With Ford’s “Model E” still firmly rooted in its trademark rights, it seems Tesla Motors has had to make some important intellectual property decisions as it prepares itself for Model 3 branding ahead of what will be sold to the public. Namely, it looks like they’ve given up the E-based “3” design in favor of the standard character mark “Model 3”.
Teslarati’s legal rep. uncovered records at the U.S. Patent & Trademark Office (USPTO) showing that Tesla originally filed for the E-styled design mark on March 31, 2016, which was then granted allowance on October 4, 2016. In order to fully register the mark, allowing the ® symbol to be used, Tesla must submit a statement and proof of the use of the mark in commerce within six months of allowance – April 4, 2017.
There are many ways to prove that Tesla is using the mark commercially, but the Model 3 page on Tesla’s website has recently stopped using the design on the upcoming vehicle in favor of the standard characters “Model 3”. This likely means that Tesla will abandon the use of the E-based design on the vehicle in favor of the number 3.
Tesla also holds the rights for the “Model 3” mark. It received its USPTO allowance on July 14, 2015 and has since filed three extensions to submit a statement and proof of commercial use. The current extension was made on January 13, 2017 and will expire in July of this year. The timing of the extension filing and the website change could be a signal that the final event for “Model 3” will take place around the 1-year anniversary for last year’s March 31 debut.
One can also stretch and speculate that Tesla may showcase a ride-sharing concept using the Model 3 in a “commercial” setting in its anticipated upcoming event.
Using the “Model 3” mark on anything being commercially produced under the category filed (i.e., “Automobiles and structural parts therefor”) will satisfy the USPTO requirements and give Tesla full rights to the mark. Does this explain the sudden branding change? Tesla may only extend the deadline one more year before it will be considered abandoned. The E-stylized mark, however, still has another two years’ worth of extensions to use.
Tesla’s initial branding goal for the vehicle was to use “Model E” to complete a tongue-in-cheek S-E-X, when combining the names of its “Model S” and “Model X” vehicle. Unfortunately, Ford Motor Company was already using a “Model E” mark, and filed its mark in December of 2013 to secure its full trademark rights. Tesla had actually filed its mark first (August 2013), but the law becomes complicated if someone else is using the mark even without a formal registration.
According to CEO Elon Musk during a 2014 shareholders meeting, Ford threatened to sue Tesla if they pursued their mark, and they abandoned it in April 2014. The E-styled mark was a way around this hiccup in order to maintain the “SEX” combination.
We’ve included a copy of USPTO acceptance of Tesla’s filed extension for use of “Model 3″.