Today I write with a thought-provoking question: Just who owns the trademark rights to Telsa/SpaceX’s Spaceman Roadster? Tesla? SpaceX? Perhaps even humanity?

If you didn’t catch it, SpaceX recently launched its first Falcon Heavy three-booster rocket designed to carry large payloads into space. In a stunning feat of engineering and genius marketing, the rocket sent SpaceX CEO (and Telsa CEO) Elon Musk‘s Tesla Roadster toward the Sun (where it will orbit for billions of years), all while returning two of the three boosters to the same location from which the rocket departed.

It might seem incredible to believe, but the NASA-defined space object “Tesla Roadster (AKA: Starman, 2018-017A)” is now traveling away from the Earth on its trajectory to the Sun. You can track the object using NASA’s HORIZONS system and even watch a live feed from its on-board cameras.

Yes, these are real pictures: credit, credit.

If you haven’t seen the launch and booster touch down, now is the time; it is truly awe-inspiring and one of the biggest feats of the decade. It may also be the most ambitious marketing promotion for a product and service (the Falcon Heavy) ever, establishing both Tesla and SpaceX as innovative, intelligent, and forward-thinking brands. And that gets me thinking: Spaceman (or some similar description), as a potential name, symbol, or device, could constitute a trademark. But because two separate companies, Tesla and SpaceX, are involved in launching the car into space, just who has a right to the mark? And does Spaceman itself operate as a mark identifying either company as its source?

The answer could hinge on whether either company decides to use the mark to designate itself as the source of certain goods or Spaceman, for that matter. The primary purpose behind trademark protection is to reduce information and transaction costs, while protecting investment in the creation and promotion of marks that do just that. Thus, a fundamental inquiry in trademark infringement cases is whether use of a mark causes consumer confusion as to the source of a good or service. So far, both companies have touted the Falcon Heavy achievement. But Spaceman itself does not clearly indicate one source over the other. Of course, the Roadster identifies Tesla as its source, but the rocket on which it is affixed designates SpaceX as the means for its position in space. Maybe that is enough of a distinction to make the mark part Tesla and part SpaceX.

I would like to believe that both companies’ CEO, Elon Musk, would think of Spaceman not as a symbol of either business, but rather a symbol of human achievement and what is to come. Indeed, both companies have grand visions for humanity. SpaceX’s mission is “to enable humans to become a spacefaring civilization and a multi-planet species.” Telsa is purposed on “accelerat[ing] the transition to a sustainable energy future.” To any other-worldly being, Spaceman itself identifies Earth and its people as its source. In this way, Spaceman is similar to other satellites within the solar system, which identify Earth as progenitor. Perhaps, then, it is fair to say that we all have a stake in the symbol. What do you think?

 

 

One of the biggest issues facing electric car manufacturers is how quiet they are.  So quiet in fact that 60 Minutes edited in an engine roar to its Tesla story.  The quiet can have dangerous consequences for pedestrians and others.   Riding my bike, I often listen for the sound of an engine roar near me before turning my head to see if it’s safe to move into the adjacent lane.

Tesla

Notwithstanding the electric car issue, some manufacturers are even adding sound to smaller engine vehicles in an effort to promote fuel economy.  I mean, who doesn’t like to rev up their engine a little bit?  Ford has even patented a method of generating engine noise during a period between “two successive ignition events of an internal combustible engine.”

fordenginenoise

So with this modification of engine noise disengaged from the car’s actual function, or an enhancement thereof, are we entering the era of cars with distinctive engine sounds as a trademark?   Historically, obtaining trademark protection for engine noises proven difficult.  Harley-Davidson tried to get one for their distinctive “potato”-like sound.  If you own a Harley, or if you’ve ever been to Harley Fest another Harley rally, you know that sound well.    Part of the issue with Harley’s application was that the sound mark was a function of its V-Twin design.  Unlike other fixed sounds like the NBC chimes, it also varied depending on the type of motorcycle, the way the rider revved the engine, and potentially even in the use of aftermarket parts.  But in the case of a sound applied to an electric car or as suggested by the Ford patent application, the particular sound may have distinctive qualities, would be fixed, and would not be purely a function of its design.  A user would likely be able to upload sounds so that it’s Prius sounded one day like an Audi R8 and another day like an early 20th century roadster.  If not available for trademark protection, the recorded sounds would certainly be eligible for copyright protection.

