Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA878351
`
`Filing date:
`
`02/20/2018
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91237697
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Ford Motor Company
`
`CASIMIR W COOK II
`SCHIFF HARDIN LLP
`PO BOX 7397
`ANN ARBOR, MI 48104
`UNITED STATES
`Email: fordtrademarks@schiffhardin.com, ccook@schiffhardin.com,
`nasunto@schiffhardin.com
`
`Motion to Amend Pleading/Amended Pleading
`
`Casimir W. Cook II
`
`fordtrademarks@schiffhardin.com, ccook@schiffhardin.com,
`nasunto@schiffhardin.com, fordtmdocket@schiffhardin.com
`
`/Casimir W. Cook/
`
`02/20/2018
`
`First Amended Notice of Opposition.pdf(143544 bytes )
`Exhibits to Amended Notice.pdf(945394 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`Ford Motor Company,
`Opposition No. 91237697
`
`
`
`Opposer,
`
`Application No. 87/334,679
`
`Silver Horse Racing, LLC,
`
`Filed:
`
`February 14, 2017
`
`
`
`
`Applicant.
`
`Trademark
`
`SILVERHORSE RACING
`
`
`
`
`and DESIGN
`
`FIRST AMENDED NOTICE OF OPPOSITION
`
`Commissioner for Trademarks
`
`PO. Box 1451
`
`Alexandria, VA 22313-1451
`
`Dear Sir or Madam:
`
`Pursuant to 15 U.S.C. §§ 1064, 1068, 37 C.F.R. § 2.111(b) and TBMP § 309.03(d), Ford Motor
`
`Company, located and doing business at One American Road, Dearbom, Michigan 48126 (hereinafier
`
`referred to as “Ford” or “Opposer”) believes that it is and will continue to be
`
`damaged by the below-
`
`described application filed by SilverHorse Racing, LLC, a limited liability
`
`company having a place of
`
`business at Bldg. B-10, 700 S. John Rodes B1vd., Melbourne, Florida 32904 (hereinafter referred to as
`
`“SilverHorse” or “Applicant”):
`
`SILVERHORSE RACING and DESIGN
`
`
`
`
`
`
`
`
`
` Metal parts for vehicles, namely, automotive exterior and
`Int’l Class 012:
`
`
`interior metal decorative and protective trim; Motor vehicles,
`namely, passenger automobiles, their structural parts, trim and
`
`bad es.
`— Int’l Class 016: Decorative decals for vehicle windows.
`
`— Int’l Class 018: Duffle bags.
`
`
`
`_ Int’l Class 025: Baseball caps and hats; Dress shirts; Polo shirts; T-shirts.
`
`@flé
`
`
`
`

`

`As grounds for opposition, Ford alleges as follows:
`
`1 .
`
`Ford has used the RUNNING HORSE trademark in connection with its MUSTANG®
`
`vehicles since 1964 and has done so continuously from that date to the present.
`
`2.
`
`Ford has used its RUNNING HORSE with TRIBAR trademark in connection with its
`
`MUSTANG® vehicles since 1978 and has done so continuously from that date to the present.
`
`3.
`
`As a result of the use identified in paragraph Nos. 1 and 2, the RUNNING HORSE
`
`and RUNNING HORSE with TRIBAR function as highly distinction trademarks identifying Ford as
`
`the origin of such automobiles and automobile parts. Ford has established common law rights in these
`
`marks.
`
`4.
`
`Ford is the owner of numerous trademark registrations for the RUNNING HORSE
`
`mark and the RUNNING HORSE with TRIBAR mark, including each of the following registrations:
`
`Int’l. Class and Goods
`
`Ford’s RUNNING HORSE and RUNNING HORSE
`
`with TRIBAR Re _istrations
`
`automobiles and US. Reg. No. 1,416,549
`Int’l Class 012:
`
`their structural parts, wheels and
`wheel covers
`
`
`
`
`Int’l Class 012: Automobiles and
`their structural parts, wheels and
`
`
`wheel covers
`
`
`
`
`
`Int’l Class 012: Auto parts and
`accessories, namely,
`license plate
`
`
`frames,
`exterior
`insignia badges,
`vehicle seat covers, fender covers
`
`
`
`
`
`Int’l Class 012: Auto parts and
`accessories, namely license plate
`
`
`frames,
`exterior
`insignia badges,
`
`fitted and semi-fitted covers
`for
`
`
`
`U.S. Reg. No. 1,918,041
`
`
`
`
`
`
`
`
`vehicles, vehicle seat covers, fender
`covers,
`air-cleaner wingnuts,
`air
`
`valve stem covers.
`
`Int’l. Class 025: Clothing; namely,
`shirts, sweatshirts, T.-shirts, jackets,
`and cas, * all sole]
`for uromotional
`
`
`
`
`
`
`

