Sure doesn't look like a Tesla could be confused for Ford's classic working man's car. Actually Tesla's Roadster is shown since the Model E - if that is what it is finally called - isn't in production yet. That hasn't stopped the trademark for its upcoming vehicle from being the subject of controversy however ...

To view the image, click here.

As previously reported, Tesla seems to have a problem picking names that aren't already used by others or aren't similar to other marks used a long time ago (talking about you, Model T). Tesla is similar to Apple in this regard which unveiled its iPhone a few y ears back without having clear title to the mark over Cisco, its owner at the time.

To view the image, click here.

Unlike the smart phone maker, Tesla's trademark application for Model E appears to have passed through the US Trademark Office without difficulty , but Tesla still hit something along the way which resulted in the trademark application running into a ditch and being withdrawn.

That thing that Tesla ran head into was likely FORD. The Detroit automaker had expressed concern with Tesla's mark during an opposition time period which is provided after approval by the Trademark Office of any trademark. There is no record that an actual opposition was pursued. Such an opposition is an administrative proceeding in which someone is allowed to ex press opposition to the registration of a mark and to present arguments why a trademark applicant should not be granted a particular trademark registration. In this case, the potential administrative dispute never got off the ground and we are left with a mystery as to why Tesla stopped pursuing the use of MODEL E for its upcoming mass production electric vehicle.

For an entity to have a right to oppose a mark in a proceeding before the Trademark Office, such an entity must have some kind of interest in the mark. For example, even if a company has not pursued federal registration for a particular term, the company may have local geographic use of a mark or may have used the mark in commerce in the past (e.g., Ford for MODEL T), while hav ing a good reason why such use has been suspended coupled with an intent to recommence such use. Further, one could have rights in a mark if he was using the mark in commerce for related (but not the ex act same) goods. Also, a mark could be so famous such that even if the goods for a new trademark were unrelated they would cause a likelihood of confusion by the registration of the new mark. Some of these arguments could be made by Ford but they are by no means a slam dunk, particularly when Telsa could likely contest any allegations by Ford with equal vigor and resources.

Given that it's been awhile (about 1 00 y ears) since mass-production of the MODEL T, we are also left to wonder what Ford used in its negotiations with Tesla to cause the Silicon Valley automotive upstart to abandon its trademark application for MODEL E. Ford does continue to use the mark, MODEL T, for novelty type toys and other products, but this is still a far cry from causing a likelihood of confusion relative to be indicated marks for actual automobiles, particularly considering the word MODEL is a relatively vague and generic term while the letters T and E can be clearly differentiated by most of us without being confused.

Given the nature of similar such disputes, we can guess that Ford and Tesla negotiated relative to Ford's rights to this mark thereby avoiding the need for an actual opposition proceeding.

In an interesting twist, FORD has also since filed a new trademark application for MODEL T for automobiles, which deepens the my stery a bit more. Would the new MODEL T be a pioneer like the old one ... but this time with electric underpinnings?

Also, Ford has filed trademark applications for MODEL E, but these applications were filed after those of Tesla - meaning that Tesla, the first filer for the trademark, all else being equal, would normally be entitled to the trademark registration. This potential rejection of Ford's MODEL E applications over Tesla's marks is now moot as Tesla expressly abandoned its marks, i.e., told the Trademark Office that it is no longer interested in registering them.

Given that Ford's application for MODEL E was filed after that of Tesla (and the first to use or file usually wins), and there is no indication of use of this mark in commerce by any one, it is likely that a deal was struck between these two companies such the Tessa would not use MODEL E and perhaps that Ford will use the mark in the future ...

In meantime we will wait and see what Ford does and look forward to seeing if Tesla has better luck picking the next moniker for the MODEL E...