Keep listening for this trademark trend soon.

 

 

Aaron Keller, Managing Principal, Capsule

We do a lot of naming. When we started our firm over 15 years ago I was opposed to doing any naming at all; it has the distinct properties of being one of the hardest creative things you can do for a client and the least respected, hence least valued. Yet our friends at Byerly’s, one of our largest clients in the early Capsule years, said with a smart argument, “you can’t build the firm you’re building without doing naming.” Since that day we named our first international brand, a chair for Herman Miller called Setu – the Hindi name for bridge.

Now, we do a lot of naming and are always seeking more knowledge on how to make the process better. We’ve purchased and devoured almost every book with any reference to naming. Anything on naming is interesting to us, mainly because it is the most challenging creative effort to get a team of people to agree upon.

So when we see an article in The Economist titled, “Nine Billion company names” our interest is immediate and focused. And, we’re fans of The Economist because it is one of a short list of content distributors still putting out good meaty subject matter.

While the sentiment is right, the article has two huge flaws. One: the writer references Copyright law instead of Trademark law, which if you do any naming at all you know the difference. Two: the writer references Tesla as a name referencing a “unit for measuring the density of a magnetic flux” when in fact the Tesla name is a nod to a famous physicist, philosopher and engineer named Nikola Tesla. Two flaws in the article, yet we really, really wanted to like it. The broad points are important and right, but factual errors are troubling. Fact checking is an important piece in the world of journalism and we’d expect the highest standard at The Economist.

With those points aside, the important piece here is the challenge of naming and putting the right resources to such challenges. We would see this getting realigned each time we talk to clients who’ve been scared by naming.

Have you felt the pain of naming? Do you have scars to show for it? We’d love too hear stories of how challenging naming is if you’re willing to share.

– Derek Mathers, Business Development Manager, Worrell

3D printing has the potential to be a disruptive technology because it is the first human manufacturing technique that emulates nature by growing complex structures additively, using only the required material. 3D printing gives engineers the freedom to design without the constraints of a mold, and carries with it the ability to switch production lines instantly with a new file uploaded.

image 1

The current 3D printing market is comprised of many machines that have been marketed as “3D printers,” but do not truly print in three dimensions; rather, they repeat two-dimensional layers over-and-over again. This layer-by-layer process creates mechanical weaknesses in the parts, and takes hours to print even the smallest components. In addition, the cost of 3D-printable materials is prohibitively high, driven by the fact that many companies are making aggressive growth numbers through exceptionally high margins on proprietary material.

In order for 3D printing to become a meaningful option for mass production, printing speeds need to increase significantly, while maintaining accuracy. Carbon3D’s CLIP (Contiuous Liquid Interface Production) printers seek to fill all of these requirements gaps – CLIP uses a light projection system that continuously “grows” parts at 100x the rate of current technology, with much higher resolution.

Because CLIP uses a continuous process, instead of the more common layer-by-layer approach, it is able to directly grow parts instead of having to mechanically re-set its print nozzle after each layer. This continuous process also addresses the issue of strength since it makes parts that are mechanically similar to injection-molded parts.

image 2

In addition to its technology, Carbon3D also has an amazing staff. Joe DeSimone, the CEO and Co-Founder, is one of a handful of individuals who have been elected to all three branches of the National Academies. The team also includes Apple’s ex-VP of Worldwide Marketing (as Chief Marketing Officer) and Tesla’s ex-VP of Software and Electrical (as VP of Engineering). They have also been working closely with DuPont – as the fourth largest chemical manufacturer in the world, DuPont will be able to provide Carbon3D with materials that are significantly cheaper than the proprietary materials used in current 3DP machines.

