Collaborations in Creativity & the Law

Lance Armstrong: Phoenix or Forever Fraud?

Posted in Branding, Goodwill, Guest Bloggers, Mixed Bag of Nuts

Randall Hull, The Br@nd Ranch®

There is much to admire about Lance Armstrong. Really. Cancer survivor, founder of Livestrong, professional triathlete at age 16, successful professional cyclist, marathon runner. Yes, Lance was a very good athlete and road-racing cyclist long before he was diagnosed with cancer and after he returned to the sport prior to including performance-enhancing drugs in his racing regimen.

But, like many cycling fans, I was frustrated by his Tour de Shame, denying doping, lying under oath — which will cost him a $10 Million penalty, intimidation, and suing those who attempted to prove that he did indeed “dope”, even in the face of the mounting evidence. There is a peloton of litigation following Lance.

In 2013, the very foundation he helped establish disassociated themselves from Lance by expunging his name from their identity. Brand Armstrong wasn’t just tarnished, it was toxic.

So, one wonders, can Lance Armstrong resurrect his brand?

Perhaps. But it will require serious steps to re-establish trust, erase the arrogant, narcissistic, Janus-faced image he created and continues to engender.

For example, in December 2014, after a night of partying in Aspen, he struck two vehicles and then convinced his girlfriend to take the blame. Or, his January 2015 interview in For the Win where he admits he would probably dope again.

Let’s be honest, Armstrong is a narcissist. But that is neither an indictment of him nor an excuse for his behavior, merely a realization of the personality behind the figure.

Narcissism is not itself the bane of personal branding even though it can get in the way. Look at many of the alpha male brands, I won’t mention specific names but you likely can identify two or three. Powerful, successful athletes, entrepreneurs, and international figures all exhibit degrees of narcissism, but they didn’t choose to cheat the rules to keep up with the competition and seemly convince themselves it is justified by the circumstances. And therein lies the problem for Lance.

In terms of personal branding, perception is key and his rebuilding phase must start with demonstrating true penitence for what he did and the people he wronged both through personal and legal acts.

Lance will have to speak from the heart, not from prepared scripts as we saw with Tiger Woods. It will also take more than apologies to former teammates.

Maybe someday Brand Armstrong will mean something positive and inspiring again. Like Tiger, it is what Lance “does next that counts”. Brand Armstrong must realize resurrection requires more than just saying “sorry”.

Coke Walks Tightrope in ZERO Branding

Posted in Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademarks, TTAB, USPTO

As you may recall, last September we wrote about Coca-Cola’s Significant Interest in Zero Marks, discussing Coca-Cola’s defense of a trademark infringement suit brought by an individual named Mirza Baig, who claimed rights in “Naturally Zero” for Canadian natural spring water, and Coca-Cola’s contrasting attempts to own and federally-register various marks containing the term ZERO (interestingly those applications all being opposed by RC Cola):

“Coca-Cola has been careful to straddle the fine lines of trademark protectability, since it has found itself on both sides of trademark disputes. Taking the position that ZERO is descriptive permitted Coke to defend the above-referenced trademark infringement challenge, while at the same time maintain that Coca-Cola’s juggernaut of marketing, sales and promotion established that is has acquired distinctiveness in its ZERO marks.”

Yesterday, the Seventh Circuit Court of Appeals spoke on the subject, affirming the Northern District of Illinois’ grant of summary judgment in favor of Coca-Cola in the trademark infringement suit brought by Baig, reasoning:

“[W]e conclude that Baig has not provided evidence from which a rational jury could determine ‘Naturally Zero’ had established secondary meaning. . . . [It] was a tiny and brief entrant with negligible sales in the bottled-water portion of the beverage industry; its trivial role made it ‘difficult, maybe impossible’ for it to develop secondary meaning in the beverage industry for its mark. Moreover Baig’s narrow advertising efforts — limited to trade publications, which are primarily read by industry insiders, and some pamphlets handed out at gas stations — are also insufficient to show that a substantial segment of consumers associated ‘Naturally Zero’ with a single source. And Baig’s relatively insignificant and intermittent sales from 1998 to 2004 are insufficient for a finding that a substantial number of consumers would consider ‘Naturally Zero’ to be uniquely associated with Baig’s brand.” (case citations omitted).

