If you've ever dreamed that your trashed pickup might someday resemble an all-terrain military vehicle, I've got good news. The 10th Circuit refused to shut down Urban Gorilla, a company that sells car kits that modify your SUV or pickup to look like a Hummer (see pic).
Who cares? General Motors (who acquired the Hummer line) sought to enjoin Urban Gorilla claiming that the appearance created by the assembled car kits infringed the Hummer's trade dress (the distinguishing design or packaging of a product).
Why did the court rule against GM? The 10th Circuit: (1) had questions about trade dress protection for the Hummer's appearance, (2) held that purchasers who spend $100K+ on an H3 were not likely to be confused by an under $10K car kit, and (3) noted that the products were inherently different (GM sells a faux-military vehicle; Urban sells a kit).
But didn't the kits dilute the Hummer trade dress? Dilution (the tarnishing or blurring of a famous trademark) has a unique standard for trade dress (thanks to a Supreme Court decision involving Victoria's Secret). To win on a dilution claim, GM had to prove actual economic harm (and it didn't).
What's next for GM? Maybe they'll go after this bumper sticker?
To learn more about all things intellectual property, check out my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference (Nolo).
I have a question regarding trade dress issues related to making scale replicas of cars. Lets say I wanted to make and sell models of the Urban Gorilla Hummer clone. What trade dress obstacles will I have in order to do something like this? If GM or Urban Gorilla took me to court over this, what trade dress protection do they have, or what do they have to prove?
Taking this one step further, if I wanted to create full size kits of a 1963 Galaxie similar to what Urban Gorilla did with the Hummer, could I create small scale replicas of my Galaxie without running afoul of Ford?
Best Regards,
Dan
You'd have a few obstacles. One is that you would not be able to use the trademarks for the company names or logos when selling the products (so you couldn't put Ford, Galaxie or Urban Gorilla on the box or on the product). Another would be that the companies would argue they have trade dress in the appearance of the cars and attempt to prevent unauthorized commercial uses. They would also likely make claims of unfair competition or false advertising, that you are implying endorsement from the car companies. In short, they'd tie you up in court and make it an unfeasible project. Finally, the car companies (or makers of the modification kits) may have already licensed the rights to a model company in which case the licensee (and licensor) would be chasing you.
Also, the fact that you're making a kit for a Ford Galaxie that's no longer in production will not prevent Ford from asserting rights. There was a case a few years ago in which a car company demonstrated that even though an obsolete model was no longer in production, consumers still associated the trade dress and mark with the company due to an active after-market industry for the car and its parts.