Just a few months after Elon Musk “was found passed out against a Tesla Model 3, surrounded by ‘Teslaquilla’ bottles” in an infamous April Fools prank, Tesla filed an intent to use application for TESLAQUILA. However, according to the USPTO, the TESLAQUILA trademark was eventually abandoned on March 17th, 2020.
Examination of TESLAQUILA
The application for TESLAQUILA received a rejection by the USPTO. In particular, the Examiner refused registration of TESLAQUILA for being confusingly similar to another registration for brandy and distilled spirits—SPIRIT TESLA. Initially filed in 2010, SPIRIT TESLA has since filed its combined declaration of use and incontestability documents. It remains a registered trademark.
In the USPTO’s rejection of TESLAQUILA, the Examiner stated that:
Applicant’s and Registrant’s marks share the identical term TESLA; thus, they appear and sound identical in part. Because they appear and sound identical in part, these marks are also likely to engender a similar overall commercial impression, namely, that of the electrical engineer and inventor Nikola Tesla.TESLAQUILA Office Action
In response, Tesla’s representatives attempted to demonstrate that the word “TESLA” was synonymous with Tesla for its automotive brand. As a result, because TESLAQUILA is a portmanteau of TESLA and TEQUILA, the resulting mark TESLAQUILA would immediately evoke an association with Tesla, the automotive and energy company, rather than the cited mark SPIRIT TESLA.
However, the Examiner was unpersuaded, stating that “[w]hile the auto manufacturer’s use of the term TESLA may be well known in the minds of the consumers in relation to automobiles, it is not well known at all in relation to alcoholic products. After receiving the subsequent Office Action, Tesla decided not to respond and let the application go abandoned.
After hitting some rough terrain with TESLAQUILA, it will be interesting to see if the automaker ultimately decides to continue onward without having a federal registration. Alternatively, it could attempt to rebrand the now-famous tequila.
Interesting Note: Tesla’s application for TESLAQUILA claimed foreign priority to an application filed in Jamaica. Several other large companies have found it beneficial to file in Jamaica first. In particular, the Jamaica Trademark Office does not have any online search functionality. Thus, to search for Jamaican trademarks, an individual must do so in person and pay a required search fee. As a result, filing in Jamacia is an effective way to hide upcoming product launches. In addition, you also retain your claim of foreign priority under Section 44(e).