"use in a TM way" just creates another fact issue in the 6th circuit

Ford Motor Co. v. InterMotive, Inc., No. 17-CV-11584-TGB, 2019 WL 4746811 (E.D. Mich. Sept. 30, 2019)

Ford sued InterMotive for trademark infringement, false designation of origin, trademark dilution, cancelation of trademark registration, and declaratory judgment for using Ford’s trademarks in various InterMotive ads; defendants counterclaimed for a bunch of things including misappropriation of trade secrets and trademark infringement based on Ford’s launch of a competing product of the same name:

In 2011 and early 2012, Ford and InterMotive explored a potential business relationship wherein InterMotive would design an “Upfitter Interface Module” (“UIM”) for Ford to use on its vehicles. The UIM, as described in the record, is a product that allows its user to modify a vehicle for special applications such as in the police, fire, and utility truck market. For example, it can program a truck to flash a light if exceeds 65 miles per hour, or program a police vehicle to automatically lock its doors unless certain conditions are met.

Ford alleged that its relationship with InterMotive ended in May 2012; it announced a different design from a different vendor in 2016.  In June 2013, InterMotive and Ford executed a licensing agreement governing the Police Surveillance Mode Module, which Ford argued (and InterMotive disputed) was an express agreement not to use Ford’s marks, regardless of Ford’s alleged acquiescence to InterMotive’s use throughout 2012.

Along with the trade secret claims, InterMotive argued that Ford began using the name “Upfitter Interface Module” with full knowledge of InterMotive’s use of the same name to market its product. After the announcement, InterMotive applied to register UPFITTER INTERFACE MODULE, but it was placed on the Supplemental Register.

The dispute over this triggered Ford’s own trademark claims. First, InterMotive allegedly used the distinctive “Ford Oval” mark on the “splash screen” of InterMotive’s UIM software, in a UIM brochure for Ford, and in a promotional and training video on InterMotive’s website under the heading “The Ford Competitive Advantage.” They also allegedly used the Ford Oval and “Go Further” trademarks in a video on InterMotive’s website describing the “Ford Police Interceptor Surveillance Mode.” InterMotive argued that its uses showed that InterMotive is the source of the UIM product, as evidenced, e.g., by InterMotive’s logo, phone number and web address printed on the bottom of the brochure for prospective buyers, and merely showed that the product operates on Ford vehicles.  (After Ford objected, the oval mark was removed from the splash screen but a Ford mark remained.)

In August 2016, InterMotive’s engineering manager reviewed Ford’s recently-released user manual for the Ford UIM, stating that the user manual “is pretty much a knock off of [InterMotive’s], with different screen layouts”; Ford argued that its UIM was thus not a “blatant copy” of InterMotive’s UIM.

The court found that there was a question of fact whether InterMotive used Ford’s marks “in a trademark way,” which is a predicate question in the Sixth Circuit. 

First, the court noted that on the splash screen, Ford’s mark appeared between the logos of Ram, Chevrolet, GMC and GM below the heading “InterMotive UIM.” InterMotive also argued that the “splash screen” only appears after the customer has downloaded InterMotive’s UIM from the InterMotive website by clicking on an InterMotive software icon—none of which display Ford marks. Ford argued “post-sale” or “marketplace” confusion, but didn’t explain how this would happen.

Second, Ford challenged use of the Ford Oval and “Go Further” trademarks in a video on InterMotive’s website describing the “Ford Police Interceptor Surveillance Mode.” InterMotive responded that it merely posted a link to the video on its website, but Ford hosted (and continued to host) the video on YouTube. Ford just argued that it didn’t authorize InterMotive to use the marks.

Third, Ford argued that InterMotive used the Ford Oval trademark in a UIM brochure for Ford created on July 23, 2013. The heading of the brochure states: “Ford Upfitter Interface Module” followed by the Ford Oval mark below it. InterMotive points to its use of its logo, phone number and web address printed on the bottom of the brochure for prospective buyers. InterMotive argued that “Ford knew about the brochure and actually used it” at trade shows or otherwise and InterMotive used it to demonstrate how InterMotive’s UIM supported Ford vehicles.

Fourth, there was a “Ford Competitive Advantage” video, which InterMotive argued was designed with Ford when they were actively working together; InterMotive’s witness said that Ford provided a high-resolution image of the Ford Oval mark for use in the video and InterMotive argued that the overall video made clear it was from InterMotive.

Ford argued that these uses create a “presumption of confusion” because InterMotive used a “precise replica” of Ford’s marks and because InterMotive’s product competed directly with Ford’s product. But that didn’t matter if there was non-trademark use. Also, the allegedly infringing uses were all from 2012-13—up to four years before Ford had a competing product.

