In the world of trademark infringement, it looks like size trumps speed.
On January 25, Italian sports car manufacturer Ferrari unveiled the design for its new Formula 1 race car. To commemorate the 150th anniversary of the unification of Italy, Ferrari named its new car the Ferrari F150. Sounds reasonable enough, right? Not to the Ford Motor Company, which sued Ferrari in Federal Court in Detroit to make sure that “F-150” remains synonymous with trucks.
As Ford routinely mentions in its commercials, the Ford F-Series pickups, “have been America’s best-selling trucks for 34 years and the best-selling vehicle in the U.S. for 29 years.” In its complaint, Ford alleged that Ferrari infringed upon the trademark of its popular Ford F-150 pickup truck. Ford claimed that Ferrari’s logo for the car and its name, “F150,” were similar to Ford’s F-150 name and logo (though Ford’s has a “-“ between the “F” and the “1”). “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.”
According to its complaint, Ford obtained trademark protection for F-150 in 1995. The Detroit automaker asked the court to stop Ferrari form using “F150” and sought $100,000 worth of damages under the Anticybersquatting Consumer Protection Act. That claim was supported by evidence that Ferrari created the website www.ferrarif150.com (now disabled), which Ford alleged represented a bad faith intent to profit from the goodwill of the Ford F-150 trademark using a “confusingly similar or dilutive” domain name, which is prohibited by the Act.
In response to Ford’s complaint, Ferrari argued that it was very unlikely anyone would confuse its sleek, one-seat F1 series racecar with the big, rugged, “best-in-class payload” and “best-in-class towing” pickup truck. Ford spokeswoman responded, “We’re not concerned that the two vehicles would be confused. The motive behind this action was about the brand being diluted.”
In response to Ford’s allegations, Ferrari, which is owned by Fiat Group (also the controlling shareholder of Chrysler, Ford’s cross-town rival), agreed to change the logo and name of its new car from F150 to “Ferrari F150th Italia,” which it claimed was the official name of the car from the beginning. ”To further prove it is acting in good faith … Ferrari has decided that in all areas of operation, the abbreviated version will be replaced at all times with the full version, Ferrari F150th Italia.”
While the issue between Ford and Ferrari seems to be about Ford protecting its trucks, it is worth remembering that Ford actually built an F-150 racing vehicle for the Baja 1000. Additionally, Ferrari has been rumored to be designing an “off-road,” four-wheel drive luxury SUV.
According to Ford, as soon as Ferrari announced the “F150” name, Ford asked it to change the name but did not receive a response, thus forcing Ford to file the complaint. Does this sound to anyone else like a school yard “triple dog dare you” that went a step too far? Although Ford has every right to protect its coveted F-150 trademark from becoming generic and being canceled, based on its recent recall of over 150,000 of its F-150 trucks, Ford’s leadership might want to devote more resources to quality control and spend less time worrying about racecars.
*Rob Abb is a second-year law student at Wake Forest University School of Law and is President of the International Law Society. He holds a Bachelor of Arts and Science in Political Science and Asian Studies from the University of Michigan. Upon graduation in 2012, Mr. Abb plans to practice international law.