Tesla drops Model E trademark, but Ford hangs on

May 7, 2014, 7:35 PM UTC

Tesla Motors (TSLA) has abandoned its application with the U.S. Patent and Trademark Office to trademark Model E — a name widely rumored to be used for the electric automaker’s next-generation electric car.

Ford Motor Co. (F), which filed an application to trademark Model E several months after Tesla, is sticking with it.

“The matter has been resolved amicably,” said Simon Sproule, vice president of communications for Tesla Motors. Sproule wouldn’t say if Ford asked Tesla to abandon its application; Ford spokeswoman Kristina Adamski responded with a statement that mirrored Tesla’s.

The electric automaker technically abandoned applications under three classes related to the Model E trademark for its use on automobile and structural parts, service and repair, and articles of clothing. The articles of clothing trademark application applied to T-shirts, jackets, hats and headgear, and infant and toddler clothing.

Since its founding in 2003, Tesla has introduced the Roadster, Model S sedan, and Model X sport utility vehicle.

MORE: For Tesla’s Gigafactory, a dash of brinkmanship

Ford has had an on-again, off-again relationship with the Model E name, according to U.S. Patent and Trademark Office records. The automaker filed an application in February 2000 to register the Model E name as a trademark for the “use and maintenance of motor vehicles,” but it was abandoned in 2003.

In February 2001, Ford applied to register the Model E trademark for vehicles, namely electric-powered boats and recreational jet boats, electric-powered cars, carts, scooters, SUVs, trucks, buses, and vans. Ford’s trademark was registered in October 2003. The company cancelled it in May 2010. Ford filed another trademark application for Model E in January 2002, regarding messages among computer users “concerning the field of motor vehicles and related goods and services.” It abandoned that application in May 2006.

Ford’s latest application was filed in December 2013, several months after Tesla.

Companies abandon trademark applications for a variety of reasons, said Robin Bren, a trademark attorney and partner at Virginia-based intellectual property law firm Oblon, Spivak, McClelland, Maier & Neustadt. A company might abandon a trademark application because it no longer plans to use the image or name; it can also be a legal strategy to mitigate risk, Bren said.

MORE: Tesla’s Elon Musk: State ban on direct sales of EVs is ‘twisted’

Production of the now nameless next-generation vehicle hinges largely on the completion of the company’s proposed $5 billion lithium-ion battery factory.

On Feb. 26, Tesla revealed the first details of a 10-million-square-foot, possibly two-level facility that will be designed to produce more lithium-ion batteries annually by 2020 than were made worldwide in 2013. Tesla estimates that the plant will have the capacity to produce 50 gigawatt hours of battery packs a year, which will be used for its Model S luxury sedan and a cheaper next-generation vehicle intended for the mass market. By 2020, Tesla estimates the facility will be able to make enough batteries to supply 500,000 vehicles a year.

The company’s first-quarter earnings will be posted after market close on Wednesday.

This story has been updated with additional comment from Ford Motor Co.