That is the underlying question the recent trademark rights enforcement action from Ford [News Report], the source of the “F150” pickup truck, against Ferrari, the source of the “F150” F1 car (since 1975). Ferrari’s F1 cars have always been numbered progressively, 2010’s car was the “F40”, but this year is the 150th anniversary of Italy’s re-unification, so the full name of the car is “Ferrari F150th Italia” [Ferrari Statement]
The USPTO has been reluctant to grant trademark rights for some less well-known automotive model designations. The TTAB Blog reported in 2009, for example, that Acura failed in getting “Acura TL” registered as a mark in part because, in commerce (on the back of those cars), the make and the model designations do not appear “next” to each other (“Acura” is on the left side of the trunk lid, “TL” on the right side). However, the purpose of trademark law is to protect consumers from confusing one source of goods/services from others and, by the same token, prevent some commercial interest to “ride the coat tails” of another. So, how is the 2011 season Ferrari Formula 1 car, which is not sold to anyone, going to confuse any consumers of the Ford pick-up truck?
F150 badges from the complaint
Going over the trademark dilution, infringement, false designation of origin, and cyberpiracy complaint filed yesterday (February 9, 2011) before the US District Court (Eastern District of Michigan Case: 4:11-cv-10518-MAG-PJK) it is striking how the key claim reads:
Ferrari has misappropriated the F-150® trademark in naming its new racing vehicle the “F150” in order to capitalize on and profit from the substantial goodwill that Ford has developed in the F-150® trademark, and in order to trade off of Ford’s famous and winning trademark…Although Ferrari asserts that the naming of the “F150” is to honor the one hundred and fiftieth anniversary of the unification of Italy, the objective evidence demonstrates that Ferrari is seeking to misappropriate the substantial goodwill that Ford has developed in the famous F-150® trademark.
The Tough F-150® and the elitist F150th Italia
Ford also seems to be concerned not simply with the potential competition between the truck and the F1 car, but points repeatedly to the F-150® apparel merchandising registration. Furthermore, the indignation reaches its peak as:
“…the elitist Ferrari “F150” tarnishes the BUILT FORD TOUGH® F-150® brand.“
F1 fans make light of the situation, and NASCAR Camping World Truck Series fans can be offended over the tarnishment, the suit is not without its interesting points. First of all, trademark owners do have to police their brands and show they do exercise control over the use of their marks and litigate infringement. But, although it is early to know how this case will be resolved, it could be enlightening to examine how courts typically determine the key concept of the “likelihood of confusion.”
The most frequently used checklist of factors is as follows:
- Whether or not the goods or services using the same mark compete with one another. – In this case the autos do not compete, and only at some abstract level merchandising and licensed apparel are substitutes as apparel per se, but not as the distinctive branding devices for their consumers (Ford acknowledges the elitist/tough distinction).
- Whether or not the goods or services are being marketed through the same channels of distribution. – They are clearly not using the same channels for the vehicles, and the merchandise sales occur at different events. However, the ecommerce brings a potentially confusing channel, if all you are searching for is an F-150 cap, your search engine may accidentally direct you to the www.ferrarif150.com website and lead to a purchase of the wrong brand. That is where Ford’s claim of cyberpiracy comes in.
- Whether or not the alleged infringer intended to trade on the plaintiff’s business good will. – This is literally Ford’s initial claim, but it is hard to argue that the “tough” brand image has created such a strong following for anything labeled F-150 that truckers will be led to replace their blue oval gear with red prancing horse apparel.
- Whether the marks are similar in appearance, phonetic sound, or meaning. – Here is the strongest claim for Ford, except for meaning as it could lead to a survey duel in court if you ask “people-on-the-street” what F150 means to them.
- How careful the consumer is likely to be prior to purchasing. – Buyer sophistication and disparity of price points clearly would not support a confusion argument. Only a handful of F1 collectors will ever buy a Ferrari F1 car, and truck buyers know if they are seeing a tough truck or a wimpy and elitist set of wheels. Again, the battle is only possible among merchandising and t-shirts that only use the F150 designation, not any imagery of the cars, the brand colors, or the merchandise materials themselves.
- Whether or not the companies are accessing overlapping customer bases. – There will be plenty of material as to why the likelihood of Ferrari F1 fans being the core Ford F150 demographic is low to negligible.
- The legal strength of each of the marks. – Again, while it is likely that a majority of truck consumers know the basic Ford pickup directly as an “F-150®”, most fans will still refer to the “Ferrari” car and only refer to the F150 designation in comparisons with prior models.
- Finally, whether there has been any actual confusion. This is obviously going to be fact based but, again, the smoking gun will be that a trucker looking for an F-150® cap would go to the ferrari150.com site to order it (Except the site has been parked while the suit is pending).
We await with interest the response from Ferrari, but this is looking more and more like a quick settlement. But, who knows, Ford may still resent Commendatore Ferrari not wanting to sell the iconic brand back in the mid-sixties (which initially led to Ford’s development of the Ford GT40 to win at Le Mans).
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