`

`use relating to automotive vehicles*.
`
`automotive vehicles*.
`
`Int’l. Class 025: Clothing; namely,
`sweaters, shorts, sweatshirts, shirts,
`jackets, and caps, * all solely for
`promotional
`use
`relating
`to
`
`5.
`
`Ford has expended millions of dollars promoting the sale of its goods under the
`
`RUNNING HORSE and RUNNING HORSE with TRIBAR marks, and the public has come to
`
`associate these marks and products sold under these marks exclusively with Ford.
`
`6.
`
`By virtue of Ford’s long-standing use and extensive advertisement and sale of goods
`
`throughout the United States and the world, the RUNNING HORSE and the RUNNING HORSE with
`
`TRIBAR marks are distinctive and famous, and they were distinctive and famous
`
`long prior to
`
`Applicant’s first unauthorized use of the SILVERHORSE RACING and DESIGN mark.
`
`7.
`
`The fame of Ford’s RUNNING HORSE and RUNNING HORSE with TRIBAR
`
`marks has been widely recognized, including in decisions of Federal Courts across the United States.
`
`See e.g., Ford Motor Co. v. Mustangs Unlimited, Inc., 420 Fed. Appx. 522 (6th Cir.2011)
`
`(finding
`
`with regard to Ford’s marks, “[Ford] spends millions of dollars each year to promote its products, and
`
`as a result its marks are now famous); Ford Motor Co. V. CE WHEEL DISTRIBUTORS, LLC, 868 F.
`
`Supp. 2d 1350, 1362 (“It is undisputed that Ford's MUSTANG word mark, MUSTANG Running
`
`Horse design, MUSTANG Horse and Bars mark, and Cobra design are all world famous”).
`
`8.
`
`On April 3, 2013, Ford sent a cease and desist letter to the Applicant based on the
`
`Applicant’s unauthorized use of Ford’s trademarks.
`
`9.
`
`Ford and the Applicant were unable to resolve their disputes, and the Applicant filed
`
`a lawsuit against Ford alleging that Ford’s claims of trademark infiingement constituted
`
`“wrongfiil
`
`interference” with the Applicant’s business. A copy of the Applicant’s complaint is attached hereto as
`
`Exhibit A. This state court action was removed to the United States District Court Middle District of
`
`Florida Orlando Division on January 13, 2016, and now bears number 6:16-CV-0053-ACC-KRS, as
`
`shown at the top of Exhibit A.
`
`10.
`
`The Applicant’s complaint asserts that the Applicant’s business is “manufacturing
`
`aftermarket parts for Ford Mustangs” and alleges that the Applicant has “achieved a significant following
`
`in the larger community of Ford Mustang aficionados.” Complaint at 1111 13 and 15.
`
`11.
`
`Ford filed a counterclaim alleging claims for trademark infringement under the
`
`

