Family planning

Here’s an intriguing item I picked up from the Intellectual Property News blog, which is run by Mansour & Asssociates*:

Two of the world’s most well known car manufacturers are going head to head over the trademark right to the name “Model E.” Records on file with the United States Patent and Trademark Office (USPTO) show that on August 5, 2013, Tesla Motors, Inc. filed a trademark application for “Model E,” in several classes of goods, including that for “Automobiles and structural parts therefor.” This was enough to sufficiently stir up Ford’s attorneys and Ford, in turn, filed its own application for the same name on December 3, 2013.

While Ford never actually made a Model E automobile, they may have a viable claim to a historical right in the name, due to its classic formula of naming cars “Model” with a single letter following. Ford historically rolled out the Model T in 1908, which was the first car to ever be produced for the masses by assembly line. Besides the most famous Model T, Ford also produced the Models A, B, C, F, K, N, R, S, T and Y between the years 1903 and 1938.

Any color you want, as long as it's back

MODEL T trademark:  In any color you want, as long as it’s back

Tesla may or may not quite be in the category of “the world’s most well known car manufacturers, but on what basis do we say that the better-known Ford Motor Company is any more entitled to claim MODEL E as as a trademark than Tesla is?

If it isn’t obvious from the blog item, it’s obvious from the application by Tesla that its application was filed on an intent-to-use (ITU) basis.  As was Ford’s.  Mandour’s description of Ford’s likely argument is probably correct:  “MODEL E?  We’re the Model-Alphabet-Letter guys here!”

So let’s unpack that.  It would seem that his argument can actually go one of two ways.  One, I think, is a loser.  One, by contrast, is probably Ford’s present focus, and it’s a little different from the approach Mansour at least seems to suggest.

First approach:  MODEL E is an obvious member, or future member, of the Ford Motor Company “MODEL X” “family of marks.”  Thus, as Mansour says, “Besides the most famous Model T, Ford also produced the Models A, B, C, F, K, N, R, S, T and Y between the years 1903 and 1938.”  So E fits right in there, and is arguably as good a fit for the family-of-marks concept as you can imagine.

The problem with that it’s not such a great idea to be “in the family way” at the PTO.  That’s not just because I believe that it awards a forbidden “right in gross” to big trademark owners, but because it is hard to prove to the TTAB’s satisfaction (and if this isn’t resolved between the two companies, it will certainly end up in the TTAB).  John Welch wrote about this as far back as 2005:

In [] J&J Snack Foods [Corp. v. McDonald's Corp., 18 USPQ2d 1889 (Fed. Cir. 1991)] case, McDonald’s successfully opposed applications to register McDUGAL McPRETZEL and McPRETZEL in stylized forms for soft frozen pretzels.  . . . The CAFC . . . agreed with the Board that McDonald’s owns a family of “Mc” marks, and that the public is likely to view J&J’s marks as part of that family.

The J&J Snack Foods case, however, is not very informative as to what one must prove to establish a “family of marks.” McDonald’s extensively promoted its various marks using the “Mc” formative, and the CAFC noted McDonald’s 1987 annual sales of more than $14 billion dollars. But there apparently was no evidence that McDonald’s promoted the “Mc” formative by itself, or utilized any so-called “look for” advertising that would call attention to the “Mc” formative. Thus did McDonald’s do anything more than use a series of similar marks? In Virgin [Enterprises Ltd. v. Kay Guitar Co., Opposition No. 91154392 (November 23, 2004)], the Board said that mere use of “a series of similar marks” was not enough to establish a family. Why was it enough for McDonald’s in the J&J Snack case?

A rare exception to the Board’s general practice of rejection of the “family of marks” claim is found in Miss Universe L.P. v. Rainbow Productions and Publications, Inc., Opposition No.. 91122676 (November 10, 2004) [not citable]. The Board ruled that Opposer Miss Universe owns a family of MISS . . . USA marks for beauty pageants, but the decision provides virtually no analysis as to how the Board reached that ruling. [In any case the Board made no apparent use of the "family of marks" finding in reaching its decision.] . . .

