Ford Motor Co. v. Ford's Garage Venture LLC

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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: Filing date:

ESTTA584972 01/31/2014

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Notice of Opposition
Notice is hereby given that the following party opposes registration of the indicated application.

Opposer Information
Name Granted to Date of previous extension Address FORD MOTOR COMPANY 02/02/2014

ONE AMERICAN ROAD DEARBORN, MI 48126 UNITED STATES Elizabeth F. Janda BROOKS KUSHMAN P.C. 1000 Town Center, 22nd Floor Southfield, MI 48075 UNITED STATES [email protected],[email protected],[email protected] .com Phone:248-358-4499

Attorney information

Applicant Information
Application No Opposition Filing Date Applicant 85882643 01/31/2014 Ford's Garage Venture LLC c/o Whitelaw Legal Group Naples, FL 34103 GABON Publication date Opposition Period Ends 08/06/2013 02/02/2014

Goods/Services Affected by Opposition
Class 025. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Clothing, namely, shirts, hats, jackets, shorts, pants and skirts Class 043. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: Restaurant services; bar services

Grounds for Opposition
False suggestion of a connection Priority and likelihood of confusion Dilution Trademark Act section 2(a) Trademark Act section 2(d) Trademark Act section 43(c)

Marks Cited by Opposer as Basis for Opposition
U.S. Registration No. 74530 Application Date 03/26/1909

Registration Date Word Mark Design Mark

07/20/1909 FORD

Foreign Priority Date

NONE

Description of Mark Goods/Services

NONE Class 012. First use: First Use: 1895/02/15 First Use In Commerce: 1895/02/15 AUTOMOBILES AND THEIR PARTS 643185 03/26/1957 FORD NONE Class 012. First use: First Use: 1895/02/15 First Use In Commerce: 1895/02/15 PASSENGER CARS AND TRUCKS 115500 02/20/1917 FORD Application Date Foreign Priority Date 05/28/1915 NONE Application Date Foreign Priority Date 02/16/1956 NONE

U.S. Registration No. Registration Date Word Mark Design Mark Description of Mark Goods/Services

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class U021 (International Class 007, 011, 012, 009). First use: First Use: 1895/02/15 First Use In Commerce: 1895/02/15 ELECTRICAL SPARKING AND TIMING APPARATUS, [ MAGNETOS, ]

GENERATORS, SPARK-COILS, CONDENSERS, BATTERIES, AND ELECTRICAL IGNITION AND LIGHTING DEVICES U.S. Registration No. Registration Date Word Mark Design Mark 257500 06/11/1929 FORD Application Date Foreign Priority Date 08/03/1928 NONE

Description of Mark Goods/Services

NONE Class U021 (International Class 007, 009, 011, 012, 015). First use: First Use: 1909/00/00 First Use In Commerce: 1909/00/00 SPARK PLUGS, ELECTRIC SWITCHES, ELECTRIC STARTER DRIVING MECHANISM, STARTER MOTORS, ELECTRIC WIRES AND CABLES, DISTRIBUTORS, COMMUTATORS, ELECTRIC CUT-OUTS, GENERATORS, ELECTRIC HORNS, ELECTRIC LAMPSAND BULBS, ELECTRIC-LIGHT EMERGENCY KITS, DASH LIGHTS, BATTERIES, COILS, COIL UNITS, [ SPARK-PLUG PORCELAINS, ] MAGNETOS, AND PARTS OF THE FOREGOING, MAGNETO COIL ASSEMBLY, MAGNETO CONTACT ASSEMBLY, COMMUTATOR BRUSHES 2088473 08/19/1997 FORD Application Date Foreign Priority Date 11/18/1993 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 025. First use: First Use: 1971/06/06 First Use In Commerce: 1971/06/06 clothing; namely, belts, caps, bandannas, jackets,[ rain bonnets, moccasins,] ties, shirts, [shoes, wrist bands, scarves, head bands, warm-up suits, ]vests,