Given the Court of Appeals’ agreement with Coca-Cola that no trial was necessary to address Baig’s claimed trademark infringement, and given the “tiny,” “brief,” “negligible,” “trivial,” “insignificant,” and “intermittent,” references characterizing Baig’s claimed use of “Naturally Zero,” one has to wonder whether attorney’s fees ought to be awarded Coca-Cola, at least on Baig’s pro se appeal of the case.

The beverage giant must be pleased with the win, but in the end, given all it has been forced to spend on defending this deep-pocket lawsuit, I’m guessing Coke may still be left with a bad aftertaste in its mouth on this one. Recall, the Seventh Circuit has shown a willingness to grant fees in trademark bullying fact patterns, and we know from 3M’s experience that Goliath can be bullied by David too, so relative size isn’t determinative.

In case you’re wondering about the status of the consolidated ZERO trademark oppositions brought by RC Cola (on genericness grounds) that Coca-Cola is currently defending at the TTAB, the parties are waiting for the Board to schedule a date for oral argument — this one might be worth attending, as I’ve written previously:

[I]t remains to be seen whether Coca-Cola will prevail in the consolidated opposition brought by Royal Crown Company, perhaps its most significant challenge to date regarding the ZERO series of marks. I’ll have to say, RC’s Trial Brief makes out a pretty strong case for finding ZERO generic for zero calorie beverages. In other words, is ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?

In the end, given the Board’s recent genericness rulings regarding Subway’s claimed FOOTLONG mark, and Frito-Lay’s successful PRETZEL CRISPS challenge, it will be worth watching to see whether the Board finds that “ZERO” primarily means Coke or just a soft drink having “no calories, you know, a drink about nothing . . . .”

Stay tuned, hopefully we’ll know before the end of the year exactly where the meaning of ZERO stands.

First dinosaurs, then wooly mammoths. Are trademark attorneys next to go extinct?

Posted in Genericide, Infringement, Law Suits, Look-For Ads, Squirrelly Thoughts, Trademarks

A world without trademark attorneys… frightening, isn’t it? (maybe more for me than for someone who isn’t a trademark attorney). It seems unlikely, but we may be inching closer to this apocalyptic scenario.

In Australia, a group of researchers, legal academics, and other organizations are collaborating on the creation of a computer program that they hope will remove the subjectivity from trademark infringement analysis. The goal is to develop a program which can calculate a similarity score between two marks. The score could be relied upon by businesses in choosing names and courts in determining trademark disputes.

This certainly isn’t the first time a computer has taken on tasks normally reserved for humans. IBM famously created computers that could beat world chess champions as well as win $1 million on Jeopardy!. Computers have also been able to discover laws of physics that took humans centuries to unearth. Oh, and don’t forget the more recent creation of a self-aware Mario.

But for all the trademark attorneys out there, please, take a deep breath. We’re not unnecessary (yet). In fact, most trademark attorneys would welcome the opportunity to remove some of the subjectivity in trademark analysis in order to be able to provide more certain advice to their clients. Unfortunately, removing all of the subjectivity is likely impossible.

Trademark infringement involves more than just the similarity of the marks themselves. The legal analysis involves balancing numerous factors. The type of goods or services sold is a major factor, and others include the channels of trade in which the products are sold, the sophistication of the consumers, the number of similar marks used on related goods or services, the intent of the defendant, and others. Thus far, the Australian project appears to be focused solely on the similarity of the marks.

Also, the scope of protection granted to a trademark can expand or contrast over time. The protection can even disappear entirely. We’ve lost a lot of good brands over the years to genericide, including every day words like aspirin, thermos, escalator, dry ice, cellophane and others. Even when trademark rights aren’t lost in their entirety, if similar marks are in use by third-parties without evidence of confusion, then the rights afforded to one owner may be more narrow.

If the project is successful, the computer program could serve as an additional resource for trademark attorneys. It could be a helpful tool in providing some objective assessment of risk that marks might be considered similar. If the “similarity score” is a 3 out of 100, it is likely a good choice. The score of 99 will hopefully be enough to deter your client from investing in its idea for Starbux coffee shops. But will businesses, lawyers, or courts really feel comfortable relying on a score of 60? Or 40? The program might help confirm the clear cases, but is unlikely to be helpful in the close calls, where objectivity is needed most.