In any case, the establishment of a “family of marks” claim remains a hit-or-miss proposition for opposers — mostly miss.

Since then, yes, there have been some hits — see here and here – but, it seems, more misses.  There are lots of weaknesses in such an approach for Ford and MODEL E.  One problem is that the “family name,” i.e., “model,” is about as bad a hill to die on for trademark purposes as you can imagine when describing, uh, the, model of a car.  A descriptive family monicker is entitled to a more limited scope of protection than the common element of an arbitrary mark. So that’s one bad thing for Ford, especially considering that there’s already a Tesla Model S, for example.

There are other considerations on the fine point of the “family of marks” aspect too, including the evidence of use on which the TTAB did base a finding that there was a family of “HOG” marks for power-operated outdoor equipment in another case reported by John Welch (I’m shooting for a record of links to the TTABlog today!  Why ever read cases?).  In comparison, the facts regarding MODEL T’s “family” would not work out so well for Ford.

But Ford has another approach in mind, I think, and the reason is hinted at by something I wrote in passing above:  There is already a Tesla Model S.  And Ford didn’t make a peep over it on “family of marks” grounds.  Is that bad for Ford?

No, I think it’s good for Ford, because its best argument isn’t the family of marks one, but the LIKELIHOOD OF CONFUSION one:  The likelihood of confusion between MODEL T and MODEL E.  Because notwithstanding the descriptive nature of the word “model,” the two marks do, after all, look alike, and critically they sound very much alike; essentially identical, which of course is a relevant component for the LIKELIHOOD OF CONFUSION analysis.

So unlike the car designated Model S by Tesla, its MODEL E, For might argue — family connections notwithstanding — is likely to be confused with its MODEL T trademark for cars.

Only one problem.

What Ford MODEL T trademark for cars?

Ford stopped making Model T cars in 1927.

That’s abandonment, my friend!  Over 80 years of it.

Well, wait.  Isn’t there a concept that some trademarks are so great, so deeply-ingrained in our consciousness, that they retain “residual goodwill” even after, well, forever?

No — even if some people say there is, there isn’t.  Talk about rights in gross!

Ah, this could be a problem for Ford, no?

Odd thing is, Ford had a registration for MODEL T — registration number 2724107, for, among many things, “motor vehicles.”  That sprung from a very interesting application, because it was filed … in 2001, and the registration itself issued in 2003.

That’s way after 1927!

The application is quite unusual, if only because the specimens are pretty darn old.  Also, interestingly enough — and, in theory, relevant here — in response to pushback from Ford’s attorney, the PTO dropped its original insistence that Ford disclaim the word “model”!

Was Ford really using the mark MODEL T for motor vehicles in 2001?  Did the PTO do some of its legendary outside-the-four-corners-of-the-application research to check that out?  Or is the fact that that it wasn’t in use as a mark for automobiles really the reason the mark was cancelled in 2010 on the ground that “registrant did not file an acceptable declaration [of continued use] under Section 8“?  I’d love to know what happened in terms of Ford’s “use” of its ancient, and lapsed, trademark between 2001 and 2008, when Ford obviously made the conscious and proper decision not to file what would have been a false Section 8 affidavit of continued use.

But wait!  What did the original blog post say Ford did in response to the Tesla ITU filing?  “This was enough to sufficiently stir up Ford’s attorneys and Ford, in turn, filed its own application for the same name [MODEL E] on December 3, 2013.”

Well guess what else Ford did — in October of 2013?  Why, it got an email from the PTO that it had been granted a shiny new registration for its old MODEL T trademark as well!  That was in response to Ford’s application serial number 85944856, which was filed, as it happens, in May of 2013, well before Tesla filed its MODEL E application, but probably not (I’m just guessing) before Ford heard about Tesla’s Model E plans.

