The real cost of the Ford v. Ferrari F150 lawsuit

This year, as a tribute to the 150 years since the unification of Italy, Ferrari named its famed F-1 racer the Ferrari F150.  The Ford Motor Company, afraid that consumers would confuse a Ford F-150 Truck with that of the Italian F-1 race car, sued Ferrari in Federal District Court in Michigan in January, 2011.  According to the complaint, Ford alleges trademark dilution, trademark infringement, false designation of origin, and cyber piracy under the Lanham Act (15 U.S.C. § 1051 et seq.), including the amendment to the Lanham Act known as the Anticybersquatting Consumer Protection Act.  http://www.scribd.com/doc/48577431/Ford-v-Ferrari-Complaint.  Not a small affair for the American car and truck giant Ford, who manufactures cars for the blue collar automobile market and trucks for the working class and farm communities.  Ferrari must have been surprised when it read that “Ferrari‟s wrongful use of the mark “F150” dilutes, blurs, tarnishes, and whittles away the distinctiveness of the F-150® trademark.”  See the side by side comparison here or visit the link to the original article below.

http://money.cnn.com/2011/02/10/autos/ford_ferrari_f150/index.htm

More than just brand confusion between truck and car caused the battle over the F150 brand on t-shirts, key rings, models and a bunch of other stuff that is apparently worth a lot of money to Ford as well as the registration name of the www.ferrarif150.com web site.  Ford wants to stop Ferrari from using that web site due to the alleged infringement over the F150 mark.  This is not the first spat between Ford and Ferrari.  You can read about the Ford Ferrari rivalry here.  http://www.automobilemag.com/features/racing/0909_henry_ford_ii_vs_enzo_ferrari_great_rivalries/index.html.

While the ink on the complaint is barely dry, the lawsuit has apparently been settled.  Reuters reports that in less than a month, a Ford spokesperson claimed an amicable resolution to Ford’s claim.  http://www.reuters.com/article/2011/03/04/ferrari-ford-lawsuit-idUSN0421530920110304.  Although I could debate the use of the word “amicable” after being served what amounts to a multi-million dollar lawsuit, that is not the focus of my discussion here.  Ferrari agreed to change the name of its F1 racer to Ferrari 150° Italia.  http://ferrari150italia.ferrari.com/app.html#/en/news/1.

My concern is that while Ford believes it may have won this battle since Ferrari changed its F150 mark for the settlement, Ford may have losses in the public relations arena that it never anticipated.  The people who hear this story will never really know the details of this lawsuit.  They will never dissect the nuances of trademark dilution of a famous name, the legal standards for trademark infringement or even make sense of what constitutes cyberpiracy.  All they will talk about at the office, home or at the local pub is that Ford sued Ferrari over the F150 mark because someone might think a Ferrari F-1 racer might be confused with a Ford truck.  That sounds ridiculous just writing that sentence.  Let’s see, Ford makes trucks for farmers to move bales of hay around, workers from every walk of life move roofing materials, paint, construction materials, etc…and the guy who wants the image of being a tough guy driving a truck.  Compare that with an F-1 racer which is only sold to about 30 international racing teams each year whose drivers are considered the best in the world, who drive at speeds over 200 mph on a racetrack specifically designed for F-1 race cars.  The two are bi-polar to each other.  The only thing they have in common is that they sit in the same product category at the USPTO.

As an attorney who focuses his practice on brand protection, it is key to use trademark laws in the US and internationally as a powerful tool in which to protect a product’s brand.  In asserting a product’s trademark against another competing mark, it is important to consider the effect a challenge will have on the public’s image of your brand.  The big picture goal is to create a brand that has good will and a favorable opinion by consumers of your product.  After all, it is the consumer of your product that will make or break your existence.  In the case of Ford v. Ferrari, a big portion of Ford’s consumer market is the individual consumer who will never take the time to understand the details of Ford’s suit.  Ferrari has a small market of professional racing teams who purchase an F1 racer for reasons other than its sub-name distinction.

Ultimately, people will wonder why Ford would do such a thing as to sue Ferrari over a name for vehicles that are dramatically different.  In a recent internet poll, one website asked whether they thought Ford was justified in its lawsuit or whether it was being petty.  Of the 4000 plus people who voted over 66% at the time of this posting found the lawsuit petty.  http://www.theage.com.au/polls/drive/was-ford-right-to-sue-ferrari-20110211-1ap4x.html.  These are the people more likely to buy a Ford product than the small number of purchasers of Ferrari F1 race cars.  While not a scientific poll, it highlights the point that while Ford may have won the battle over the F150 mark, it may have lost the public relations war.  Although Ford settled with Ferrari, the F150 lawsuit may have hurt Ford’s brand among its consumer base far more than expected and little more than a modicum of brand protection was even achieved.

Disclaimer: The discussion here is commentary by the author and does not constitute legal advice. 

Copyright 2011- DeGeorge Law LLC  www.degeorgelaw.com

Published byTimothy L. DeGeorge, Esq.

Tim DeGeorge, Esq. is an attorney focusing on privacy, media, trademark, copyright, technology, art and advertising law. A graduate of the S.I. Newhouse School of Public Communications at Syracuse University, Syracuse, New York and he received his Juris Doctor from the University of Denver, Sturm College of Law, Denver, Colorado. Mr. DeGeorge is licensed to practice law in the states of New York, Florida and Colorado, USA. Copyright DeGeorge Law LLC.

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