sweaters, [jogging suits, shorts,] coats, sweatshirts, [shawls,] sun visors, gloves[, boxer shorts and boots] U.S. Registration No. Registration Date Word Mark Design Mark Description of Mark Goods/Services NONE Class 025. First use: First Use: 1975/10/01 First Use In Commerce: 1975/10/01 clothing; namely, vests, coats, [ ties,] sweaters, [ slacks, ] shirts, caps, gloves, jackets, [ warm-up suits, joggingsuits, athletic shoes, ] golf gloves, [boxer shorts, scarves, ] hats, [ blazers, ]sweatshirts [ and bandannas ] 2092385 09/02/1997 FORD Application Date Foreign Priority Date 11/18/1993 NONE 2100574 09/30/1997 FORD Application Date Foreign Priority Date 11/18/1993 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 025. First use: First Use: 1971/06/06 First Use In Commerce: 1971/06/06 clothing; namely, belts, caps, bandannas, jackets, rain bonnets, moccasins, ties, shirts, shoes, wrist bands, scarves, head bands, warm-up suits, vests, sweaters, jogging suits, shorts, coats, sweatshirts, shawls, sun visors, gloves, boxershorts and boots 3644915 06/23/2009 FORD Application Date Foreign Priority Date 10/06/2004 NONE

U.S. Registration No. Registration Date Word Mark

Design Mark

Description of Mark Goods/Services

NONE Class 041. First use: First Use: 2002/05/07 First Use In Commerce: 2002/05/07 Entertainment and educational services,namely, presenting and producing sporting events, sporting exhibitions, car shows, concerts, arranging meetings, sporting programs, seminars and conventions, and providing facilities for such events Class 043. First use: First Use: 2002/05/07 First Use In Commerce: 2002/05/07 Providing meeting facilities for educational and entertainment events 2799201 12/23/2003 FORD FIELD Application Date Foreign Priority Date 02/28/2002 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 035. First use: First Use: 2002/09/22 First Use In Commerce: 2002/09/22 Providing facilities for business meetings; concession stands featuring food and souvenirs Class 038. First use: First Use: 2002/09/22 First Use In Commerce: 2002/09/22 Providing radio and television broadcast studio facilities in connection with stadium events Class 039. First use: First Use: 2002/09/22 First Use In Commerce: 2002/09/22 Parking lot services Class 041. First use: First Use: 2002/09/22 First Use In Commerce: 2002/09/22 Entertainment services, namely, providing and leasing stadium facilities for sporting events, exhibitions, concerts, meetings, seminars and conventions; operating stadium suites for entertainment event-viewing purposes Class 043. First use: First Use: 2002/09/22 First Use In Commerce: 2002/09/22 Catering and restaurant services Class 045. First use: First Use: 2002/09/22 First Use In Commerce: 2002/09/22 Security guard services

U.S. Registration No. Registration Date Word Mark Design Mark Description of Mark Goods/Services

2707338 04/15/2003 THE FORD PLANTATION NONE

Application Date Foreign Priority Date

07/07/1998 NONE

Class 025. First use: First Use: 1999/01/00 First Use In Commerce: 1999/01/00 T- shirts, golf shirts, polo shirts, caps, hats Class 028. First use: First Use: 1999/01/00 First Use In Commerce: 1999/01/00 [ golf bag covers ] Class 037. First use: First Use: 1998/10/00 First Use In Commerce: 1998/10/00 Real estate development Class 041. First use: First Use: 1998/10/00 First Use In Commerce: 1998/10/00 operating and maintaining of golf courses, golf club services, and provision oftennis court facilities Class 042. First use: First Use: 1998/10/00 First Use In Commerce: 1998/10/00 Hotel, bar, restaurant, and resort hotel services 3046211 01/17/2006 FORD Application Date Foreign Priority Date 05/04/2005 NONE

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark Goods/Services

NONE Class 037. First use: First Use: 1992/01/00 First Use In Commerce: 1992/01/00 Vehicle repair and maintenance services; emergency roadside services 3657596 07/21/2009 FORD Application Date Foreign Priority Date 01/14/2009 NONE

U.S. Registration No. Registration Date Word Mark

Design Mark

Description of Mark

The mark consists of concentric ovals, the outermost oval being a thin black oval followed by a slightly thicker white oval inside the first black oval, insidethe aforementioned white oval is a slightly thicker black oval, followed by a slightly thicker white oval; inside theseconcentric ovals is a completely filledin black oval with the word "FORD" in white in the center of the final black oval. Class 037. First use: First Use: 1928/01/01 First Use In Commerce: 1928/01/01 Automobile repair and maintenance services 3657597 07/21/2009 FORD Application Date Foreign Priority Date 01/14/2009 NONE