On the other hand, the program could be helpful where the other factors weigh in favor of one party. A high (or low) similarity score would present another piece of objective, factual evidence that could help in motions for summary judgment. It would also be a lot cheaper than hiring a linguistics expert to analyze the marks.

The software could also be utilized in-house or by marketing and advertising firms to analyze new name candidates prior to providing it to the decision makers. Providing the similarity score for those high risk names could help avoid emotional investment in a name that is all-but-assured to be turned down by legal. I don’t care what your selling, the name “Nike” is going to be an uphill battle that you’re better off avoiding.

The project is likely to provide some very helpful insight in the future. But I think I’ll come into work tomorrow, just in case.

Britto v. Apple: Utilizing the IP Kitchen Sink

Posted in Advertising, Articles, Branding, Copyrights, Counterfeits, Dilution, Fashion, Infringement, Marketing, Non-Traditional Trademarks, Sight, Trademarks

Can an artist’s particular style of art constitute both copyrightable expression and trade dress?

Brazilian artist Romero Britto has filed suit against two artists known as “Craig & Karl” for copyright infringement — and since the artists’ work was featured by Apple, Britto has sued the company as well for trade dress infringement.

Britto’s complaint, filed in the Southern District of Florida earlier this month, alleges that Britto “is beloved throughout the world and his unique and colorful fine art works are sold and exhibited in hundreds of galleries and museums across the globe.” Britto’s works employ various colorful clashing patterns applied to everyday items, as shown below:

Britto Works

Britto alleges that a variety of Craig & Karl’s past works appropriate this style, and offers a variety of colorful comparisons in the complaint.

Britto Comparison

When an artist files an infringement suit based on his past works, the natural assumption is that copyright — and only copyright — is at issue. And while Mr. Britto does allege copyright infringement, it only extends to Craig & Karl’s own works.  The wrinkle in this case: Britto only became aware of Craig & Karl’s work because the duo was featured in a recent Apple ad campaign with the (now-ironic) title “Start Something New,” featuring various works created exclusively using Apple products. As shown below, Craig & Karl’s image employs a similar series of patterns and colors to depict “the creative power we have at our fingertips.”

Apple Ad CK

To reach Apple as a defendant, Britto alleges that his works aren’t simply copyrightable expressions but comprise the “Britto Trade Dress” — i.e., “a series of unique registered and unregistered trademarks and distinctive trade dress to identify the BRITTO™ brand’s expansive line of goods and services to consumers.” He defines his trade dress within the complaint rather broadly:

The overall Britto Trade Dress is composed of a specific combination of elements that are used in BRITTO® products, promotional materials, and packaging—vibrant color combinations, often dominated by bright yellow; compositions constructed by the juxtaposition of randomly shaped swaths of recurring distinctive patterns (including polka dots and stripes) to form the subject matter of the image, with each compositional element all outlined in bold black strokes; and uplifting, bright and happy visual themes. This specific combination of visual elements when taken in its entirety creates a distinctive overall visual impression that is uniquely “BRITTO,” and serves as a source identifier for Plaintiff’s products, promotions and services.

While the image used in the Start Something New campaign may have no direct comparison to a past Britto work, Britto alleges that it is similar enough to create a likelihood of confusion as to source, association, endorsement, or sponsorship under the Lanham Act. As a sidenote, Mr. Britto does own six trademark registrations in the U.S., including registrations for the BRITTO and ROMERO BRITTO (Stylized) marks for “paintings” and “artistic design services for others in the field of commissioned artworks.”

Britto further alleges that the deleterious effects of Apple’s ad campaign constitute actual confusion between his work and Craig & Karl’s:

As with any Apple campaign, the Start Something New Campaign had massive exposure and breathless press coverage, and many of the media profiles prominently featured the Infringing Apple Image. Plaintiff was inundated with reports of the Start Something New campaign and the Infringing Apple Image. These reports ranged from, for example, incorrect congratulations on Mr. Britto’s new deal with Apple, to consternation from business partners in potentially collaborative or competing product categories, to inquiries from collectors wanting to know if the image they saw in the Apple store or on the Apple website was by Romero Britto.