The new Ford MODEL T application is interesting, too.  For one, it’s an ITU application.  That tells us a couple of things.  One is that Ford is not claiming, in the PTO at least, to be using MODEL T as a trademark.  That would seem to be a hurdle for the company to overcome in challenging Tesla’s MODEL E mark on the grounds of LIKELIHOOD OF CONFUSION — i.e., an admission that it doesn’t have a MODEL T car trademark at all any more.

Another possibly unhelpful bit:  Ford had to disclaim the word “model” this time.

The goods and services?  “Automobiles.”  Really?  Ford intends to use the mark MODEL T for automobiles in the really near future?

That would be interesting.  Keep in mind, of course, that I didn’t say Ford doesn’t have a MODEL T trademark registration.  I said it doesn’t have one for cars!  But it does have one – 1888592 — for toy cars!

And it has another one – 1947553 — for miscellaneous, non-secondary-meaning-generating garbage!  And it has a third one, very much alive, for more of the same, that being its famous Model Registration 2037402.**

And now — cars!  Who knew!

Plus Ford will, it has told the PTO under oath, be rolling out a Model E really soon too.

It’s hard to think otherwise.  For one thing, a lack of bona fide intent to use a mark filed under section 1(b) is very, very bad.  Moreover, its application 85944856 for MODEL T automobiles, as I said above, does not enhance its position with respect to a claim that it has an extant MODEL T mark for automobiles that Tesla’s MODEL E trademark would be confused with.  Ford’s May 2013 application arguably harms that position.  So presumably Ford, which has certainly been known to resurrect nameplates, simply plans to resurrect the greatest of them all in the near future, and that application has nothing to do with Tesla’s plans.

After all, it’s not as if Ford is going to oppose Tesla’s application — and it is opposing, presumably, seeing as how Ford requested and received an extension of time to oppose in early January 2014 — on dilution grounds.  How could it?  Ford’s only existing trademark registrations for MODEL T are for toy cars and promotional garbage.  None of those marks has the requisite fame, if they have any goodwill at all (registration notwithstanding) on which to base a federal dilution attack on registration.

And the Model E application by Ford?  That’s a little harder to figure out, no matter how naive we pretend to be.  I mean, they said they’re going to use it, right?  For cars?  (According to some, they’ve used it before.)  So, that should be interesting too, considering that another company has the same intention.  Tesla, that is.  I wonder how Ford is going to do that!

I said there was interesting stuff going on here, but that doesn’t mean I know even half of it.  This is just the part poking above the water, and, as I have to remind readers avid enough to follow me this far, this is just the extent to which I’m willing to go for free on something like this.

And, yes, this is another one of those blog posts that I thought would be relatively simple (“is this a family of marks strategy?”) and got really complicated by the facts, physical and juridical, that just could not be ignored!  (Unlike today’s to-do list.)  Well, at least not by me.

Let me know if you hear anything more about where this goes.  After this, I’m the model of exhaustion on this topic.

 –

*Actually, when you click there, then it says it’s the “Orange County Trademark Attorney® Blog,” which is Justia’s idea of brilliant SEO consulting and, evidently, law firm branding.  But bravo above all to the PTO for issuing that registration!

** The first one, 1947553, is for those sought-after MODEL T “[d]esk sets, paper cutters, decals, letter openers, gift wrapping paper, note pad cubes, business card holders, automotive history books, children’s activity books, laminated paper tags, paper luggage ID tags, telephone indices, desk folders, paperweights, plastic bags for merchandise packaging, wall calendars, pencils, pens, markers, playing cards, cook books, almanacs, lithographic prints, checkbook covers and postcards.”  Registration number 2037402 is for “key fobs and rings not made of metal [, or non-metal license plates, non-metal money clips, hand-held and wall mirrors, desk ornaments made of bone, ivory, plaster, plastic, wax and wood,] plaques [, stools, seat cushions, portable chairs, pillows, non-metal clamps, plastic flags.”

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Author:Ron Coleman

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