“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.

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