`

`Lanham Act, false designation of origin, and trademark infringement under Florida law.
`
`12.
`
`On March 15, 2016, the Court entered a scheduling order setting August 16, 2016, as
`
`the deadline for amending pleadings. A copy of the scheduling order is attached hereto as Exhibit B.
`
`13.
`
`On January 30, 2017, the Court entered summary judgment in favor of Ford on the
`
`Applicant’s claim of “wrongfiil interference.” A copy ofthe Court’s order is attached hereto as Exhibit
`
`C.
`
`14.
`
`Two weeks afier the Court’s summary judgment order, and long alter the deadline for
`
`amending the pleadings, the Applicant filed its application for the SILVERHORSE RACING and
`
`DESIGN mark.
`
`15.
`
`On December 6, 2017,
`
`the Court granted Ford’s Summary Judgment claims for
`
`trademark infringement in part, dismissed Ford’s other claims, and denied Silverhorse Racing, LLC’s
`
`partial motion for summary judgment
`
`16.
`
`On February 2, 2018, the Court entered an order of Final Judgment and Permanent
`
`Injunction in favor of Ford.
`
`17.
`
`The design portion of the Applicant’s mark is confiisingly similar to Ford’s
`
`RUNNING HORSE and RUNNING HORSE with TRIBAR Registrations.
`
`18.
`
`The goods recited in the Applicant’s application for the SILVERHORSE RACING and
`
`DESIGN mark correspond to goods sold by Ford under the RUNNING HORSE and RUNNING HORSE
`
`with TRIBAR Registrations, as set forth in the following table.
`
`
`
`Ford TM Re. No.
`
`
`
`
`U.S. Reg. No.
`
`2,000,1 1 1
`
`
`(RUNNING HORSE
`
`
`
`with TRIBAR)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`A olicant’s Goods
`
`Ford’s Goods
`
`
`
`Int’l. Class 012: Metal parts
`for vehicles, namely,
`automotive exterior and
`interior metal decorative and
`protective trim; Motor
`vehicles, namely, passenger
`automobiles, their structural
`parts, trim and badges.
`
`Int’l. Class 012: Auto parts
`and accessories, namely
`license plate frames, exterior
`insignia badges, fitted and
`semi-fitted covers for
`vehicles, vehicle seat covers,
`fender covers, air-cleaner
`wingnuts, air valve stem
`covers.
`
`U.S. Reg. No.
`Int’l. Class 012: Auto parts
`2,000,1 15
`and accessories, namely,
`(RUNNING HORSE)
`license plate frames, exterior
`
`insignia badges, vehicle seat
`
`covers, fender covers.
`
`
`
`Int’l. Class 012: automobiles
`U.S. Reg. No.
`1 ,416,549
`and their structural parts,
`
`
`
`wheels and wheel covers.
`(RUNNING HORSE
`
`
`
`
`

`

`Int’l. Class 016: Decorative
`decals for vehicle windows.
`
`Int’l. Class 018: Duffle bags.
`
`Int’l. Class 012: automobiles
`
`and their structural parts,
`wheels and wheel covers.
`
`Int’l. Class 012: Auto parts
`and accessories, namely,
`license plate frames, exterior
`insignia badges, vehicle seat
`covers, fender covers
`
`Int’l. Class 012: Auto parts
`and accessories, namely
`license plate frames, exterior
`insignia badges, fitted and
`semi-fitted covers for
`
`vehicles, vehicle seat covers,
`fender covers, air-cleaner
`wingnuts, air valve stem
`covers.
`
`Int’l. Class 018: Tote bags,
`all-purpose sports bags,
`wallets, billfolds.
`
`Int’l. Class 018: Tote bags, all
`purpose athletic bags, duffel
`bags, credit card cases,
`wallets, billfolds, umbrellas.
`
`U.S. Reg. No.
`1,686,288
`
`(RUNNING HORSE
`with TRIBAR
`
`U.S. Reg. No.
`2,000,1 15
`(RUNNING HORSE)
`
`U.S. Reg. No.
`2,000,1 1 1
`
`(RUNNING HORSE
`with TRIBAR)
`
`U.S. Reg. No.
`1,975,21 1
`(RUNNING HORSE
`with TRIBAR)
`
`U.S. Reg. No.
`2,239,097
`(RUNNING HORSE)
`
`TRIBAR)
`
`Int’l. Class 025: Baseball caps
`and hats; Dress shirts; Polo
`shirts; T-shirts.
`
`Int’l. Class 025: Clothing;
`namely, shirts, sweatshirts, T-
`
`U.S. Reg. No.
`1,918,041
`
`shirts, jackets, and caps, * all
`solely for promotional use
`relating to automotive
`vehicles *
`
`Int’l. Class 025: Clothing;
`namely, shirts, sweatshirts,
`T— shirts, jackets, and caps, *
`all solely for promotional
`use relating to automotive
`vehicles *
`
`(RUNNING HORSE)
`
`U.S. Reg. No.
`1,918,040 (RUNNING
`HORSE with
`
`19.
`
`The Applicant’s use ofthe SILVERHORSE RACING and DESIGN mark to promote the
`
`Applicant’s goods is likely to cause confiision, or to cause mistake, or to deceive consumers as to the
`
`source of Applicant's goods in violation of Section 2(d) of the Lanham Act, 15, U.S.C. § 1052 (d). There
`
`

