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Use of the name “Ford” in a mark and domain name, even though it is the defendant’s own name, is likely to produce consumer confusion as to the defendant’s connection with the automobile manufacturer and to dilute the plaintiff’s mark, the U.S. District Court for the Northern District of Iowa held May 9 ( Ford Motor Co. v. Ford Financial Solutions Inc., N.D. Iowa, CA No. C00-2009-EJM, 5/9/00). The plaintiff, Ford Motor Co., manufactures, markets, and sells automobiles and related products and services under the name and trademark “Ford” throughout the United States. It also offers financial services under the names and trademarks “Ford,” “Ford Financial,” “Ford Credit Certified,” and “Ford Rapid.” Ford owns numerous registrations and applications for its “Ford” name and marks in the U.S. Patent and Trademark Office: Registration Nos. 735,475; 942,993; 1,874,207; and 1,874,206 are valid and subsisting, are owned by Ford, and have become incontestable in accordance with 15 U.S.C. ��1065 and 1115(b); Ford also claims ownership of Application Nos. 75/539.024; 75/528.117; and 75/736.886. Ford Credit has a website at the domain name www.fordcredit.com. Ford Credit’s website offers consumers the ability to research Ford investment accounts, compare the Ford accounts to those of competitors, and learn about investments generally. In addition, Ford Credit’s website allows consumers to estimate and build budgets for individuals interested in saving for and buying Ford cars. Defendant Ford Financial Solutions has been conducting business using the “Ford” mark since April 1998. FFS offers fee-based financial management and investment advisory services for individuals and small businesses. FFS’s primary services are advising clients, preparing financial plans, analyzing investment alternatives, providing consultation, and presenting seminars in all areas of financial planning. FFS operates a website under the domain name www.fordfinancialsolutions.com. FFS’s website offers links to various Web pages concerning financial information and resources and provides consumers with financial research tools. Ford filed suit to prevent FFS’s use of “Ford Financial Solutions” as a trademark and domain name in connection with financial services. LIKELIHOOD OF CONFUSION INCREASED BY INTERNET Even before discussing conclusions of law, Judge Edward J. McManus, writing for the court, stated, “By virtue of Ford’s and Ford Credit’s long use, advertising, and promotion, the FORD Name and Marks are distinctive and famous, possessing a strong secondary meaning signifying Ford and the financial services it offers and provides. Survey results evidence this fame and secondary meaning. In a recent survey of individuals seeking or planning to seek investment and other financial information or advice, 54% of consumers throughout the United States stated that they believe Ford is responsible for the Internet site at www.fordfinancialsolutions.com.” The court then stated that Ford’s registration and use of each of its “Ford” marks in connection with the financial services it offers establishes its exclusive right to use these marks for such services and to prevent third parties from using any name or mark that is likely to cause confusion. “Here,” the court wrote, “FFS is using the name and mark FORD FINANCIAL SOLUTIONS and the domain name fordfinancialsolutions.com in connection with the financial planning services it offers, as described above. The term �Ford’ in FFS’ mark is the same distinctive feature in the FORD Name and Marks. FFS’ financial services, namely investment advice and consultation and financial planning, are similar to and compete with the financial services that Ford provides. Where the distinguishing word or feature of a trademark is copied and used with similar goods or services, the consuming public is likely to be confused.” Furthermore, the court stated, FFS’s use of the domain name fordfinancialsolutions.com increased the likelihood of consumer confusion. “The Internet has become a popular method to research companies and the goods and services that they provide. Consumers also use the Internet in connection with financial goods and services, including researching investment and financial opportunities and purchasing and selling financial products. … Because FFS’ domain name includes Ford’s corporate name, consumers are likely to associate the domain name with Ford,” the court wrote. Disclaimers may be insufficient to cure confusion with respect to domain names, the court added. RIGHT TO USE OF OWN NAME LIMITED The fact that FFS’s owner’s last name is Ford is no defense to a finding of trademark infringement, the court wrote. “The right to use a personal name is not unlimited.” “When an individual’s use of his or her personal name violates the rights associated with a prior used trademark, that individual will be prevented from using his or her name. Moreover, the use of different modifying words, such as �Financial Solutions,’ is insufficient to prevent a likelihood of confusion, when, as is the case here, the most prominent word in both marks is the same and the marks are used in connection with similar goods or services. Due to the similarity of the marks and Ford’s historical rights in the FORD Name and Marks in connection with providing financial services. FFS cannot use its owner’s personal name,” the court wrote. Finally, the court determined that FFS’s use of the “Ford” mark also diluted the distinctive quality of the Ford name and marks. “When consumers associate a famous mark that has traditionally identified the mark holder’s goods and services with a new and different source, dilution has occurred. In this case, consumers are likely to start associating both Ford and FFS with financial services offered in connection with the mark FORD, thereby diluting the FORD Name and Marks,” the court wrote. The court concluded that FFS’s sale and provision of financial services in connection with the “Ford” mark constituted trademark infringement, unfair competition, and dilution. It therefore permanently enjoined Ford Financial Solutions and its officers from using the name and mark “Ford” in conjunction with the name and mark “Financial Solutions,” the domain name fordfinancialsolutions.com, or any other colorable imitation of the “Ford” name and marks in the financial services industry, or doing any other act or thing likely to induce the belief that Ford Financial Solutions’ business or services are in any way connected with Ford’s businesses, products, or services or are sponsored or approved by Ford Motor Co.

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