Ford’s Attack on SHR
SilverHorse Racing started producing our made in the USA products in 2005. As a supplier to Saleen, Roush, Shelby, Steeda, as well as NASA, Florida Tech, the U.S. Military, Hollywood movies, and others outside of the automotive world, we’ve worked hard to become your “go-to” source for quality products.
In early 2006, SHR started production of our Tru-Billet line of products, on which optional engravings could be ordered like “GT” and “5.0” among others. At the time, there were no trademarks on these letters and numbers, as there should not be since over 220 car models from 60 other auto manufacturers other than Ford wear a “GT” badge, and 24 auto manufacturers produce a 5.0 liter engine (including companies like Hyundai, GM, Jaguar, Lexus, and others).
Fast forward to 2011, and even though they were denied on the first attempt in 2010, Ford was able to get a trademark on the letters “GT” on appeal with the USPTO where they “misrepresented” facts to the USPTO to get the trademark approved. The USPTO states, “The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that all statements made of his/her own knowledge are true and that all statements made on information and belief are believed to be true.”. Ford’s own trademark states in capital letters, “NO CLAIM IS MADE TO THE LETTERS GT APART FROM AS SHOWN”. To most sane people, that would mean any GT that doesn’t look identical to Ford’s GT font could be used for identifying goods to consumers, otherwise, every other car manufacturer in the world would have a problem with Ford’s trademark. When new trademarks are issued, unless you’re watching the USPTO site daily, you really don’t know that they have occurred. At the time, we were busy trying to come out of the Great Recession like many other small companies, and had no idea we needed to keep an eye on the USPTO site for a filing on the letters “GT” – the most generic letters to ever appear on an automobile.
Meanwhile, SHR kept producing products for auto enthusiasts, and even offered to make licensed versions of our products to companies like Ford, that could be sold alongside our regular products, but would carry the “Officially Licensed” logo on them at an additional cost. Not only did Ford decline citing liability issues for some products, but they also ask for a license fee up-front, and then guaranteed royalties on every sale even if you don’t hit your sales targets. Royalties that by 2016 had reached 2 BILLION dollars a year in revenue, even though it had started at almost zero in 2003 when Global Brand Licensing was founded by John Nens, a lifelong Ford employee. Out of the blue though, in April of 2013, Ford Motor Company accused us of trademark and trade dress infringement for using photos of our own cars and selling our dash kits in an attempt to scare us out of the market that we helped create so that they could flood the market with "officially licensed" copies of our products (the same ones they told us could not be licensed due to liability reasons), made overseas instead of proudly in the USA like ours. These copies are brought in through the Port of Miami, sold to a company based out of an individual’s house, shipped directly to UPR in Lake Worth, and then distributed throughout the USA, and they even claim they are U.S. made products even though we have the bill of ladings showing the products being shipped in from overseas! This in itself was not the real problem. The real problem was Ford went and slandered our name to our dealers throughout the USA, and threatened them with legal action for selling our products, resulting in a drastic drop in sales of our products through normal retail channels since nobody really wants to fight Ford’s army of lawyers over just a few products made by us. This resulted in SHR filing a Federal Lawsuit in 2015 against Ford Motor Company for our right to continue to manufacture our products and sell them to you, our customers. Of course, Ford has counter-sued our company and our founder personally for trademark infringement, counterfeiting, trade dress infringement, and anything else they could try and throw at us.
In 2014, while we were still arguing over “GT”, but not engaged in a lawsuit yet, Ford filed another trademark application, this time for “5.0”. Now you would think they would file it for engines or vehicles, but you’d be wrong. They filed it for apparel, namely hats, shirts, etc… why? Well, because on a vehicle it is merely descriptive of the engine displacement, and therefore really can’t have any trademark protection since if it could, then no other auto manufacturer would be able to label their engines as 5.0 liters. Once again, the USPTO did the right thing and denied Ford’s application. And once again, Ford appealed, and cited such things as the song from Vanilla Ice (yes, that one – Ice Ice Baby!) as well as a shirt with all sorts of Ford marks on it, including a 5.0, as evidence that “5.0” had secondary meaning. Somehow once again Ford was granted a trademark on apparel for the 5.0, but not on cars.
Now since 2010, SHR had been producing a “5.0” engraved fuel door, as well as offering custom displacement badges of any size, including a “5.0”. These optional engravings were not meant to designate the source of the goods (what a trademark really is for), they were just if customers wanted it engraved on their part. Yet once again, when asked on the USPTO application “To the best of signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive.” Ford answered “NO” even though, “willful false statements… may jeopardize the validity of the application… or any registration resulting therefrom”.
So in 2016, when Ford counterclaimed (sued SHR) for trademark infringement, they said we were infringing on their trademarks – trademarks they didn’t even have when we started production of our products, and if they had been truthful to the USPTO, trademarks they never would have received. Late in 2017, in a ruling issued by the district court in Florida without a trial by jury or even trial by a judge, the court agreed with Ford that we did not have permission to use their trademarks, and therefore were guilty, even though permission is not required by law (The law in question is the Lanham Act). The real kicker is that we never claimed we were licensed or affiliated with Ford, and never did any of our customers confuse our products with those of Ford.
But wait – if you’re sued for more than $20.00, the U.S. Constitution guarantees your right to a jury trial, and Ford was suing SHR and owner Marcello Canitano personally for a total of 4 MILLION dollars in damages – so how could SHR not get a trial? Simple – even though Ford was so sure of their case against us, they gave up 4 million dollars in damages, instead “just” asking for “reasonable” attorney fees and an injunction barring us from ever being able to offer these products again. If you, the reader, were sure of your case against someone, would you give up 4 million dollars just so you wouldn’t have to tell your side to a jury?? So by giving that up, Ford dodged a jury trial, and through some other legal maneuvering dodged even a bench trial.
If that all were not bad enough – SHR filed for their own trademark in 2017 for the SHR logo, with the words SilverHorse Racing as part of the mark – so there would be no way to confuse our trademark with anyone else’s. We did this to not only protect our logo, but mostly because we wanted to learn the process involved so we could testify to it in court if we ever got the chance, which we now most likely never will. And within two days of when the USPTO was going to grant the trademark to SHR, after we have used it since 1998, Ford opposed that as well. So now we are fighting another battle in the USPTO appeal board, fighting to be able to keep our logo that they had no problem with for 20 years while they were our customer, but suddenly have a problem with now.
That all said, we stand by our claim that we never did anything wrong, we never deceived (intentionally or accidentally) customers into believing our products were those of any other company, and we will continue to fight this battle as long as possible, even with the impossible odds stacked against us – because this is America, and the truth should still matter. It very well may be the end of SHR given how much this has cost and how much time it has taken, but what is right is right, and what is wrong, must be stood up to and called out, otherwise this will continue to happen to more and more companies in the aftermarket, until all who do not give in to this licensing racket are eliminated from the market, and the real loser is you, the consumer.