`

`is no issue as to priority. Ford has used its RUNNING HORSE and RUNNING HORSE with TRIBAR
`
`marks in connection with its goods long prior to the Applicant’s claimed dates of first use.
`
`20.
`
`Ford is and/or will be damaged by the use and registration of SEVERHORSE RACING
`
`and DESIGN by Applicant for Applicant’s goods because purchasers, persons in the trade, the automotive
`
`community and the public will be confiised as to the source or origin of Applicant’s goods sold under
`
`such mark to the damage and detriment of Ford.
`
`21.
`
`Ford is and/or will be damaged by the use and registration of SILVERHORSE RACING
`
`and DESIGN by Applicant for Applicant’s Goods because purchasers, persons in the trade, the automotive
`
`community and the public will mistakenly assume that such goods are associated with, endorsed by or in
`
`some other way related to or sponsored by Ford and its members and affiliates to the detriment and damage
`
`of Ford.
`
`22.
`
`Registration of Applicant’s mark SILVERHORSE RACING and DESGIN is specifically
`
`barred by the provisions of Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d) because said
`
`mark consists of or comprises a mark which so resembles marks previously used and registered in the
`
`United States by Ford and not abandoned, as to be likely, when applied to the Applicant’s Goods to cause
`
`confusion, mistake, or deception.
`
`23.
`
`The likelihood of confilsion is exacerbated by the fact that goods offered by Ford and the
`
`Applicant are specifically directed to the same consumers, namely the “community of Ford Mustang
`
`aficionados.”
`
`24.
`
`The Applicant’s use or registration ofthe SILVERHORSE RACING and DESIGN mark
`
`is likely to cause and will cause dilution by blurring and/or dilution by tamishment of Ford’s famous
`
`RUNNING HORSE and RUNNING HORSE with TRIBAR marks under the Trademark Act, Section
`
`43(c).
`
`25 .
`
`The Applicant’s registration of the SILVERHORSE RACING and DESIGN mark would
`
`damage Opposer’s efforts to prevent dilution by blurring or dilution by tamishment.
`
`26.
`
`If the Applicant were granted the registration herein opposed,
`
`it would obtain at
`
`least aprimafacie exclusive right to use of SILVERHORSE RACING and DESIGN mark in connection
`
`with its goods. Such registration would be a source of inj ury and damage to the Opposer.
`
`

`

`WHEREFORE, the Opposer, FORD MOTOR COMPANY, prays that Application Serial No.
`
`87/334,679, for the SILVERHORSE RACING and DESIGN mark, be rejected, denied and refused.
`
`Respectfully submitted,
`
`.-
`
`By:
`
`: %
`
`Casimir W. Cook 11
`
`Attorney for Opposer
`
`Dated: February 20, 2018
`(Filed electronically via USPTO.ESSTA)
`
`SCHIFF HARDIN LLC
`PO. Box 7397
`
`Ann Arbor, MI 48104
`Email: ccook@schifihardin.com
`fordtrademarks@schifihardin.com
`nasunto@schifihardin.com
`Our File: 83871518
`
`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true copy of the foregoing First Amended Notice of Opposition was served
`on Applicant this 20th day of February 2018 by sending same via email to:
`
`SilverHorse Racing, LLC
`JOSEPH CANITANO
`SILVERHORSE RACING LLC
`
`700 S. JOHN RODES BLVD, BLDG B-10
`MELBOURNE, FL 32904
`UNTITED STATES
`
`info@silverhorseracing.com, mcanitano@silverhorseracing.com
`
`Casimir W. Cook 11
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`
`
`
`
`

`

`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 1 of 15 PagelD 50
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 1 of 15 PageID 50
`
`Filing # 34760232 E-Filed 11/23/2015 11:08:33 AM
`
`1N THE CIRCUIT COURT OF THE
`
`EIGHTEENTH JUDICIAL CIRCUIT IN AND
`
`FOR BREVARD COUNTY, FLORIDA
`
`CASE NO.
`
`SILVERHORSE RACING, LLC,
`a Florida limited liability company,
`
`Plaintiff,
`
`v.
`
`FORD MOTOR COMPANY
`
`a foreign corporation,
`
`Defendant.
`
`/
`
`w
`
`Plaintiff, SilverHorsc Racing, LLC (“SHR”) sues Defendant, Ford Motor Company
`
`(“Ford”), and as grounds therefore states as follows:
`
`1.
`
`This is an action for damages in excess of $15,000.00, exclusive of costs, interest
`
`and attorneys’ fees.
`
`2.
`
`SHR is a Limited Liability Company organized and existing under the laws of the
`
`State of Florida, with its principal place of business in Brevard County, Florida.
`
`3.
`
`4.
`
`Ford is a foreign corporation authorized to transact business in Florida.
`
`Venue for
`
`this action is properly in Brevard County, Florida, as SHR is
`
`headquartered in Brevard and Ford conducted business with SHR in Brevard County over many
`
`years.
`
`5.
`
`6.
`
`Joseph Marcello Canitano (“Canitano”) is the owner and founder of SHR.
`
`Canitano has had a lifelong passion for Ford Mustangs, which became a reality
`
`for him in 1987 when he acquired a 1973 Mustang.
`
`