While the image used in the Start Something New campaign does appear to share features with Britto’s past works, it remains to be seen whether Britto can successfully establish trade dress protection for his artwork.  Trademark law does not apply naturally to artistic expressions alone — instead, the works must function as a brand and have recognized “secondary meaning” to the public as an indicator of source.

Britto’s definition of his trade dress seems quite broad, and courts may be hesitant to grant Britto a monopoly in “vibrant color combinations,” “the juxtaposition of . . . distinctive patterns” and “bright and happy visual themes.” That said, Britto’s complaint is detailed enough to allege significant notoriety and goodwill as to his particular style of art, and he appears to have sufficient marketing savvy to protect the core elements of his brand (such as the BRITTO mark itself). It will be interesting to see if Britto is willing to pursue his trade dress claims to the bitter end, if for no reason other than to create an interesting precedent.

And as for the copyright claims: generally speaking, an artist’s particular “style” cannot be copyrighted. But it is an open question as to whether a “critical mass” of design cues can be appropriated to the point of constituting copyright infringement.  The standard is whether the allegedly infringing works are “substantially similar” in terms of expression — i.e., the use of patterns, color, similar depiction of items, etc. The recent “Blurred Lines” verdict has shown that juries are willing to find copyright infringement among similar, though not identical, works.

So has Britto been wronged? Or have Craig & Karl Start(ed) Something New?

Show, Don’t Tell . . . The Preferred Approach

Posted in Advertising, Almost Advice, Articles, Branding, Genericide, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Technology, Trademarks

FUSE 2015 is off to being yet another amazing, inspiring event for brand strategy and design professionals. The keynote speaker for day one was Eric Quint, Chief Design Officer of 3M, who delivered a very interesting presentation called: “Future Forward: Beyond Design Tourism.”

Little did Mr. Quint know that he set the table nicely for many of the points I ended up emphasizing during my presentation later in the day entitled “Back To (Trademark) School For Designers and Branding Professionals.” By the way, I was relieved the title of my presentation didn’t scare off too many attendees, it was a very engaged audience, with more questions than time to answer them all during the session, so a special thanks to all who attended.

After revealing that 85% of 3M’s business is B2B, Quint emphasized how important design is to the organization so well known and recognized for its innovation and science. But, instead of spending time and effort justifying or explaining the need for design within the organization, his preferred and recommended approach is: “Show, don’t tell . . . . the value of design.”

If that recommendation sounds familiar, you may recall that Bob Worrell, founder of Worrell Design uttered a similar message in a recent webinar that we collaborated on together:

“One of the important takeaways from our recent webinar entitled “Strategies for Owning Product Designs,” was spoken by legendary product design guru Bob Worrell of Worrell Design: “There is another adage in the design world. Advertising is the very expensive penalty you pay for poor design. I think if we listen to that adage, we’d talk less and let the product do its thing.” (quote at 1:22:31)”

Then, in that same webinar, Derek Mathers, Business Development Mananger of Worrell went on to describe how Apple is doing a masterful job of this in launching the Apple Watch, using advertising that shows the operation of the watch’s product benefits and features without uttering a single word. Apple is walking the walk, without the need for using any words.

Back to FUSE, Quint noted the majority of 3M’s value proposition for design promotes differentiation and branding; only a small amount (10-20%) focuses on optimization of products.

So, my articulated hope was that when marketing types are tempted to communicate in advertising about product optimization, little bells and whistles should alert them that the words they choose have significant legal implications that can undermine, if not destroy altogether, a brand owner’s ability to own the created design (at least as a non-traditional trademark).

My call to action for us all was to work together to Bring Down the Bauhaus Principle of Form Following Function when it comes to communicating about product design features, opting instead for the use of more brand-friendly language that strives to create emotional connections as opposed to merely touting the benefits of functional product features. Loyal DuetsBlog readers know full well where that kind of loose talk can lead. So, “show, don’t tell” became my mantra too, given the serious negative consequences resulting from ads touting function.

Quint also described how 3M created a set of visual standards around the highly recognized red 3M logo instead of tinkering with the logo itself, sharing this compelling Tom Fishburne cartoon:

brandguidelinescartoonI simply love this cartoon; it helped me make the point about how every set of brand guidelines I’ve ever seen forbids the use of brand names as verbs, yet we all know brandverbing has become commonplace, and the current generation of marketing types appear unwilling to blindly follow black and white rules without fully testing and probing the true risks of losing trademark rights through the worst case scenario of genericide.

