One of my local message forum friends did a search and found your story...so similar. I just got the letter stating the same information in regards to FORD MUSTANG, COBRA etc and to pay 25% of gross sales or $5,000 which ever is greater in a cashiers check WITHIN 2 WEEKS!!! HELP!!??
Here it is:
LAW OFFICES
HOWARD, PHILLI PS & ANDERSEN
GREGORY D. PHILLIPS 560 East 200 South, Suite 300
Direct Dial: (801) 366-3909 Salt Lake City, UT 84102
E-Mail:
gdp@hpalaw.comJanuary 16, 2008
VIA EMAIL (
sales@autobadges.com)
and FIRST CLASS MAIL
Erick Valdez
AutoBadges.com
1366 S. Orange Drive
Los Angeles, California 90019
Re: AUTOBADGES.COM.COM - Sale of Counterfeit Ford Products
Dear Mr. Valdez:
This law firm represents Ford Motor Company (“Ford”). Ford owns numerous
trademarks including without limitation FORD®, MUSTANG®, COBRA® and their related
design marks (the “Ford Trademarks”). Ford also has trade dress rights in the distinctive
appearance of its products. Use of Ford’s trademarks or trade dress, or any confusingly similar
variations thereof, without Ford’s express, written authorization, violates United States Federal
Law, is misleading to the public, and constitutes a misappropriation of the goodwill and
reputation developed by Ford.
Ford takes policing and enforcement of its trademark rights very seriously, and has
recently obtained preliminary and permanent injunctions against infringers who manufacture
and/or sell counterfeit Ford products. See e.g. Ford Motor Co. v. Lloyd Design, 184 F.Supp.2d
665 (E.D.Mich. 2002) (granting Ford preliminary and permanent injunction enjoining
defendant’s production of floor mats bearing Ford’s trademarks, and awarding Ford’s attorneys’
fees and costs in excess of $250,000).
It has recently come to Ford’s attention that your company is manufacturing, advertising,
and/or distributing products bearing counterfeits of Ford’s registered trademarks (i.e. bumper
inserts). Attached is a printout from your website autobadges.com displaying your infringement
for your review.
There is no doubt that these products violate Ford’s rights. Consumers viewing your
products will mistakenly believe that your business is affiliated or licensed by Ford when it is
not. Because such consumer confusion is inevitable, the trademark laws categorically prohibit
the unauthorized display of another company’s design trademarks or logos. See American Honda
Motor Co. v. Pro-Line Protoform, 325 F.Supp.2d 1081 (C.D.Cal. 2004) (enjoining manufacturer
from displaying Honda design trademarks, including HONDA STYLIZED® and ACURA
STYLIZED® on model car bodies and packaging); The New Kids on the Block v. New America
Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992) (explaining soft drink competitor might be
able to compare its products to Coca-Cola “but would not be entitled to use Coca-Cola’s
Telephone: (801) 366-7471
Facsimile: (801) 366-7706
January 16, 2008
Page 2
distinctive lettering” because use of another’s “distinctive logo” is never justified).
The purpose of this letter is to demand that you cease and desist immediately from
violating Ford’s rights by manufacturing and/or distributing products bearing Ford’s trademarks.
In order that Ford may assess what damages it has suffered as a result of your sale of infringing
products, please provide the following information no later than January 30, 2008:
1) The number of products set forth by item sold or distributed using or bearing any
Ford trademark, or any variation of any Ford Trademark;
2) The gross revenue received from the sale of such products set forth by item;
3) The time period during which such products have been offered or sold;
4) The names and addresses of all non-retail purchasers of such products and the
number of each product listed by item purchased by each such purchaser;
and
5) The names and addresses of any suppliers of the products and which product each
supplier supplies.
Ford demands that you surrender to Ford’s counsel all existing inventories of decals or
other products that bear any Ford trademark or any confusingly similar variations of any Ford
trademark. Ford further demands that no later than January 30, 2008, you pay Ford by cashier’s
check damages in the amount of twenty five percent (25%) of the gross revenues from the sales
of any products that have been sold using in any way any Ford trademark in the past five years,
or $5,000.00, whichever is greater. Finally, Ford demands that you execute the attached
Agreement setting forth your agreement that your company will refrain from violating Ford’s
rights in the future.
You may be infringing or diluting Ford’s rights in ways other than those set forth above.
The list set forth above is not intended to be comprehensive, and Ford reserves the right to
bring to your attention other matters that Ford believes infringe or dilute its trademarks and
trade dress, or constitute false advertisement.
This letter is without prejudice to all rights of Ford, including past or future royalties, past
or future damages, attorneys’ fees, and to bring enforcement actions for all past or future
infringement, dilution, unauthorized uses, or false advertisement.
January 16, 2008
Page 3
Should you have any questions concerning Ford’s position in this matter, please
contact Susette van der Beek at (801) 366-3909.
Sincerely,
Gregory D. Phillips
GDP:sv
cc: Ford Motor Company
January 16, 2008
Page 4
AGREEMENT
By execution of this Agreement the undersigned agrees to immediately and permanently
cease and desist from all unauthorized uses of any trademark of Ford Motor Company in
connection with any products, services, advertisements, promotional literature, promotional
telecasts, broadcasts, signage, on the Internet, or otherwise, in connection with the advertisement
or sale of any product, part, good, or service.
Specifically, by way of illustration and without limiting the general agreement expressed
above, the undersigned agrees that it will immediately, and by no later than January 30,
2008:
(1) cease using any Ford trademark and/or trade dress in connection with the
production any product;
(2) turn over to Ford and its counsel for destruction all unauthorized products in
inventory bearing any Ford trademark, or any variation of any Ford trademarks;
(3) provide the following information:
a) The number of infringing products set forth by item sold or
distributed bearing any Ford trademark or trade dress;
b) The gross revenue received from the sale of such infringing products
set forth by item;
c) The time period during which such products have been offered or sold;
d) The names and addresses of all non-retailer purchasers of the infringing
products and the number of each product listed by item purchased by each
such purchaser; and
e) The names and addresses of all suppliers of the infringing products,
and which product each supplier supplies.
(4) By signing this Agreement the undersigned represents and warrants that the
information provided pursuant to paragraph (3)(a-e) above is a full and complete
disclosure.
(5) pay to Ford Motor Company by cashier’s check damages in the amount of twenty
five percent (25%) of the gross revenues from the sales of any products using any
Ford trademark or trade dress for the past five years, or the sum of $5,000.00,
whichever is greater.
January 16, 2008
Page 5
The undersigned further agrees and acknowledges that any violation or breach of this
Agreement will cause irreparable harm to Ford, and that Ford will be entitled to both a
preliminary and permanent injunction against it for any violation of this Agreement, as well as
any other remedy allowed by law. The undersigned further agrees that if it breaches this
Agreement, it will pay all costs incurred by Ford in enforcing this Agreement, including
reasonable attorneys’ fees, whether incurred with or without suit or before or after judgment.
AGREED TO:
AUTOBADGES.COM
By:
Its:
Date:
