Fifth Circuit Rejects Ford's Dilution Claim Because Commercial Printer Did Not "Use" the Marks to Identify its Goods
This case involved a number of trademark issues but one seemed more interesting.
National Business Forms & Printing ("NBFP") is a commercial printer that makes signs, stickers, banners, decals and the like. Ford Motor sued NBFP for, among other claims, trademark infringement and dilution under the Lanham Act for NBFP's use of 14 of Ford's trademarked logos on these materials.
As to the dilution claim, although the district court concluded that the Ford marks at issue were famous, it found that NBFP had not made "use" of the marks in identifying its own goods or services as required by the Trademark Dilution Revision Act ("TDRA") in filling printing orders from used car dealers.
The Fifth Circuit agreed with the district court "that NBFP did not 'use' Ford's marks (as the TDRA contemplates that term) in identifying or distinguishing its own goods or services merely by reproducing them for customers as part of its commercial printing business" and therefore Ford's dilution claim failed.
The case cite is Nat'l Bus. Forms & Printing, Inc. v. Ford Motor Co., No. 10-20023 (5th Cir. Feb. 16, 2012).