To the extent your brand desires the emotional engagement of verbing, and you’d like to advocate for a hall pass to avoid wearing an orange jumpsuit behind the bars of your favorite legal department, here is some recommended reading from our archives to consider: Managing The Legal Risk of “Verbing Up” Brands and Trademarks.

10 Reasons To Change Your Name

Posted in Advertising, Branding, Genericide, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts, Technology

- Mark Prus, Principal, NameFlash

I’m often asked by companies if they should change the name of a product, service or even the company itself. Here is my shortlist of 10 really good reasons to change your name:

  1. People Can’t Pronounce or Spell Your Name – Here are a few of the names chosen by startup companies last year: Zairge; Xwerks; Synthorx. If no one can pronounce or spell your name how do you expect people to remember it?
  1. Your Name Requires Explanation – Xobni (pronounced “zob-nee”) was founded in 2006 and made software for mobile and email applications. The founders of Xobni loved the name because it was inbox spelled backwards. However, without an explanation, most consumers could not “get it.”
  1. Your Name Is Generic Or Descriptive – If your product is called “Fast Chop” because “fast chopping” is the main benefit of your product, you may think you have a great name. But if your competitive set consists of products called EZ Chop, Speed Chop, QuickChop, and TurboChop then nobody is going to notice it. Advertising will be wasted because even if consumers think “Fast Chop” is great when they get to the shelf they will be confused by all the similar names and products. If your name does not stand out versus your competition you had better change it.
  1. You Have A New Target Or Strategy That Won’t Fit Your Current Name – Speaking at Macworld Expo in 2007, Apple CEO Steve Jobs announced that Apple was dropping the word “Computer” from its name. “The Mac, iPod, Apple TV and iPhone. Only one of those is a computer. So we’re changing the name,” said Jobs. Today, Apple is a powerhouse of consumer electronics and is a great example of why a strategy change should drive a name change!
  1. Your Name And Current Brand Identity/Execution Clash – In 2003 the world’s largest tobacco company, Philip Morris, officially changed its name to Altria Group. While some considered this a PR maneuver to distance the company from its tobacco heritage, CEO Louis Camilleri said that the name change was “an important milestone” in the evolution of the company. “It doesn’t signify an end or a beginning,” he said. “Rather, it marks how far we have come and gives us a framework for how much further we aim to go.” The sleek and modern Altria Group has been a star performer in the stock market since this name change.
  1. You Are Ready To Enter The Big Leagues – Larry Page and Sergey Brin started a search engine called BackRub. A year later they changed the name to Google, which reflected their mission to organize a seemingly infinite amount of information on the web. Blue Ribbon Sports was founded on January 25, 1964. The company, started by Bill Bowerman and Phil Knight, officially became Nike, Inc. on May 30, 1971. Sometimes the name you start with is not one you want to use when raising money from the investment community!
  1. You Can Add A Relevant Benefit To Aid Recall & Persuasion – Diet Deluxe was the name for a new frozen entree company which was renamed Healthy Choice to add a benefit to the product name. Sound of Music operated nine stores throughout Minnesota in 1978. After a tornado hit their largest store, the owner decided to have a “Tornado Sale” of damaged and excess stock in the damaged store’s parking lot promising “best buys” on everything. After Sound of Music made more money during the four-day sale than it did in a typical month, the company was renamed Best Buy. Is there a relevant benefit in your name? Should there be?
  1. Your Current Name Is An Ego Trip – The biggest factor in selling or gaining an investment in your business is the degree to which the business can operate without you. If your name is the business name, then growth and investment will be limited. Subway started out as “Pete’s Super Submarines” in Bridgeport, Connecticut. Do you think that Subway would have grown as fast if it were still called Pete’s Super Submarines?
  1. Your Current Name Is An Acronym – Sometimes the acronym represents the initials of the owners (e.g., A&W Restaurants after Roy Allen and Frank Wright). Sometimes the acronym is a shortening of a larger name (e.g., Aflac is the first letters of American Family Life Assurance Company). Acronym brand names are almost always bad. Not only do they take years of advertising to establish, the risk of mis-pronunciation is huge and can often cause negative brand equity. SAP is the market leader in enterprise applications and software. Their primary competitor, Oracle, loves to use the “sap” pronunciation and SAP-haters say the acronym stands for “Sad And Pathetic.”
  1. Your Name Is Not Likeable – What is the “Acid Test” response? If you expose the name to your target customer and she smiles when she hears it or says, “That’s a great name!” without thinking about it, then you may have a winner on your hands. On the other hand, if she has a puzzled look or a negative reaction, you might want to consider a change. I also count “polite indifference” as a failure. If people have no reaction, then they are probably too polite to tell you how bad it is. And please do not expose the name only to friends and family. These people are programmed to be nice to you and so you won’t get honest feedback. If your name does not bring a smile to your customer’s face, then maybe you should change it.