`

`base 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 2 of 15 PagelD 51
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 2 of 15 PageID 51
`
`7.
`
`In l99l, Canitano began to participate in competitive racing events known as
`
`autocrossing with his 1973 Mustang.
`
`8.
`
`In I992, Canitano began competitive road racing driving a Mustang owned by a
`
`sponsor, and he continued to engage in that activity until I994.
`
`9.
`
`In 1994, Canitano purchased a I987 Mustang which he and an initial partner
`
`modified for SCCA road racing and Canitano competed in from l995-l998, at which time
`
`Canitano bought his partner out and began racing under the name “SilverHorse Racing.”
`
`10.
`
`Shortly after beginning to race under the name SilverHorse Racing, Canitano
`
`created a website www.5ilverhorseracing.com as an informative site for his race team.
`
`I I.
`
`Canitano soon built up a loyal group of sponsors for his racing endeavors. A bad
`
`racing accident in 2002 totaled Canitano’s primary race car. The car was repaired and sold, and
`
`was replaced by a 1993 Mustang coupe. By this time, Canitano and SHR were a staple of the
`
`automotive industry publications.
`
`12.
`
`13.
`
`In 2003, Canitano filed Article of Organization for SHR as an actual business.
`
`In 2004, Canitano decided to convert his lifelong hobby and passion into a
`
`business that would specialize in manufacturing aftermarket parts for Ford Mustangs, under the
`
`banner of SHR.
`
`l4.
`
`Canitano purchased a new 2005 Ford Mustang in 2005, and set about customizing
`
`it with proprietary SHR aftermarket parts of his own invention and creation.
`
`15.
`
`SHR grew as a business and achieved a significant following in the larger
`
`community of Ford Mustang aficionados.
`
`SHR moved to its present production and
`
`manufacturing facility in 2008, and began to develop relationships with nationwide dealers in
`
`Ford Mustang afiermarket parts.
`
`

`

`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 3 of 15 PagelD 52
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 3 of 15 PageID 52
`
`16.
`
`In the 2007-2008 time period, SHR began a close relationship with Saleen, with a
`
`special emphasis on SHR’s fuel tank doors that are superior in every respect to Ford’s standard
`
`factory issue fuel
`
`tank doors. Sl-lR’s fuel
`
`tank doors were actually adopted by Ford with
`
`customized engravings as the factory standard issue for all Saleen’s productions and appeared in
`
`numerous print, poster and online ford marketing materials.
`
`17.
`
`At approximately that same time, Ford Racing begins to use SHR’s patented
`
`flush-mount louvers on Ford Racing vehicles, and SHR received its first production order from
`
`Ford Racing for the Ford Cobra spanning 2007 through 2014.
`
`18.
`
`In 2008, SHR’s louvers were on the Cobra Jet vehicle unveiled by Ford at the
`
`national SEMA show in November 2008, and were embraced and applauded by the drag racing
`
`world.
`
`19.
`
`In February 2010, SHR, which enjoyed a close relationship with Ford and Ford
`
`Racing, began negotiations to directly produce louvers as a factory-installed option on all Ford
`
`Mustangs on the assembly line. Unfortunately, SHR had to candidly advise Ford that it lacked
`
`the capital to undertake the exclusive production contract, without commitments from Ford that
`
`Ford was unwilling to guarantee.
`
`20.
`
`In July of 2010, SHR provided Ford Racing with a prototype of what came to be
`
`known as the SHR Tru-Billet fuel door for 2000-2014 Mustangs. Ford was non-committal, so
`
`SHR continued to offer the 'I‘ru-Billet fuel door as an aftermarket option for Ford owners with
`
`their own unique designs.
`
`2].
`
`SHR’s relationship with Ford continued to grow from 2010 to 2012.
`
`in 201 l, at
`
`the pinnacle of the relationship, Ford unveiled a SHR customized Mustang in the Ford display on
`
`“Mustang Alley” at the prestigious Woodward Dream Cruise in Detroit, Michigan. By that time,
`
`

`

`'Case 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 4 of 15 PagelD 53
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 4 of 15 PageID 53
`
`SHR had also developed relationships with Roush Performance Saleen and Shelby American, all
`
`dominant players in the performance vehicle world.
`
`22.
`
`in 2011, SHR started discussions to become a marketer for, and signed its first
`
`contract with Shelby Performance Parts (“Shelby”) and started production for Shelby in mid-
`
`2012, private labeling aftermarket parts for Shelby automobiles to Shelby owners nationally.
`
`23.
`
`In 2012, Ford and SHR continued their close relationship, and SHR aftermarket
`
`parts were featured prominently on vehicles selected by Ford for display at automotive events
`
`nationally, often incorporated by Ford Racing into factory productions.
`
`24.
`
`On April 3, 2013, the relationship abruptly ended, without advance warning. On
`
`that day, SHR received its Purchase Order for 2013 Cobra Jet louvers from Ford Racing, and,
`
`incredibly, a "cease and desist” letter from Ford’s outside intellectual property law firm, Phillips
`
`Ryther & Winchester (the “Phillips Firm”). A copy of the April 3, 2013 letter from the Phillips
`
`Firm is attached hereto as Exhibit “A.”
`
`25.
`
`Ignoring the long standing relationship between SHR and Ford from 2005-2013,
`
`the Phillips Firm contended in its April 3, 2013 cease and desist letter that SHR was using
`
`trademarks owned by Ford to advertise its products and on its products, without Ford’s
`
`authorization, citing images located by the Phillips firm on the SHR website. The two examples
`
`referenced by the Phillips Firm were (1) two photos of SHR-modified Mustangs containing SHR
`
`aftermarket specialty manufactured products and custom modifications, arguing that even an
`
`image of the “distinctive shape” of a Ford Mustang was protectable under trade dress rights; and
`
`(2) a silhouette of a Mustang accompanied with the letters “GT" that were included in an
`
`applique kit manufactured by a third party supplier that the supplier independently designed.
`
`

`

`.Case 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 5 of 15 PagelD 54
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 5 of 15 PageID 54
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`26.
`
`Canitano was stunned to receive the cease and desist letter from the Phillips Firm.
`
`He had developed many close relationships with executives at Ford and Ford Racing from 2005-
`
`2013. No one had ever expressed any concerns about SHR infringing upon Ford’s protectable
`
`intellectual property rights.
`
`Instead, Ford had proudly incorporated SHR aftermarket and
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`production parts into many of its own public displays of Mustangs at public automotive events
`
`nationally and licensed and sold both apparel and die-cast replicas of SHR products without
`
`compensation to SHR.
`
`27.
`
`SHR attempted to contact cooler heads at Ford and Ford Racing, without success.
`
`28.
`
`In August of 2013,
`
`light was finally shed on the sudden and unexpected
`
`disintegration of the long-standing relationship between SHR and Ford, when a South Florida
`
`company known as UPR announced that it had become a licensed manufacturer of aftermarket
`
`products for Ford. UPR then released images of “new” fuel doors it was licensed to market for
`
`Ford, which were clearly direct “knock offs” of the fuel doors that SHR had successfully
`
`manufactured from 2005-2013.
`
`29.
`
`Shortly thereafter, Ford advised SHR that it was demanding a royalty for any
`
`product ever manufactured by SHR engraved with the initials “GT,” claiming an exclusive
`
`trademark for
`
`those initials.
`
`This was absurd, given that numerous manufacturers and
`
`aftermarket companies have used “GT” (originally coined from the phrase “Gran Turismo,” later
`
`anglicized as Grand Touring) for decades.
`
`Indeed, a casual Sunday drive will reveal to any
`
`interested observer that the initials GT are routinely used on numerous makes and models of
`
`different vehicles with no connection or association with Ford. Nonetheless, Ford claims that
`
`any SHR products with the initials GT on them are "counterfeit.”
`
`