Carbon3D is poised to up-end not only the 3D printing industry, but also manufacturing as we know it. Expect to see Carbon3D machines in hospitals, vehicles, and all over your television within the next couple of years, and prepare your business model for these new opportunities.

Last week, a press release announced that Ford would “Open[] [its] Portfolio of Patented Technologies to Competitors to Accelerate Industry-Wide Electrified Vehicle Development.”  Media outlets were quick to report that Ford was joining Tesla in opening its patent portfolio, referencing Tesla’s widely publicized promise last year not to enforce its patents.  But Ford’s announcement is not quite as revolutionary as many media sources would have us believe.

Tesla was heralded last year for announcing an open source plan for all of its patents (“All Our Patents are Belong to You”).  With its announcement, Tesla promised to allow anyone to freely use its technology in “good faith.”  Tesla’s purported goal was the “advancement of electric vehicle technology.”  Earlier this year, Toyota jumped on the bandwagon and announced at the 2015 Consumer Electronics Show that it would grant limited free licenses for several of its hydrogen fuel-cell technology patents.  With this apparent trend of automobile manufacturers giving away patented technology, it’s no wonder many assumed Ford’s press release signaled the same.

Below are a few of the early media responses likening Ford’s announcement to Tesla’s earlier move:

These and other headlines leave us with an impression that Ford is casting aside its greed-fueled patent rights in favor of a more communal approach for the betterment of all.  Unfortunately (or fortunately, depending on your take), it’s not true.  A closer look at Ford’s announcement reveals that the company is not at all following in Tesla’s patent strategy footsteps.  Instead, Ford is offering a fee-based licensing system, which is exactly the way many companies leverage their patented technology.  Citing lofty goals of innovation and industry-wide advancement, Ford is merely marketing the fact that it has electric vehicle patents available for licensing fees.  While it is perhaps a step forward that Ford is explicitly offering to license its electric vehicle technology, rather than keeping it entirely off limits from competitors, and the company suggested that fees will be relatively low, the move is nothing akin to Tesla’s open source plan.  If an unauthorized individual or company attempts to practice Ford’s patented electric vehicle technology, Ford will surely take action.

Much of the misconception in the media seems to stem from another false perception—that patented technology is secret.  It’s understandable, given how secretive companies often are when it comes to new tech.  But let’s be clear: patents are publicly available.  The American patent system was developed on the notion that in order to receive a patent, an inventor must tell the world exactly how his new invention works.  The very purpose of requiring a disclosure of the invention is to teach the world how to design around it, and thus promote innovation.  Issued patents and published patent applications are available for free from the U.S. Patent and Trademark Office.  They’re even searchable on Google.  Anyone, including Ford’s competitors, can already access Ford’s patents and published patent applications.  There may also be some confusion surrounding the difference between the patent document, which describes Ford’s patented technology (freely available) and the technology patented (Ford can exclude others from, or charge a license fee for, practicing its invention).  While a competitor cannot make, use, or sell the patented invention without a license, competitors are free to design around the patented invention, or build on the invention with non-obvious improvements.

Later headlines reported a more accurate depiction of the announcement:

Indeed, as Fortune Magazine’s Kirsten Korosec suggests, the most striking aspect of Ford’s announcement may be the very last line of the press release.  Slipped in almost as an afterthought, the announcement states that the automaker intends to hire 200 electrified vehicle engineers this year, signaling what may be a shifting focus for the company.

We often ask kids this question: “what do you want to be when you grow up?”  While my trajectory towards lawyering is true, my answer wasn’t always immediately “lawyer.”  I sought something that satisfied my passion for the creative, my critical eye, and my aptitude for math.  For a long time, whenever I answered that question, I said “car designer.”  I also wanted to be the inventor of the world’s first car based on renewable energy (watermelons to be exact).  Turns out we’re going to try electric, even though studies have shown that it’s actually less environmentally friendly than your gas guzzler (see here and here).