Of course, each situation is unique and there are always costs to changing a name that should be considered. Are there other situations where changing a name can be a good idea?

Copycat Characters and the Selective Enforcement of IP Rights

Posted in Copyrights, Infringement, Law Suits, Mixed Bag of Nuts, Trademark Bullying, Trademarks

Spring is here with summer just around the corner. While many are preparing for barbeques and boating, others are finalizing plans and perhaps costumes in preparation for Comic-Con (Comic Book Convention) season.

As many know, DC Comics and Marvel Comics are the long-time competitors in comic book publishing. Both companies were started in the 1930s and have competed head-to-head for comic book fandom ever since. For a recent example, DC’s Batman vs. Superman movie was originally scheduled to release on the same weekend in 2016 as Marvel’s Captain America 3. After a bit of a standoff for the coveted May date, DC moved up their release. As part of that competition, the two publishers have developed a number of suspiciously similar heroes and villains over the years, with apparent disregard to intellectual property rights.

Here are a few of the most recognizable doppelgangers:

Green Arrow (DC) vs. Hawkeye (Marvel)

Green Arrow (DC) vs. Hawkeye (Marvel)

Deadpool (Marvel) versus Deathstroke (DC)

Deadpool (Marvel) vs. Deathstroke (DC)

Catwoman (DC) vs. Black Cat (Marvel)

The similarities extend well beyond costumes—these characters share similar backstories, powers, and sidekicks with one another too. The apparent copying is not one-sided, either. Based on first publication dates, both publishers are guilty of borrowing character styles. Read about more close copies here, here, and here.

Comic books are typically protected by both trademark and copyright. The comic can also be protected at different levels—the character, the story, the art, individual panels, the entire book, the series, etc. Arguably, there is substantial similarity in at least some of these levels for the above characters, implicating potential copyright infringement. The close look of the characters may also lead to questions of source, implicating trademark infringement. But both DC and Marvel continue to use these and many other close comparisons.

DC and Marvel are no strangers to litigation. Many an author and artist have sued the publishers for the rights to their works. So the question remains—why aren’t we hearing about constant lawsuits between Marvel and DC over these apparent copycats?

It might be because the last time one major comic book publisher sued another over popular characters, the result was a bizarre character takeover, financial hardship for one publisher, and loss of many fans on both sides. In 1939 and 1940, National Comics Publications (later DC Comics), who had just found great success through their 1938 introduction of Superman, sued multiple publishers for alleged Superman infringements. The defendants included Fawcett Publications, creators of Captain Marvel. National/DC Comics alleged that Captain Marvel infringed the copyrights on Superman (similar stories, powers, and costumes). After a 1951 appeal to the Second Circuit, National/DC Comics won the suit, Fawcett agreed not to publish any more Captain Marvel comics, and the comic book division of Fawcett closed down due to financial troubles.

In the 1960s, Marvel Comics involved themselves in the trouble by trademarking the name CAPTAIN MARVEL. Soon after, DC Comics acquired the copyright rights to the original Captain Marvel from what was left of Fawcett Publications. So Marvel held the trademark, and DC held the copyright, to the very same character that neither publisher actually created. As a result, DC skirted the issue by publishing comics with the Captain Marvel character under a different name, Shazam. And Marvel, holding the name but not the character, used the name Captain Marvel to develop an entirely different character with different powers and story. And that, as one reviewer put it, is how copyright killed Captain Marvel.