`

`Case 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 6 of 15 PagelD 55
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 6 of 15 PageID 55
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`30.
`
`Ford refused to discuss any reasonable resolution of the dispute, and its threats
`
`against SHR for manufacturing and selling “counterfeit” products begin to escalate. The Phillips
`
`Firm advised that “law enforcement" had recently seized “counterfeit” SHR products from
`
`American Muscle, a leading national distributor of SHR products, and that the products were
`
`subject to “criminal forfeiture." Friends of SHR within Ford were perplexed and question why
`
`UPR had become a licensee given its long history of counterfeiting Ford products.
`
`3].
`
`Throughout 20l4, Ford embarked on a campaign to contact all dealers and
`
`distributors of SHR products and advise them that SHR products engraved with the initials GT
`
`were “counterfeit goods” and subject
`
`to criminal
`
`forfeiture and/or criminal prosecution if
`
`continued to be marketed to the public.
`
`32.
`
`Within weeks, SHR was decimated and devastated by Ford’s actions. Dealers
`
`returned product to SHR that they had been told by Ford were “counterfeit” and refused to accept
`
`any additional new SHR products engraved with the initials GT.
`
`33.
`
`Oddly enough, throughout 20l4, Ford Racing continued to issue Purchase Orders
`
`for aftermarket louvers manufactured by SHR. SHR, hoping this was all a misunderstanding,
`
`fulfilled these orders.
`
`34.
`
`in February 2015, SHR was advised “off the recor ” that the genesis of its
`
`unexpected dispute with Ford over the use of the GT logo was ominously connected to the
`
`termination of the Global Licensing Manager for Ford for over 20 years, due to his alleged
`
`participation in kickbacks from aftermarket manufacturers.
`
`35.
`
`A review of Ford‘s actual Trademark filings reveal the disingenuous and specious
`
`nature of Ford’s claim that it “owns" all rights to the logo “GT." The filing, attached hereto as
`
`Exhibit “B,” actually contains a disclaimer that “NO CLAIM IS MADE TO THE EXCLUSIVE
`
`

`

`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 7 of 15 PageID 56
`Case 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 7 of 15 PagelD 56
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`RIGHT TO USE “GT” APART FROM THE MARK AS SHOWN.”
`
`In fact, “[t]he mark
`
`consists of the connected letters “G” and “T” configured from parallel pipes or lines, with the top
`
`overhang of the letter “G” flowing into the top overhang of the letter “T” creating a straight line
`
`at the top of the stylized mark."
`
`36.
`
`Attached hereto as Exhibit “C” is a representative photograph of "stylized mark”
`
`claimed by Ford (top) and a typical engraved GT logo utilized by Sl-IR (bottom). Common sense
`
`dictates that there is no possibility of confusion between the two.
`
`37.
`
`All conditions precedent to the maintenance of this action have been performed,
`
`excused or waived.
`
`MB
`
`38.
`
`This is an action for tortious interference with advance business relationships.
`
`39.
`
`SHR realleges the allegations set forth above in paragraphs [-37 as if fully set
`
`forth herein.
`
`40.
`
`Prior to April 3, 2013, SHR enjoyed advantageous business relationships with
`
`retailers, wholesalers and distributors of its products nationally and internationally.
`
`4 1.
`
`Ford was aware of such relationships.
`
`42.
`
`Ford intentionally and wrongfully interfered with such relationships, without legal
`
`justification, by falsely threatening such retailers, wholesalers and distributors with civil and
`
`criminal liability for the sale of allegedly “counterfeit” goods manufactured by SHR, based upon
`
`a claim that it owned exclusive rights to the GT logo devoid of any disclaimer or limitation that
`
`its rights were in fact limited to a stylized logo as described in Exhibit “B.”
`
`

`

`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 8 of 15 PageID 57
`Case 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 8 of 15 PagelD 57
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`43.
`
`As a direct and proximate result of such wrongful
`
`interference, SHR has been
`
`damaged. Such damages include direct damages and special, indirect and consequential damages
`
`in the form of lost profits, loss of goodwill, and loss of business reputation.
`
`WHEREFOR, SHR demandsjudgment for damages against Ford, costs, interest and such
`
`otherjust and further relief as the Court deems appropriate.
`
`DEMAND FOR TRIAL BY JURY
`
`SHR hereby demands trial byjury on all issues so triable.
`
`LAW OFFICES OF DAVID S. OLIVER
`
`/s/ David S. Oliver
`
`David S. Oliver, Esq.
`Florida Bar No. 521922
`
`424 East Central Boulevard, Suite 228
`Orlando, Florida 32801
`
`Telephone: (407) 402-9379
`Dso9l l legal@gmail.com
`
`Dated: November 23, 2015
`
`

