In an unusual case, a Pittsburgh auto parts dealer filed a lawsuit on Friday in the U.S. District Court against Ford Motor Co., claiming they used the company’s “catch phrase”, which is also its domain name.
Frank’s Auto Supply Inc., claims they have used the phrase, “We Speak Car,” in advertising since June 8, 2003. Moreover Frank’s owns the domain name, www.wespeakcar.com.
Frank’s alleges that Ford launched a “dynamic and multi-faceted,” advertising campaign for the Ford Fusion on March 3 that includes an “overall theme and tag line, ‘We Speak Car.'”
In addition, the plaintiff claims that Ford paid for three different commercials during American Idol on Fox on March 3.
“Each of the three television commercials began with the narrator’s voice saying, ‘We Speak Car.'”
Frank’s, which filed a trademark application on Thursday, claims that Ford has spent $60 million to $80 million on its advertising campaign to date.
The lawsuit accuses Ford of unfair competition under the Federal Trademark Act.
This should be an interesting case.
The auto parts dealer may have a difficult time since they did not have a trademark on the term or even apply before Ford used the phrase in its commercials.
The auto dealer may have been better off just benefiting from the extra traffic is undoubtedly getting due to the ad campaign which may be pulled because of the lawsuit.
However, we point out at least once a month, how Madison Avenue puts out a multi-million dollar ad campaign without first securing the domain which is the subject of the ad.
This time the failure may cost its client more than just lost traffic.
I do hope we can get some information on this in the future.
As you pointed out, with out a TM Frank may have a difficult time.
I would be thanking Ford for all the traffic, not suing them.
If this isn’t some BS , I dont know what is.
Frank’s must be nuts for trying to kill the free advertisement which he is getting and Ford needs to fire the marketing managers. With them spending millions on branding the phrase and not owning the dot com phrase is just pure ignorant.
Something tells me, that they might have made Frank’s a offer for the domain, but it was to low.
After Ford using the phrase anyway without raising the offer for the dot com, Frank’s might just be pretty upset. This is the only reason why I could see someone going for such a stupid lawsuit and not realy having a chance in winning.
Maybe I’m wrong but then again, MHB your the lawyer.
I agree with Jamie, but perhaps there is more money in the lawsuit than the traffic. Its not like Ford wouldn’t sue this parts dealer in a heartbeat if they had a half good reason. What goes around comes around.
It actually might be preemptive strike. Like utube.com – they did it to protect themselves from future legal attacks from youtube.com, now after they settled they can do whatever they want with their domain and the domain maybe makes more money than their original business