Did the Captain Marvel fiasco convince DC and Marvel that they’re better off without crossing paths in litigation? Maybe DC and Marvel have realized that since they’re both potentially carrying liability for various infringements, it’s better to infringe and let infringe. The weird world of copycat characters may also continue due in part to comic book fandom. Fans can be intensely loyal to either DC or Marvel, and regularly follow particular characters or series. Many comic book fans also view litigious publishers as greedy.

Despite their competition, DC and Marvel have displayed cooperation in many situations. For example, the publishers have licensed limited rights allowing for character crossovers (such as where a DC character finds himself in a single Marvel comic issue). The two also co-published DC vs. Marvel Comics, an entire crossover series. The two even co-own the trademarks SUPER HERO and SUPER HEROES, and have teamed up to stop others from using or trademarking similar marks.

Whatever the reason for the publishers’ lack of enforcement against one another, one thing is clear: comic book culture has a strange relationship with intellectual property rights.

The Keys are in the Design

Posted in Almost Advice, Branding, Non-Traditional Trademarks, Patents, Product Configurations, Squirrelly Thoughts

We often ask kids this question: “what do you want to be when you grow up?”  While my trajectory towards lawyering is true, my answer wasn’t always immediately “lawyer.”  I sought something that satisfied my passion for the creative, my critical eye, and my aptitude for math.  For a long time, whenever I answered that question, I said “car designer.”  I also wanted to be the inventor of the world’s first car based on renewable energy (watermelons to be exact).  Turns out we’re going to try electric, even though studies have shown that it’s actually less environmentally friendly than your gas guzzler (see here and here).

Every year, I make a pit stop at the Twin Cities Auto Show, where even something as seemingly mundane and trivial as the position and curves of a cupholder catches my eye.  It’s a look at the good, the bad and the ugly.  The good was nothing new (I’ll take the Aston Martin or that R8, thank you).  The bad was certainly new:


I’ve called it “the Pontiac Aztek of electric cars” – but it’s from a German automaker.  Yes, that is a BMW i3.  Absent any source indicia, would you recognize this car’s “unusual form factor” as being from BMW?  I suppose given it’s shape, you couldn’t lose it in a parking lot.

As Steve mentioned earlier this week, we have devoted a lot of “digital ink” to non-traditional trademark protection here at DuetsBlog, particularly to product configurations.  With a few exceptions (mostly domestic), car manufacturers haven’t devoted much towards non-traditional trademark filings.  A quick search for product configuration marks in class 12 reveals  grills, a Bugatti,  Ford’s shockingly basic coupe shape protection, the Prowler, and little else.  Despite its history of elegant design, BMW only owns non-traditional trademark filings for their grills (see for example here and here) and the Mini Cooper (which BMW owns).  Nothing for the overall shape of the car, or the back end design.   But, BMW is the applicant on over 900 design patent filings. 

As a patent and trademark attorney, my opinion is that the ideal strategy to protecting novel design is by first filing a design patent, which has a limited term of 14 years.  Then, once the product has been in the market for enough time to acquire distinctiveness (usually five years) that design patent  can be supplemented by seeking non-traditional trademark protection as a source-identifying trademark protected for renewable periods of 10 years.   Design patents and trademarks offer different enforcement options and remedies, and both should be part of an overall IP strategy.

It’s always seemed a little off the mark to me (pardon the pun) to call these non-traditional trademarks as protecting product configuration, which comes from the Latin term “to fashion after a pattern,” because what you are really protecting is your product differentiation.  The BMW i3  is certainly a differentiation — from its competitors and its history.

So, are you differentiating or are you configuring?

Designers, Marketers, TM Counsel, As One

Posted in Advertising, Articles, Branding, Marketing, Non-Traditional Trademarks, Trademarks

Seth Godin writes a post today that resonates with our continued drum beat about a corporate chasm that can divide those on the same team.

In his post, Seth writes about the “inevitable split between the people who market what gets made and the people who design what gets made.”

He notes the difficulty of having those roles merge into one, but the enormous payoff when it is pulled off, citing JetBlue and Apple as examples.

One friendly amendment we’d offer is to not forget about the role and importance of flexible, creative, and team-oriented trademark and intellectual property counsel.

So much can be achieved when designers, marketers, and trademark types are working together in harmony as one, even if those roles cannot be filled by one person.

