It’s a rare phenomenon in the 21st century when a US start-up car company can make commercially viable vehicles essentially from scratch, let alone one using new technology and bucking the dealership model. Tesla’s been in the news a lot recently – fires, new lithium battery factories in the US (curiously the largest lithium deposits in the world are believed to be in Afghanistan), and a 60 Minutes feature story that edited in an engine growl to a nearly silent vehicle.
Even minus a growling engine, Tesla models are S-E-X-Y. Seriously, they applied for federal trademark protection for Model S, Model E, Model X, and Model Y. No branding expert can convince me that that’s a coincidence.
However, despite the cute branding, Tesla recently abandoned its Model E mark. Several car articles on the matter (here, here, and even The Hollywood Reporter here) left it to speculation as to why the mark was abandoned. The publicly available record though suggests an interesting story.
My initial reaction was that maybe it had faced a descriptiveness refusal as an electric car. However, upon looking at the file histories for the three MODEL E applications (here, here, and here), they all had been approved and published for opposition. In other words, the Trademark Office did not find a reason to reject the applications, including on the basis of descriptiveness. Tesla did not let these applications as we trademark nerds like to say “die a natural death,” instead it expressly abandoned the applications, which normally only happens when there is a dispute.
Who would have thought that dispute would be between the car company most aligned with a flashy mass-produced electric car and the original production car?
As shown in the file histories, extensions of time to oppose were filed by Ford Motor Company, who happens to still own active registrations for the well-known and antiquated MODEL T. But these registrations are still alive for some ancillary products: hand tools, namely, pocket knives; children’s activity books and various desk items; key fobs and plaques; clocks and collector coins; banks; and toys.
Ford however filed a new intent-to-use application on May 29, 2013 for MODEL T for “automobiles”. The Tesla intent-to-use applications were filed August 5, 2013, including Tesla’s application for MODEL E in connection with “automobiles and structural parts therefor”. Therefore, Ford’s application has priority. Arguably, MODEL T and MODEL E sound similar and were applied for with respect to identical goods. Where the goods are identical, “the degree of similarity [between the marks] necessary to support a conclusion of likely confusion declines.” See TMEP 1207.
Ford has prior use and registration of the identical MODEL E mark for various electrically powered vehicles, which was cancelled in May 2010. Ford also applied for MODEL E for “automobiles” in December 2013, yet the application was surprisingly not refused registration over Tesla’s prior filed and still pending MODEL E application, despite being an identical mark for identical goods.
Given Tesla’s express abandonment, Ford and Tesla likely reached some agreement regarding the MODEL E mark and perhaps this only fuels further speculation that Ford is interested in buying, or at least partnering with, Tesla. Depending on that agreement, Tesla may be bringing S-E-X-Y back after all if Ford is licensing it back to Tesla.