Goods/Services

U.S. Registration No. Registration Date Word Mark Design Mark

Description of Mark

The mark consists of concentric ovals, the outermost oval being a thin blue oval followed by a slightly thicker white oval inside the first blue oval, inside the aforementioned white oval is a slightly thicker blue oval, followed by a slightly thicker white oval; inside these concentric ovals is a completely filled inblue oval with the word "FORD" in whitein the center of the final blue oval; the blue starts dark at the bottom of theimage and gets lighter as you move to the top of the image, creating the effectof a light shinning on the image from above. Class 037. First use: First Use: 1928/01/01 First Use In Commerce: 1928/01/01 Automobile repair and maintenance services

Goods/Services

Attachments

71041417#TMSN.gif( bytes ) 71086955#TMSN.gif( bytes ) 71270542#TMSN.gif( bytes ) 74459560#TMSN.gif( bytes ) 74459675#TMSN.gif( bytes ) 78495317#TMSN.jpeg( bytes ) 78111807#TMSN.gif( bytes )

78622129#TMSN.jpeg( bytes ) 77649181#TMSN.jpeg( bytes ) 77649195#TMSN.jpeg( bytes ) Not of Opp -MR FORDS GARAGE.pdf(48040 bytes )

Certificate of Service
The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address record by First Class Mail on this date.

Signature Name Date

/Elizabeth F Janda/ Elizabeth F. Janda 01/31/2014

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In re Trademark Application Serial No. 85/882,643 Filed: March 21, 2013 Trademark: MR. FORD’S GARAGE Published for Opposition on August 6, 2013 ) ) ) ) ) ) ) ) ) )

FORD MOTOR COMPANY Opposer, v. FORD'S GARAGE VENTURE LLC Applicant.

Opposition No. ______________

NOTICE OF OPPOSITION Sir: FORD MOTOR COMPANY ("FORD"), a Delaware corporation with a place of business at One American Road, Dearborn, Michigan 48126, believes that it is and will continue to be damaged by the Applicant’s registration of the mark “MR. FORD’S GARAGE” for goods in Class 25 and services in Class 43, as set forth in Application Serial No. 85/882,643, and hereby opposes registration of this mark. As grounds for opposition, the Opposer alleges as follows: l. The Applicant, FORD'S GARAGE VENTURE LLC is seeking to register the

mark “MR. FORD’S GARAGE” as a trademark for the following goods in Class 25: “Clothing, namely, shirts, hats, jackets, shorts, pants and skirts,” and services in Class 43: “Restaurant services; bar services.” This is evidenced by the publication of the mark in the Official Gazette on August 6,

U.S. Serial No. 85/882,643

TRADEMARK

2013. This Application Serial No. 85/882,643 was filed on March 21, 2013, based upon an intent to use the mark. 2. The Opposer, FORD, designs, develops, manufactures, services, repairs, and

sells motor vehicles and parts therefor, and related products and services, as well as a wide variety of merchandise and other services. The applicant uses FORD in connection with its goods and services. 3. The Opposer, FORD, has for many years designed, developed, manufactured,

serviced, repaired, and sold automobiles and parts therefor and additional products and services under the mark “FORD.” Opposer has used and/or licensed others to use the mark “FORD” on a wide variety of goods and services, including clothing in Class 25 and restaurant services in Class 43. Ford has a long history of use of the “FORD” mark in connection with clothing and restaurant services. 4. Opposer owns numerous registrations for the mark FORD, in block letters and

stylized form, including U.S. Trademark Registration Nos. 74,530; 643,185; 115,500; 257,500; 2,088,473; 2,100,574; 2,092,385; 3,644,915; 2,799,201; 2,707,338 and others. 5. The Opposer is the owner of U.S. Trademark Registration No. 74,530 for the

mark “FORD in Script” for automobiles and their parts, in Class 12. This registration issued July 20, 1909, and is incontestable, valid and subsisting, uncancelled and unrevoked. 6. The Opposer is the owner of U.S. Trademark Registration No. 643,185 for the

mark "FORD" for passenger cars and trucks in Class 12. This registration issued March 26, 1957, and is incontestable, valid and subsisting, uncancelled and unrevoked.

2

U.S. Serial No. 85/882,643

TRADEMARK

7.