Just because you can name your meal replacement product “Soylent”, doesn’t mean you should

Posted in Branding, Food, Guest Bloggers, Marketing, Mixed Bag of Nuts

- Jason Voiovich, Vice President, Marketing, Logic PD


It’s a classic of 1970s dystopian cinema. In “Soylent Green”, Charlton Heston (yep, the very same) struggles through a horrible vision of an overpopulated future where human beings are processed into “Soylent Green” to feed the populace. (The meme-line from this entire movie comes at 1:06 in the video above. Well worth it. Classic Heston.)

No one is suggesting that the meal replacement product Soylent is derived from human remains, but those of us of a certain age can’t help the association.

That’s the crux of the branding issue: Does the association make sense? Does it help or hurt the brand?

Let’s start with the facts. What is Soylent?

Many of you may be familiar with meal replacement “shakes” that became popular in the 1980s as the diet crazy really gained steam. In this case, everything old is new again. Now touted as an example of “Life Hacking” from our Silicon Valley meme experts, Soylent is a complete, balanced meal replacement product. Last year, it shipped its first 50,000 units after raising over $20 million in funding.

But how does it taste?

Says the New Yorker, tasters have compared Soylent to Cream of Wheat and “my grandpa’s Metamucil.”

I’m not sure if this is exactly a ringing endorsement, but it seems to me this is like “liquid tofu” – it doesn’t taste like much on its own, but with a few additions, it could be pretty good. I’m not sure it signals the “end of food”, but it certain fills a niche in the market. (Soylent and Jack at your local bar? It worked with Red Bull!)

Soylent is cost-effective, shelf stable, and reasonably nutritionally balanced.

But that’s really not the point we’re trying to get at. Is “Soylent” the right naming strategy?

Let’s look at it from a few angles: Legal, marketing, and exit strategy.

I don’t mean to step on the toes of the far-smarter folks on this blog, but when I learned trademark law, possible confusion was the standard. It’s what allows Delta faucets and Delta Airlines to exist in the same marketplace. A reasonable person would be unlikely to confuse the two. In this case, the question seems to be this: Would that same reasonable person confuse the food product Soylent with the concept in the 1973 movie of a similar name?

Frankly, I can’t see that happening. It seems highly unreasonable that the average buyer would actually think we are now entering a period in our history where human beings are processed into foodstuffs.

(A different question for the lawyers: Because “Soylent Green” was probably never trademarked, how does Copyright law apply? But that’s a different question. I’ll invite Winthrop & Weinstine to comment on this angle more broadly.)

So if we can move past the legal issues, we can explore the next question: Does “Soylent” support or distract from the company’s marketing strategy?

Here’s where is gets “sticky”. On one hand, “Soylent” is the classic “Madonna Strategy”. In other words, any publicity is good publicity. The rationale is pretty simple: Awareness is difficult to come by. Consumers are so inundated by messaging today that anything that improves retention of a concept is a good idea. What’s more, research seems to suggest that consumers will disassociate the negative initial impression over time. And because familiarity is generally positive, the net effect is positive.

I’m really not so sure in this case. What Soylent risks is their brand becoming a running joke. For some brands (those in the entertainment sector for example), that can work to your advantage. Comedians such as Jason Alexander (“George” from Seinfeld) have built a career on that less-than-flattering persona. Food products – especially foundational food product like this one – don’t fit that mold. If you want broad adoption (as I can only expect Soylent to desire), you need to convince the average head of family to feed this product to her children. In Soylent’s case, good luck with that.

So far, we’re probably okay on the legal front, marketing might be a wash, so what about the end game for Soylent?

Here’s where I think they can win.

Venture Capital money never flows to those companies without a clear exist strategy: Either an acquisition or an Initial Public Offering. In this case, the buzz generated from this naming strategy will likely help the company position itself for acquisition by a major food ingredient conglomerate. At which time, said acquirer will simply strip out the branding strategy, incorporate the product into its line, and reap the benefits of an early adopter population to “Cross the Chasm” to broader adoption. I’m not sure if that will be a General Mills, a Michael Foods, or a Unilever, but I give Soylent another 18-24 months on its own before it’s snapped up…or goes under.

In the meantime, if you want some, you can order it here. And remember, Soylent is definitely *not* people. Definitely.