Every year, I make a pit stop at the Twin Cities Auto Show, where even something as seemingly mundane and trivial as the position and curves of a cupholder catches my eye.  It’s a look at the good, the bad and the ugly.  The good was nothing new (I’ll take the Aston Martin or that R8, thank you).  The bad was certainly new:

BMWi3

I’ve called it “the Pontiac Aztek of electric cars” – but it’s from a German automaker.  Yes, that is a BMW i3.  Absent any source indicia, would you recognize this car’s “unusual form factor” as being from BMW?  I suppose given it’s shape, you couldn’t lose it in a parking lot.

As Steve mentioned earlier this week, we have devoted a lot of “digital ink” to non-traditional trademark protection here at DuetsBlog, particularly to product configurations.  With a few exceptions (mostly domestic), car manufacturers haven’t devoted much towards non-traditional trademark filings.  A quick search for product configuration marks in class 12 reveals  grills, a Bugatti,  Ford’s shockingly basic coupe shape protection, the Prowler, and little else.  Despite its history of elegant design, BMW only owns non-traditional trademark filings for their grills (see for example here and here) and the Mini Cooper (which BMW owns).  Nothing for the overall shape of the car, or the back end design.   But, BMW is the applicant on over 900 design patent filings. 

As a patent and trademark attorney, my opinion is that the ideal strategy to protecting novel design is by first filing a design patent, which has a limited term of 14 years.  Then, once the product has been in the market for enough time to acquire distinctiveness (usually five years) that design patent  can be supplemented by seeking non-traditional trademark protection as a source-identifying trademark protected for renewable periods of 10 years.   Design patents and trademarks offer different enforcement options and remedies, and both should be part of an overall IP strategy.

It’s always seemed a little off the mark to me (pardon the pun) to call these non-traditional trademarks as protecting product configuration, which comes from the Latin term “to fashion after a pattern,” because what you are really protecting is your product differentiation.  The BMW i3  is certainly a differentiation — from its competitors and its history.

So, are you differentiating or are you configuring?

Last week was the North American International Auto Show in Detroit, one of the top trade shows in the automotive industry. The highlight of the show for car buffs was the new Ford GT, which I will try not to drool too much over its beauty and power. You can see below and hear for yourself.

If you have been reading at all about the industry, you may be aware of a perceived pivot by car manufacturers towards a collaborative approach among brands in developing and implementing new technology. First, there was Tesla’s claim to make its patents open source with Musk’s “All Our Patents Are Belong To You” blog post. Then Toyota at the Consumer Electronic Show offered to release its fuel cell patents in a similar manner.

But what we haven’t seen in awhile is a fight among car manufacturers over badges. This week CAR Magazine brought me just that – Audi and Fiat are fighting with one another over the Q2 and Q4 model names. As Aaron Keller pointed out in a post last year, sometimes it can be a little difficult to distinguish between two vehicles when their badges are removed.

German manufacturer Audi sells a line of Q-branded crossover vehicles including the Q3, Q5, Q7 (the Q7 starting around $48,300). Typically, in car badging, the smaller the number, the smaller the car relative to its fleet siblings. Other examples of this are the BMW 3-series, 5-series, 7-series; the Audi A4, A6, A8; and the Volvo S40, S60, S80. Of course the use of the Q badges is always with the four-ring logo, and an example of that use is shown here:

As consumers favor smaller utility vehicles over larger ones, brands have started to introduce smaller-numbered vehicles (for example, the BMW 1-series) to denote relative size in the fleet. So with that in mind, Audi wished to fill out its fleet with new, smaller concepts under the Q2 and Q4 badges.

Unfortunately for Audi, here Italian car manufacturer Fiat already has the Q2 registered as well as filings for the Q4 (including the stylized version shown below).