The Opposer is the owner of U.S. Trademark Registration No. 115,500 for the

mark “FORD in Script” for specified goods in Classes 7, 9, 11, and 12. This registration issued February 20, 1917, and is incontestable, valid and subsisting, uncancelled and unrevoked. 8. The Opposer is the owner of U.S. Trademark Registration No. 257,500 for the

mark “FORD in Script” for specified goods in Classes 7, 11, 12, and 15. This registration issued June 11, 1929, and is incontestable, valid and subsisting, uncancelled and unrevoked. 9. The Opposer is the owner of U.S. Trademark Registration No. 2,088,473 for

the mark

“FORD in Script in Oval” for goods in Class 25, including clothing,

namely, belts, caps, bandannas, jackets, ties, shirts, vests, sweaters, coats, sweatshirts, sun visors and gloves. This registration issued August 19, 1997, and is incontestable, valid and subsisting, uncancelled and unrevoked. 10. The Opposer is the owner of U.S. Trademark Registration No. 2,100,574 for

the mark “FORD” for goods in Class 25, including clothing, namely, vests, coats, sweaters, shirts, caps, gloves, jackets, golf gloves, hats and sweatshirts. This registration issued September 30, 1997, and is incontestable, valid and subsisting, uncancelled and unrevoked. 11. The Opposer is the owner of U.S. Trademark Registration No. 2,092,385 for

the mark

“FORD IN SCRIPT” for goods in Class 25, including clothing, namely,

belts, caps, bandannas, jackets, rain bonnets, moccasins, ties, shirts, shoes, wrist bands, scarves, head bands, warm-up suits, vests, sweaters, jogging suits, shorts, coats, sweatshirts, shawls, sun visors, gloves, boxer shorts and boots. This registration issued September 2, 1997, and is incontestable, valid and subsisting, uncancelled and unrevoked.

3

U.S. Serial No. 85/882,643

TRADEMARK

12.

The Opposer is the owner of U.S. Trademark Registration No. 3,644,915 for

the mark

“FORD in Script in Oval” for services in Classes 41 and 43, including,

entertainment and educational services, namely, presenting and producing sporting events, sporting exhibitions, car shows, concerts, arranging meetings, sporting programs, seminars and conventions, and providing facilities for such events in Class 41, and providing meeting facilities for educational and entertainment events in Class 43. This registration issued June 23, 2009, and is valid and subsisting, uncancelled and unrevoked. 13. The Opposer is the owner of U.S. Trademark Registration No. 2,799,201 for

the mark

“FORD FIELD & DESIGN” for services in Classes 35, 38, 39,

41, 43, and 45; including catering and restaurant services in Class 43. This registration issued December 23, 2003, and is incontestable, valid and subsisting, uncancelled and unrevoked. 14. The Opposer is the owner of U.S. Trademark Registration No. 2,707,338 for

the mark “THE FORD PLANTATION” for goods in Class 25, including t-shirts, golf shirts, polo shirts, caps and hats, and services in Classes 37, 41 and 42, including hotel, bar, restaurant, and resort hotel services in Class 42 (now classified in International Class 43). This registration issued April 15, 2003, and is incontestable, valid and subsisting, uncancelled and unrevoked. 15. Opposer is the owner of US Trademark Registration No. 3,046,211 for the

mark “FORD” for services in Class 37, including vehicle repair and maintenance services, and emergency roadside services. This registration issued January 17, 2006, and is incontestable, valid and subsisting, uncancelled and unrevoked. Opposer also owns Registration Nos. 3,657,596 and 3,657,597 in Class 37 for the “FORD IN SCRIPT IN OVAL” mark.

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U.S. Serial No. 85/882,643

TRADEMARK

16.

Opposer has sold many billions of dollars’ worth of goods and services under

the mark “FORD,” and has spent billions of dollars advertising and promoting the mark “FORD” throughout the United States. 17. The Opposer has expended considerable effort and expense in promoting its

mark “FORD” and the goods and services associated with this mark, with the result that the purchasing public has come to know and recognize the products of the Opposer by this mark. The Opposer has an exceedingly valuable good will established in its “FORD” mark. 18. By virtue of Opposer's long use and extensive sales throughout the United

