respect to liability under the Lanham Act for trademark infringement and unfair competition, the court finds no genuine issue of material fact. The legal test is the likelihood of confusion. See, e.g., Golden Door, Inc. v. Odisho, 646 F.2d 347, 349 (9th Cir.1980); New West Corp. v. NYM Co., 595 F.2d 1194, 1201 (9th Cir. 1979). Proof of likelihood of confusion does not require a showing of wrongful intent on the part of the alleged infringer; proof of such intent does, however, raise a presumption that confusion is likely. Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 157-58 (9th Cir.), cert. denied, 374 U.S. 830, 83 S.Ct. 1870, 10 L.Ed.2d 1053 (1963); Hillerick & Bradsby Co. v. Palm Springs Golf Co., 215 U.S.P.Q. 680, 684 (C.D.Cal.1982).

Plasticolor admits that it used Ford's marks knowingly; indeed, it used them in order to attract customers who own Ford automobiles or who want to have a symbol of Ford automobiles in their cars. Knowing use by an infringer of a trademark identical to that of the trademark owner is strong evidence of intentional infringement and likelihood of confusion. See Fleischmann Distilling, 314 F.2d at 157-58. This is particularly true where, as here, the marks are used by the trademark owner on identical or related products.

In support of its contentions as to likelihood of confusion, Ford introduced a scientifically conducted survey indicating customer confusion as to the source of the mats. The survey of nearly 300 consumers in Los Angeles, Chicago and New York indicated that over three-quarters of those shown a display of Plasticolor mats bearing marks of various automotive manufacturers believed that the mats bearing the Ford name were produced or authorized by Ford. Such surveys have been accorded great weight in determining likelihood of confusion. See, e.g., James Burrough Ltd. v. Sign of the Beefeater, Inc., 540 F.2d 266, 278-79 (7th Cir.1976). The survey and declaration of Ford's expert, George Mantis, were highly persuasive in showing a substantial likelihood that customers would mistakenly believe that the mats were manufactured or authorized by Ford.

Plasticolor does attack the Mantis survey, presenting testimony and a declaration of its own expert, Ben Enis. Plasticolor's criticisms, however, amount to little more than nitpicking; they certainly do not counter the thrust, and intuitively appealing result, of the survey, that use of the FORD mark in that manner would confuse consumers as to Ford sponsorship.

The Mantis survey used only a mat bearing the FORD mark. However, it does provide strong support for the proposition that a mat bearing any Ford mark would confuse customers as to source. Plasticolor's purpose in adorning its products with the various Ford marks is to create a connection between the products and the Ford line of automobiles. The design would be futile if the consumer did not associate the name BRONCO or RANGER with the appropriate Ford car or truck; indeed, the mats are aimed precisely at a clientele consisting of owners of such vehicles. The survey results, moreover, are corroborated by the deposition testimony of Plasticolor's own witnesses, officers and employees, who admitted that the public would likely associate its products with Ford.

That Plasticolor places its name on its header card does not prevent confusion. In general, the mere addition of an infringer's trade name to its product packaging does not avoid confusion and is therefore not a defense to trademark infringement. See Levi Strauss & Co. v. Blue Bell, Inc., 632 F.2d 817, 822 (9th Cir.1980); Rolex Watch U.S.A., Inc. v. Thalheimer Co., 217 U.S.P.Q. 964, 966 (N.D.Cal.1982). That principle applies in this case. Plasticolor's use of its name in small print is clearly overwhelmed by the use of the Ford trademark. Moreover, it could easily represent, in the manner currently used, a description of the product composition, or the name of a Ford licensee. In any event, the record discloses significant sales of Plasticolor mats without header cards or any other indication of origin other than the Ford mark, as well as sales of products bearing the inscription "O.E.," clearly suggesting Ford sponsorship.

The court concludes that use of the above-named Ford trademarks in the manner that Plasticolor has used them creates a substantial likelihood of confusion among consumers and the general public as to the source or sponsorship of floor mats bearing the Ford trademarks. This holding extends only to Plasticolor's products as presented on motion for summary judgment. Plasticolor has stated its intention to change its packaging, and the court does not express any view as to a new design.

B. Affirmative Defenses

1. Laches

The premise of Plasticolor's asserted...