Despite this very favorable description taken straight from the court’s opinion, there’s still a genuine issue of material fact on whether InterMotive only used Ford marks to show that its UIM was compatible with Ford vehicles, which suggests something about the utility of many TM defenses. A jury could accept that “the relationship between Ford and InterMotive ended well before the advertisements were produced and the advertisements give the incorrect impression that Ford, not InterMotive, is either the source of InterMotive’s UIM or otherwise endorses the UIM.” Whether Ford really did provide a high-resolution photo of the Ford Oval mark for InterMotive to use in the “Competitive Advantage” video, whether Ford used and played the video at trade shows, whether Ford welcomed and encouraged the production of the brochure so that InterMotive could inform Ford at trade shows that its UIM was optimized for Ford vehicles, and whether Ford gave InterMotive previous approval to use the Ford Oval mark on InterMotive’s “splash screen” were all issues of fact.  [Query: if all this is true, should InterMotive get its fees?]

Also: why are these facts relevant to whether it was non-trademark use, as opposed to a defense of consent? The court said that “[i]f Ford knew that InterMotive was using its marks to advertise InterMotive’s products’ functionality on Ford vehicles, then Ford—in effect—concedes the … threshold inquiry by saying that InterMotive was not using Ford’s marks to show that Ford was the creator of the UIM.”  But even if Ford contests the threshold inquiry, shouldn’t we ask if there really is a question of fact posed by these uses?  And what Ford “knew” is highly unlikely to have been framed by Ford at the time as an issue of non-TM use, as opposed to “an ok thing a partner is doing”; when they were working together, it wasn’t false to suggest they were working together.  So figuring out what Ford thought isn’t really that helpful in identifying a non-TM use.

Anyway, Ford’s agreements with InterMotive didn’t prohibit InterMotive from using the marks (again, super unclear why that would matter to whether the use was infringing, as opposed to a breach of contract).

There was also, sigh, an issue of fact on trademark dilution, because non-trademark use can’t dilute. There was a genuine issue of material fact on whether InterMotive used Ford marks “only to describe some aspect of the [InterMotive UIM] product.”

As for InterMotive’s claim based on “upfitter interface module,” the PTO characterized the term as “(at best) highly descriptive,” but that examiner statement “does not constitute a finding by the Patent and Trademark Office.” Though Ford argued that the term was generic, a jury could find otherwise. The PTO considered a number of “web page screen captures” showing that the term “upfitter” was being used in a “highly descriptive” way by Dodge, Ram, and Ford. “But a number of those examples are efforts by Ford to market its ‘Ford upfitter interface module,’ which is the subject of InterMotive’s trademark infringement claim.” And, alleged direct, intentional copying of InterMotive’s mark was “strong evidence” of secondary meaning. “InterMotive also presents Ford-affiliated publications where InterMotive advertised its Upfitter Interface Module, demonstrating that it was a brand that Ford associated with InterMotive.”  [Or demonstrating that InterMotive made an upfitter interface module?]

Also, there was an email from a Ford employee who worked on developing Ford’s UIM, which stated that the term “Upfitter Interface Module” was already being used by an existing supplier and recommended changing Ford’s UIM name to one of three suggestions: Programmable Upfitter Interface Module (PUIM),19 Programmable Interface Module (PIM), or Programable Upfitter Module (PUM). The existence of three alternative ways to refer to the product was, InterMotive argued, evidence that “Upfitter Interface Module” wasn’t generic or highly descriptive. This argument has a decidedly mixed record in the courts—there are lots of ways to describe restaurants and hotels, but that doesn’t make “house” or “inn” protectable; there can be multiple generic names for a thing.  But that’s a fact issue here.

InterMotive also provided possible evidence of confusion: “at a 2016 trade show, Ford dealers and trade show personnel were confused over whether Ford’s product came from InterMotive—as prior tradeshows demonstrated that InterMotive was marketing an Upfitter Interface Module that was optimized for Ford vehicles.” [But did that confusion come from the name or the terminated partnership?]

InterMotive also challenged two claims in Ford’s ads as false advertising.  In a promotional video titled “Ford Programmable Upfitter Interface Module ‘Critical’ to Industry,” available on YouTube, a Ford representative states: “Ford is the only product that is actually programmable in these upfitter interface modules.” InterMotive alleged that it did too. Ford argued that this claim was puffery, but it’s a specific claim.  Ford also argued that the statement was immaterial and de minimis, given the video had been viewed less than 300 times at the time Ford’s motion for summary judgment was filed. InterMotive’s witness declared that this wasn’t small “because the work truck market is not very big” and “a single viewer could make the decision to buy thousands of vehicles.” Moreover, the views count didn’t include people at a trade show who viewed the video when it was played; trade shows are an important market for InterMotive. In addition, InterMotive argued that programmability was material because a product that is not programmable “has much less use to the customer.” There were genuine fact issues on materiality.

The second alleged false advertisement came from Ford’s “What You Get” brochure: “[U]nlike aftermarket upfitter modules currently on the market, [Ford’s UIM] is warranted by Ford and will not interrupt the Computer Area Network (CAN).” In a classic caveat emptor argument, Ford contended that its statement was true if taken as conjunctive (it’s the only one that is both warranted by Ford and also won’t interrupt the CAN). Without ruling on this bad argument, the court found that InterMotive hadn’t shown materiality/travel in interstate commerce.