States and the world, the success of Opposer's advertising and promotional efforts, and Opposer's ownership of numerous incontestable registrations, Opposer's FORD name and mark are distinctive and famous. The FORD name and mark achieved that distinctiveness and fame long prior to the filing date of the opposed Intent-to-Use application. 19. FORD's use of FORD in connection with its goods and services was well

known, and well known to Applicant, prior to Applicant's filing the application and /or use of “MR. FORD'S GARAGE.” 20. There is no issue as to priority. The Opposer has used the mark “FORD” for

over 100 years and most of Opposer's registrations issued long prior to the filing date of Application Serial No. 85/882,643. 21. The mark for which the Applicant seeks registration, namely “MR. FORD'S

GARAGE” incorporates Opposer's mark in its entirety and the application covers identical goods and services. Opposer owns registrations for its mark for a wide variety of goods and services, including clothing and restaurant services.

5

U.S. Serial No. 85/882,643

TRADEMARK

22.

Upon information and belief, the Applicant intends to use “MR. FORD’S” to

reference Mr. Henry Ford, the founder of Ford Motor Company, and to use Ford Motor Company marks and vehicles as a theme in connection with the restaurant and clothing items. 23. Since the mark and goods as described in the application are identical to the

Opposer's mark and goods/services, confusion and deception as to the origin of the Applicant's goods and services bearing the mark would occur, all to the damage and detriment of the Opposer. Such use would cause confusion in the trade resulting in damage and injury to the Opposer. 24. The Applicant's use or registration of the mark “MR. FORD'S GARAGE” in

connection with its designated goods and services is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of the Applicant with the Opposer, or as to the origin, sponsorship or approval of the Applicant's goods and services by the Opposer under Section 2(d) of the Lanham Act, 15 USC 1052(d). 25. Applicant's use of the “MR. FORD'S GARAGE” mark is likely to cause, and

will cause, dilution by blurring or dilution by tarnishment, of Opposer FORD's famous FORD marks, which became famous prior to the filing date of Application Serial No. 85/882,643, under the Trademark Act, Section 43(c) of the Lanham Act, 15 USC 1125(c). 26. The Applicant’s “MR. FORD'S GARAGE” mark incorporates Opposer’s

mark in its entirety, is a close approximation of the Opposer’s “FORD” mark, and would be recognized as uniquely and unmistakably identifying or suggesting a connection to the Opposer. The Applicant’s combination of Opposer’s famous mark FORD with GARAGE creates an association of Applicant’s proposed goods and services with Opposer, Ford Motor Company. The Opposer is not connected with the Applicant’s contemplated goods or services to be provided under the “MR.

6

U.S. Serial No. 85/882,643

TRADEMARK

FORD'S GARAGE” mark. The fame and reputation of the Opposer is such that, when “MR. FORD'S GARAGE” is used with the Applicant’s goods and services, a connection with the Opposer will be presumed. Thus, the mark falsely suggest a connection with the Opposer under Section 2(a) of the Lanham Act, 15 USC 1052(a). 27. If the Applicant were granted the registration herein opposed, it would obtain

at least a prima facie exclusive right to use of “MR. FORD'S GARAGE” in connection with its goods and services. Such registration would be a source of injury and damage to the Opposer. WHEREFORE, the Opposer, FORD MOTOR COMPANY, prays that Application Serial No. 85/882,643, for the mark “MR. FORD'S GARAGE” be rejected, denied and refused. The filing fee and any additional fees as may be required under 37 C.F.R. § 2.6(a)(17), are to be charged to Ford Motor Company Account No. 06-1505. Respectfully submitted, By /Elizabeth F Janda/ Elizabeth F. Janda Anna K. Heinl Attorneys/Agents for Opposer

Date: January 31, 2014 (Filed electronically via USPTO.ESTTA) BROOKS KUSHMAN P.C. 1000 Town Center, 22nd Floor Southfield, MI 48075 Phone: 248-358-4400 Fax: 248-358-3351 email: [email protected], [email protected] Our File: FMCTA 28713 OC

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U.S. Serial No. 85/882,643

TRADEMARK

CERTIFICATE OF SERVICE

I certify that I served: NOTICE OF OPPOSITION on January 31, 2014 by: delivering X a copy to: Jennifer L. Whitelaw Whitelaw Legal Group 3838 Tamiami Trl N Ste 310 Naples, Florida 34103-3586 United States Phone: 239-262-1001 email: [email protected] mailing (via first-class mail) and via email

/Elizabeth F Janda/ Elizabeth F. Janda

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