Tesla files trademark on a Telsa Fan’s product…Is Elon stealing a Telsa fan’s IP after the fan shared it with him?
It was reported in Black Enterprise magazine and other news media outlets the triggering headline
This definitely sounds like an IP disaster happening in real-time. Let’s break it down.
Meet Tesla super fan, Riz Nwosu, pictured below with Elon Musk.
When Telsa released the Cybertruck in 2019, Nwosu developed a collector’s item based on the Cybertruck vehicle concept.
I attended the unveiling of the Cybertruck where I got to meet Elon Musk, a person I have admired and respected for many years.
Pop Quiz: How many Africans do you see in this photo? It's definitely not equal to one. pic.twitter.com/MTLpB4lEUA
— Riz (@Riz) April 14, 2022
Nwosu developed the Cyberbackpack based on the design of the Cybertruck. He created a website and catchy tiktok video showcasing his masterpiece.
Here’s the TikTok video.
As you can see, Mr. Nwosu is an avid Tesla fan and quite the innovator. The Cybertruck Backpack definitely captures the look and feel of the Tesla Cybertruck. Ever enthusiastic, Nwosu pitched the idea of his Cyberbackpack to Tesla’s Elon Musk and Cybertruck designer Franz von Holzhausen. He later started a website Cyberbackpack.com, started taking preorders, and tweeting at Elon Musk.
— Riz (@Riz) March 12, 2022
That’s the backstory. Regarding the potential for IP disaster, the crux is that while Nwosu was waiting to hear back from Tesla, he saw that Tesla filed a trademark.
Tesla files a trademark for the word CYBERBACKPACK and indicate in the filing that they intend to use it to sell "Book bags" and "School bags". Hmm…that's strange! pic.twitter.com/NbyujPbdb1
— Riz (@Riz) April 14, 2022
Since then, news about the trademark filing has exploded online and still not a word for Tesla or Elon…bruh! pic.twitter.com/E3VxDciR2d
— Riz (@Riz) April 14, 2022
A deeper dive reveals the details of what happened. Tesla filed a “CYBERBACKPACK” trademark on April 5, 2022.
Nwosu filed his “CYBERBACKPACK” trademark on April 14, 2022.
On its face, it may appear that Tesla beat him to it, so Nwosu is out of luck. At least that may be conventional wisdom. This is why you need a Patent Insider.
According to the USPTO, trademarks can be filed under one of four filing basis.
A “filing basis” is the basis in the Trademark Act upon which you have filed your trademark or service mark application with the United States Patent and Trademark Office (USPTO). You must include one or more filing bases in an application. Each “filing basis” has different requirements that must be met before a trademark or service mark may proceed toward registration.
In your application, you may select from four possible bases:
Use in commerce basis (under Trademark Act Section 1(a)) – you are currently using your mark in commerce with your goods and/or services.
Intent-to-use basis (under Section 1(b)) – you have a bona fide intention to use your mark in commerce with your goods and/or services in the near future.
Looking more closely at the details, Tesla’s trademark was filed under the filing basis Section 1(b) – intent to use, meaning that Tesla is planning to use the trademark and not currently using it for anything. This is an explicit admission that they are planning to use it in the near future.
Nwosu’s trademark was filed under the filing basis Section 1(a) – under use in commerce basis, meaning that the mark is currently being used in commerce for goods and services. He alleges first use on December 15, 2021.
Now that we have the details what are some potential outcomes here?
- Both trademarks could result in an opposition where the proof of use could be challenged.
- Tesla could change their filing basis from intent to use to use if they have any evidence of use prior to Nwosu’s date.
- Nwosu could win an open and shut trademark case and Tesla’s application could be denied.
- The competing trademark filings could result in a settlement between Nwosu and Tesla.
- Something else could happen as anything is possible.
What are some Patent Insider tidbits and takeaways here? Here are 5 lessons from this case study.
- As a founder or innovator, protecting your intellectual property (IP) is always on you. No one else is going to do it for you.
- Protect yourself before swimming with the sharks. Big business sharks eat the little fish all the time. Go in with this in mind and don’t think they will share or offer you business opportunity out of the kindness of their heart. Even if its just an NDA. This is similar to putting your mask on first in the airplane before helping others. Same rules apply.
- Leverage your strengths. Just because you’re smaller, it doesn’t mean you have nothing to offer. You are creative and innovative. Your idea is something that they don’t have. You’re also able to innovate and move more quickly and nimbly than they can. Use this to your advantage.
- Protect your IP in some measure before meeting with a potential partner or competitor to strike a deal. If you have something real, get a trademark, patent, or copyright pending before you start negotiating. Again, remember the airplane example…put your own mask on first.
- Anything is possible. Don’t be afraid to shoot your shot. Nwosu went from a mini story to front page news in the tech world. All by taking a chance, investing in himself, and pursuing his passion.
At Patent Insider Startup, we save your company from IP disasters before they happen. Contact us for your IP Strategy Session, we can help make sure you’re prepared.
Update: Seems like Riz Nwosu is making a bid to work this out amicably. We’ll see where it goes from here.
— Riz (@Riz) April 16, 2022
My goal at the end of the day is to work with @tesla. I am a massive fan of @elonmusk and there is generational support for the Tesla mission in my family. I would love to be an advocate for how Tesla is a diverse and inclusive company despite popular narratives to the contrary. pic.twitter.com/TzHBUNoTmX
— Riz (@Riz) April 22, 2022