Earlier this week, a Nevada company filed a complaint against Elon Musk’s Boring Company (Musk’s company). The complaint alleges that the Nevada company, which also goes by The Boring Company, has been providing its services under the same mark since 2006. According to their website, the company provides services related to directional drilling, trenching, and hydro evacuation services.
Initially, the Nevada company knew about Musk’s company. However, Musk’s company was only operating for a limited purpose and scope at that time. Specifically, that the company intended to test a tunneling project in Los Angeles, California.
However, Musk’s company soon expanded. In 2019, it announced that it intended to construct a tunnel underneath the Las Vegas Convention center and surrounding areas. Upon learning of Musk’s companies’ plans, it reached out to the company noting that there would be consumer confusion.
In particular, the Nevada company alleges that there has been systematic consumer confusion between the two companies. In fact, the Nevada company has “received numerous invoices, past-due statements, collection notices, and notices of intent to file liens in an amount exceeding $100,000.” See Complaint pg. 5. To make matters more interesting, Musk’s company even filed four (4) intent-to-use trademark applications with the U.S. Patent and Trademark Office (USPTO).
The Musk Companies Federal Trademark Applications
Unfortunately for the Nevada company, it never applied for federal trademark protection. In particular, the Nevada company only applied for state trademark protection with the State of Nevada. Had the Nevada company applied for federal trademark registration, Musk’s companies’ intent-to-use trademark application would likely have been refused registration.
At this point, the Nevada company must file a Petition for Cancellation (the Petition) with the USPTO if Musk’s applications eventually register. In the Petition, the Nevada company would rely on its prior use of THE BORING COMPANY mark. The prior is used to “cancel” Musk’s companies’ registrations during the Cancellation Proceeding. Once priority has been established, it would then need to establish that a likelihood of confusion exists between the two companies. If successful, the Trademark Trial and Appeal Board (TTAB) cancels the Musk’s company trademarks.
So, What Happens with the Complaint?
Irrespective of the outcome of a potential Cancellation Proceeding, the Nevada company likely stands on solid ground. In particular, the Nevada company has a valid and enforceable Nevada trademark along with common law use of its trademark. When Musk’s company entered into Nevada to build the tunnels under the Las Vegas convention center it likely committed trademark infringement. Had Musk’s company not expanded into Nevada, there would likely be no case for trademark infringement.
Overall, most trademark infringement cases settle before trial. Thus, it is entirely possible that the parties, in this case, meet a resolution to their dispute sooner, rather than at trial.
On a separate note, the Nevada company should consider filing its own federal trademark application for THE BORING. In such a scenario, an initial refusal of the Nevada companies’ trademarks is likely to issue. Upon cancelation of the trademarks, the Nevada company’s trademarks will register. If this happens, it would effectively “freeze” Musk’s company where it stands and they would be unable to expand.
An intent to use application allowed you to file a trademark application for a mark without first having a date of first use or specimen. All that is required is that you have a “bonafide intent to use” the mark in commerce. However, before any registration is ultimately granted, you will be required to show use of the mark in commerce.