IP Law Daily, TRADEMARK—E.D. Mich.: Ford permanently enjoined from using trademarked ‘Upfitter Interface Module’ label, (Aug 16, 2024)

By Steven D. Cole, J.D.

Electronic parts supplier InterMotive showed that a permanent junction was warranted following a jury trial in which Ford was found to have committed trademark infringement and unfair competition.

A federal district court in Michigan granted InterMotive Inc.’s (InterMotive) petition to permanently enjoin Ford Motor Co. (Ford) from using the name “Upfitter Interface Module” and the acronym “UIM” in connection with programmable Controller Area Network (CAN) modules. The motion followed a jury trial in which Ford was determined to have willfully infringed upon InterMotive’s trademark, using the disputed descriptor as a label on Ford’s analogous upfitter modules. All four factors of the customary test used by courts in assessing a motion for permanent injunctive relief weighed in favor of granting InterMotive the requested injunction (Ford Motor Co. v. InterMotive, Inc., No. 4:17-cv-11584-TGB-APP (E.D. Mich. Aug. 15, 2024)).

Background. The underlying dispute involved Ford’s use of a particular type of component that allows users to modify vehicles for applications in the emergency vehicle market. In 2011, Ford and InterMotive entered into negotiations, and InterMotive designed a special version of its product to meet Ford’s specifications. In 2016, Ford selected another vendor to develop a cheaper version of the product, at which time it announced that several of its 2017 vehicles would include an “Upfitter Interface Module.” Ford and InterMotive subsequently engaged in protracted litigation. Relevant here, a jury trial concluding on November 1, 2023, resulting in a finding that Ford had committed two Lanham Act violations—trademark infringement under 15 U.S.C. § 1114 and unfair competition under 15 U.S.C. § 1125(a). More specifically, the jury found that InterMotive owned a valid trademark in the product name “Upfitter Interface Module,” Ford’s use of this name created a likelihood of confusion regarding the origin of Ford’s module, and Ford’s infringement was willful, deliberate, and intentional.

Request for permanent injunction. In its motion for injunctive relief, InterMotive requested a permanent injunction prohibiting Ford from further use of the “Upfitter Interface Module” name and the acronym “UIM” in connection with programmable CAN modules (which are vehicle bus standards designed to enable efficient communication between electronic control units). Ford did not contest InterMotive’s position that the jury verdict and the trial record provided a basis of support for injunctive relief; rather, Ford contended that it has since renamed its module “Vehicle Integration System,” rendering the issuance of a permanent injunction unwarranted. The court conducted its analysis according to the familiar four-factor test for permanent injunctive relief, in which a party seeking a permanent injunction “must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the [parties], a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.” eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).

Likelihood of irreparable injury. The Lanham Act provides that a plaintiff seeking a permanent injunction “shall be entitled to a rebuttable presumption of irreparable harm” upon proving a violation. 15 U.S.C. § 1116. Rather than rest solely on this statutory presumption, InterMotive also contended that it has suffered irreparable harm through ongoing confusion and reputational and competitive harms. Together with the fact that its UIM and Ford’s modules were similar and the names identical, InterMotive argued that the evidence of actual confusion presented at trial showed a likelihood of ongoing confusion. As to reputational and competitive harms, InterMotive pointed to Ford’s considerable market reach in the upfitter marketplace, maintaining that Ford’s use of the “Upfitter Interface Module” name has “swamped” InterMotive’s use of its trademark and resulted in the loss of control over its reputation and the loss of its competitive position.

Ford, in response, did not rebut the statutory presumption of irreparable harm, nor did it rebut InterMotive’s specific arguments. Ford instead contended that, in renaming its module, InterMotive now suffered no harm, let alone irreparable harm. But having considered the record, the court found: “Ford’s efforts related to its product’s name change are better directed to a report on Ford’s compliance with a permanent injunction, not an argument that there is nothing to enjoin in the first place.”

While the record did reflect that Ford had taken steps to implement the name change, InterMotive demonstrated that a search for “Upfitter Interface Module” in the internal search box of Ford’s website returned results for at least ten and up to 70 places where Ford still used the name. Despite Ford’s efforts to stop using the contested label, a permanent injunction was an appropriate remedy because Ford offered no assurances that it would refrain from using this name in the future, nor that it would avoid adopting other confusingly similar names for its components.

Adequacy of legal remedies. The court agreed with InterMotive that legal remedies were inadequate to compensate the company for the loss of control over its reputation and the loss of its competitive position, as such harms are difficult to compensate with monetary damages. Moreover, the complexity of the upfitter marketplace would make it exceedingly challenging to prove the amount of InterMotive’s marketplace damages.

Balance of hardships. The balance of hardships between the parties tipped substantially toward InterMotive. If Ford were to continue using the “Upfitter Interface Module” name, InterMotive would continue to face ongoing confusion and reputational and competitive harms. On the other hand, Ford would not face hardship in adopting a different name, and has already demonstrated its willingness to do so.

Ford requested a reasonable period of time to sell its modules already labeled with the “Upfitter Interface Module” name. The court recognized the proposition that a sell-off period might be equitable under the right circumstances, but denied Ford’s request. Initially, Ford had maintained that it acted “proactively” to implement the module name change upon receiving the November 1, 2023, jury verdict. However, according to Ford’s own submissions, Ford did not begin the design change request for the module until March 11, 2024. In the court’s view, “Ford’s timing looks more like a litigation strategy to make arguments available for its opposition brief and avoid an otherwise likely permanent injunction, not respectful regard for the jury verdict or an immediate desire to avoid consumer confusion.”

Ford also argued that it would be wasteful and costly to destroy its current inventory. Yet, as the court pointed out, Ford did not explain why it would not be feasible to simply relabel the existing modules. “In any event, Ford assumed the risk of such hardship by continuing its infringement for months after receiving the jury verdict.”

Public interest. The issuance of a permanent injunction would not disserve the public interest. To the contrary, it would benefit the public interest by preventing further confusion between Ford’s module and InterMotive’s, and by restoring InterMotive’s rightful control over its registered “Upfitter Interface Module” trademark.

Subsequent actions. Since InterMotive did not submit to the court a proposed order and did not otherwise address the specific terms of its requested injunctive relief, the court ordered the parties, within 14 days, to meet, confer, and make reasonable efforts to agree upon the terms of a permanent injunction. Within 21 days, if the parties reach an agreement, InterMotive shall submit a stipulated proposed order encompassing these terms, and if the parties are unable to agree, each party shall file a proposed order containing its proposed terms.

The Case is No. 4:17-cv-11584-TGB-APP.

Judge: Berg, T.

Attorneys: Chelsea Elizabeth Pasquali (Brooks Kushman PC) for Ford Motor Co. Andrew M. Grove (Howard and Howard Attorneys PLLC) for Intermotive, Inc.

Companies: Ford Motor Co.; Intermotive, Inc.

Cases: Trademark MichiganNews