But Fiat’s own use of its Q-series marks poses questions…The Q2 and Q4 marks are used by different divisions of Fiat, which some may not recognize as actually being owned under the same umbrella. Q2 and Q4 have been used on Alfa Romeo hatchbacks such as the Alfa Romeo 159 sedan (about a $35,000 car when originally sold).

And Q4 is used on at least two models by Fiat-owned Maserati – the Ghibli S Q4 and the Quattroporte S Q4 ($106,900 base price)

For Fiat, its Qs distinguish not between sizes of vehicles but drivetrains – much like QUATTRO indicates an all-wheel drive vehicle in the Audi fleet. The Q2 designates a front wheel drivetrain, while the Q4 designates an all-wheel drivetrain.

But current use of Q-series badges is not limited to a German auto manufacturer and an Italian one. There’s also the Q- line of sedans (Q40, Q50, Q70, etc.) from Infiniti, a division of Japanese automaker Nissan.

Do you think there is a likelihood of confusion among consumers for an Audi Q2 and Q4 in its crossover fleet in view of Fiat’s use?

 

No, not that c-word.

The protection and enforcement of intellectual property rights involves a plethora of c-words:  copying, counterfeit, copyright, cease-and-desist, CIPO (the Canadian IP Office).   But the one I am referring to today is China.

As the world becomes more interconnected and the global economic impact of China has significantly increased, intellectual property rights holders and attorneys have recently become faced with, what some might call, “the China Problem.”  Trademark squatting in China has become as problematic for companies today as domain name squatting was for them in the 1990s at the beginning of the internet age.

 

Here are some recent “squatting” examples involving well-known international brands:

  • After Tesla launched in the US,  businessman Zhan Baosheng registered TESLA in China, as well as the Tesla logo and a Chinese version of the name, and later sued the company for trademark infringement after Elon Musk’s company began doing business in China.  The dispute has since settled for unspecified terms, other than it seems Zhan agreed to allow the Chinese government to cancel his registrations.

 

Compounding the issues with squatting and the attention the matters above have gotten from national media, trademark owners often receive solicitation scam e-mails from alleged Chinese domain name registrars suggesting that someone is interested in registering the recipient’s trademark or business name as a domain name in that region in an effort to entice the recipient into signing up for various “services” of protection.

Certainly there’s an element of trademark “squatting” that is a function of China’s so-called “copycat culture,” where imitation is a form of mastery or flattery.  But what isn’t flattering has been the country’s reticence to assist international brands in overcoming these and other hurdles to registration.  The Chinese government has recently made strides by requiring applications to be filed in “good faith.”  Effective May 1, 2014, the amended law prohibits trademark filings where the agent knows or should know that the client is squatting, or is knowingly made to pre-emptively register a mark already used by another person that enjoys a certain reputation in China.  Theoretically, it seems that the onus is on the agent regarding knowledge of squatting, not on whether the client had knowledge that it was squatting on another’s rights, unless the applicant has some business relationship with the trademark owner.

While many companies often make economic considerations to put off filing in foreign countries until they might manufacture or sell patented or trademarked products, China presents some concerns with holding off.  China has a “first to file” trademark system, and with U.S. trademark data publicly available, it is easy for a squatter to apply for protection for new marks of U.S. companies in China – seemingly even under the new “bad faith” rules, but we’ll see how those are applied.  This is also how those pesky solicitation emails and notices begin.

Although I’m focused on China here, it’s likewise important for companies to be first to file for their trademarks in other foreign jurisdictions, especially when working with a distributor in a foreign country like Russia, Iran, India, or some Latin and South American countries.  These distributors often file for trademark protection on their own, without notice to the trademark owner.  In these situations, it’s critical for the trademark owner to file in these countries first or to ensure in their distribution agreements that the distributor agrees to assign any trademark filing to the company.  If they don’t and they later decide to file for trademark registration, their application may be refused once they later find out that the cited registration is owned by a distributor of the company’s products.  This adds to the cost of obtaining a registration, which could have been avoided at the outset.  Foreign filings today are simply the cost of doing business in a global economy.

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.