The Inside Track: Charting F1’s U.S. Rise by its Trademarks

Image: F1

Law

The Inside Track: Charting F1’s U.S. Rise by its Trademarks

The reverberations of Formula One are being felt across industries, as the international racing franchise looks to solidify its focus on the U.S. market, including with the Las Vegas Grand Prix that took place over the weekend. Luxury brands, for one, have long been ...

November 21, 2023 - By TFL

The Inside Track: Charting F1’s U.S. Rise by its Trademarks

Image : F1

Case Documentation

The Inside Track: Charting F1’s U.S. Rise by its Trademarks

The reverberations of Formula One are being felt across industries, as the international racing franchise looks to solidify its focus on the U.S. market, including with the Las Vegas Grand Prix that took place over the weekend. Luxury brands, for one, have long been intertwined with the sport, whose events often demand high-priced tickets (weekend packages can range well into the thousands; airfare not included) and draw well-heeled fans. As such, companies in the luxury segment of the market – ranging from jet-maker Bombardier, which welcomed Mercedes-AMG Petronas F1 Team principal (and part owner) Toto Wolff as its worldwide brand ambassador last year, to LVMH-owned Rimowa, which put driver Louis Hamilton, at the center of an ad campaign this fall – have looked to the sport as an additional avenue to reach relevant customers.

Beyond the upper echelon of the luxury goods/services market, the draw of F1 has attracted more mass-market fashion/retail brands, as well, with companies like PacSun, for instance, currently selling a collection of race-themed apparel in an effort to benefit from growing interest. “We recognized that this is a global sport with a huge following that is starting to creep into the U.S. in a big way,” Richard Cox, PacSun’s vice president of men’s and global partnerships, told Reuters. The same goes for the music industry, with the AP recently reporting that Bad Bunny’s “Monaco” and Carín León’s “Por La Familia” videos both feature Red Bull driver Sergio “Checo” Perez, while “up-and-coming indie twang band released a track called ‘Formula One’ on their 2023 album” in a nod to the fact that “musicians loving F1 is limited to no genre and no country – its appeal is as global as the sport itself.” 

Media has seen the effects, of course, led by Netflix, whose wildly-popular series “Drive To Survive” has not only driven viewership for the streaming giant but in a mutually-beneficial scenario, has turbo-charged F1’s fanbase in the U.S. 

Still yet, Las Vegas – which played host to the brand new Las Vegas Grand Prix this past weekend – is maybe the most potent example of an industry that has reaped the benefits of Formula 1. Ahead of the race, the organizers of F1 made a $500 million bet on the race – the most it has spent on a Grand Prix all year. Meanwhile, hotels, restaurants, events producer, and luxury shops, alike, were banking on a boom in business, as the weekend promised to lure big-spenders, including internationally-traveling clients, to Sin City. The event is expected to have generated a whopping $1.3 billion in economic activity, according to Las Vegas tourism and F1 officials’ pre-race-weekend estimates. (For a point of comparison, that is more than twice the projected total for the 2024 Super Bowl.)

And not to be overlooked: The legal field has seen a fair amount of action as a result of F1’s rising popularity, and in particular, its expansion into the U.S., which now hosts major races in Austin, Miami, and Las Vegas. After finding a global fan base of more than 400 million thanks, in large part, to races that take place across the Middle East, Europe, and Asia, John Malone’s Liberty Media purchased F1 in 2016 for $4.4 billion, and set its sights on stateside expansion. 

One clear indication that Liberty Media is investing in the U.S. market? Its rapidly-expanding portfolio of F1-centric trademark filings, which has been growing since the early-1990s when counsel for the global motorsports group filed what appear to be the company’s first U.S. applications for registration: In September 1993, Formula One (under corporate entity GISS LICENSING B.V.) filed two applications for registration for stylized “FIA FORMULA 1 WORLD CHAMPIONSHIP” marks for use on “articles of clothing, sportswear and leisurewear, namely, T-shirts, sweat shirts, jackets, pants,” etc., and “luggage, attaché cases, umbrellas, parasols and walking sticks, trunks, traveling bags,” etc. The registrations – which have since been cancelled (presumably for non-use) – were issued in July 2022 and April 1998, respectively. 

The bulk of the company’s applications/registrations have been filed on a 44(E) basis (meaning that they are based on existing foreign registrations) and cover variations of F1, FORMULA ONE, and F1 FORMULA 1 word marks and logos for use across goods/services that range from the obvious – such as “educational services, namely, classes, seminars, workshops in the field of auto racing” (Class 41), apparel (Class 25), and printed materials (Class 16) – to things like restaurant services (Class 43) and the “packaging and storage of goods; travel arrangement, namely, arranging for transport of travelers; transport of goods” (Class 39).

In addition to expanding beyond the most obvious goods/services by way of new applications for registration over the years for use of the F1 marks on shower gels, skincare products, and facial cleansers; spices, cookies, coffee, and ready to eat cereals; and household and kitchen utensils, among other things, F1 has also expanded its arsenal of marks to reflect its growing number of domestic races (think: “GRAND PRIX OF MIAMI,” “LAS VEGAS STRIP CIRCUIT,” “FORMULA 1 UNITED STATES GRAND PRIX,” etc.). As a result, the number of F1 filings lodged by the company’s trademark counsels has reached just above 225 and the number of active registrations currently comes in at more than 150 and counting. 

All the while, based on a look at the volume-specific trends in the company’s filings, it is easy to see how stateside developments have prompted spikes in F1 trademark filing activity. For example, there was a notable increase in applications in 2011, likely ahead of the inaugural race at Circuit of the Americas in Travis County, Texas and the first time the U.S. Grand Prix had been held since 2007. 

There was similarly a large spike in applications for registrations filed by F1 in 2017, including for services, such as “production of programs for radio, television, and videotape” (Class 41), which directly preceded the start of filming of the first season of “Drive to Survive” in 2018. Filing activity normalized thereafter but started to rise again in 2021, the same year that Liberty Media announced it would add a second race to the U.S. with a 10-year deal to host a Grand Prix in Miami. 

All the while, the group has been actively policing its marks. While not overly litigious, F1 has waged a number of trademark infringement and counterfeiting suits against parties looking to piggyback on the reputation of its trademarks and has also been consistently opposing others’ attempts to encroach on its turf via trademark opposition proceedings lodged with the Trademark Trial and Appeal Board since in the 1990s. 

As F1 continues to make inroads into the U.S., chances are its activity across all trademark filing and enforcement fronts will increase. 

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