`

`‘Case 6:16-cv-00053-ACC—KRS Document 3-1 Filed 01/14/16 Page 9 of 15 PageID 58
`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 9 of 15 PageID 58
`
`PHI LIPSRYTHER & WINCHESTER
`«rat-air GREGORY D. Pmnws
`Direct {801) 935-4933
`gdp@prwlawfirm.com
`
`April 3, 2013
`
`VIA EMAIL (info@silverhorseracing.com; sllverhorse@ewdhosting.com);
`and FIRST CLASS MAIL
`
`Joseph M. Canitano
`SilverHorse Racing
`700 S. John Rodes blvd.
`
`Building B-10
`. Melbourne, FL 32904
`
`Re: Infringement of Ford Trademarks
`
`Dear Mr. Canitano:
`
`This law firm represents Ford Motor Company (“Ford”) in intellectual property and
`trademark enforcement matters. Ford owns numerous trademarks including without limitation
`FORD®, MUSTANG®, RUNNING PONY® logo, GT® and the distinctive shapes of Ford
`automobiles, or trade dress (collectively the “Ford Marks”). Use of the Ford Marks, 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
`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 you are using Ford’s Marks to advertise your
`products and also displaying Ford Marks on your products without Ford’s authorization. Below are
`images of some of your infringement we found at silverhorseracing.com for your reference.
`
`
`
`124 SOUTH 600 EAST | SALT LAKE CITY.'UT 84102
`MAIN: 801.935.4935 | FAX: 801.935.4936 | WWW.PRWLAWFIRM.COM
`
`

`

`Case 6:16-cv-00053-ACC-KRS Document 3-1 Filed 01/14/16 Page 10 of 15 PageID 59
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`April 3, 2013
`Page 2 of5
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`can. slow
`
`First, the law is also well-established that you may not manufacture or sell products that
`incorporate or copy the trademarks of another without authorization from the trademark owner.
`See, e.g.. Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665, 667 (ED. Mich. 2002)
`(enjoining use of various Ford, Jaguar, and Aston Martin trademarks on floor mats and awarding
`Ford attorney fees and costs in excess of $250,000); Porsche AG v. Universal Brass, Inc, 34
`U.S.P.Q.2d 1593 (W.D. Wash. 1995) (enjoining sale of unauthorized products bearing Porsche
`trademarks, including key chains and license plate frames).
`
`Second, the law is also well-settled that automobile manufacturers have protectable trade
`dress rights in the distinctive shapes of their automobiles. See, e.g., Liquid Glass Enterprises, Inc,
`v. Dr. Ing. h.c.F. Porsche AG and Porsche Cars North America, Inc, 8 F.Supp.2d 398, 402 (D.N.J.
`1998). See also, Ferrari S.P.A. Esercizio v. Roberts, 944 F.2d 1235, 1240 (6th Cir. 1991), cert.
`denied 505 U.S. 1219, 112 S.Ct. 3028 (1992) ("[T]he unique exterior design and shape of the
`Ferrari vehicles are their ‘mark' or ‘trade dress' which distinguish the vehicles' exterior shapes not
`simply as distinctively attractive designs, but as Ferrari creations"); Chrysler Corp. v. Silva, 118
`F.3d 56, 58-59 (lst Cir. 1997) (trade dress of Dodge Viper protectable). Volkswagenwerk
`Aktiengesellschaft v. Rickard, 492 F.2d 474 (5'11 Cir. 1974) (affirming injunction barring, among
`other things, defendant service shop’s use of “any silhouette, picture, caricature, or reproduction of
`the shape or appearance of the Volkswagen sedan”).
`
`This letter is intended to secure your voluntary agreement to cease from violating Ford's
`intellectual property rights. Ford requires that you sign the below-attached Agreement and return it
`to our office by no later than April 17, 2013. If we have not received a signed copy of the
`Agreement fi'om you by the close of business on that day, we will infer that you are unwilling to
`resolve this matter voluntarily and we will advise Ford to proceed with further action against you.
`
`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
`
`PHILLIPS RYTHER & WINCHESTER
`
`

`

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`April 3, 2013
`Page 3 of5
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`constitute false advertisement.
`
`This letter is without prejudice to all rights of Ford, including past or fitture royalties, past or
`future damages, attomeys’ fees, and to br