Collaborations in Creativity & the Law

When Brands Get Personal, Do They Lose Their Identity?

Posted in Advertising, Branding, Famous Marks, Marketing, Non-Traditional Trademarks, Product Packaging, Trademarks

Marketing has always been an exercise in getting consumers to make a connection with a brand.  As our friend Seth Godin once said “Marketing is no longer about the stuff that you make, but the story that you tell.”   With the widespread use of social media like Twitter, Facebook, and Instagram, those stories are getting more and more personal — and so is the packaging now.

There was the #ShareACoke campaign, with Coke cans with first names or words like “Soulmate” for you to share with a friend, family member, colleague, or stranger.   After launching this campaign, Coca-Cola says that they received about a 2% bump in sales.

Then recently Bud Light introduced cans for each of the NFL teams as part of its #MyTeamCan (a social media hashtag that seems like it could go awry any given Sunday).  Would a Bears, Vikings, or Packers colored can inspire you to buy Bud Light over Miller Light or Coors Light?  Are we going to see fantasy football team inspired packaging?

Another example is Snickers re-packaging as part of its #EatASnickers campaign.  Does anyone else wish that they made a “Hangry” one?


Contrary to the Coke and Bud examples, Snickers appears to scrub any reference to its registered mark SNICKERS and relies solely on its trade dress — the brown background with the white parallelogram with a red border and blue lettering.  Based on a brief search of the U.S. Trademark Office records, no filing has been made to protect this trade dress, importantly without the SNICKERS name.  Someone please call the logo police.

Two years ago, I wrote about a potential  trend towards de-branding packaging, but we certainly didn’t see the “silent” branding take off.  Perhaps this personalized trend and its accompanying social media is its “loud” branding antithesis.

What do you think about this trend toward personalized products, from either a branding perspective or a supply chain management perspective?  Is personalized branding just a hot trend thanks to the popularity of Instagram and Twitter?  Of the three strategies mentioned in here, which do you think works best (for me its the Coke one)?

Fallout for the “Made in Germany” Brand

Posted in Advertising, Branding, International, Marketing, Mixed Bag of Nuts

Power of German Engineering

The “Made in Germany” brand has undoubtedly taken a hit in the past few weeks. The brand, along with the phrases “German engineering”, “German engineered”, etc. have made their way into just about every advertisement for goods coming from German companies. Volkswagen made the theme part of its advertising campaign, perhaps more than any other company. It has come to signify quality, precision, and attention to detail (despite its origins as a tag of inferiority in late 19th century England). But what will the fallout be for all of those other German producers when one of the most high profile German companies takes the qualities the German brand is built on and focuses them towards cheating their customers, the public, and numerous national governments?

Pretuned in Deutschland

German Engineering on Board

The bulk of the German economy is made up of Mittelstand, or small to medium sized companies. These are not Volkswagen, Bayer, Adidas, or Deutsche Bank (which has received special funding deals from the capital markets because investors think it is the Bundesbank, talk about what’s in a name), but generally small, closely held companies that focus on doing one thing very well. Most often they make specialty tools or parts that are largely invisible to consumers so they don’t need to worry too much about how they view a mark. They invest for the long term and spend a great deal of energy building personal relationships and reputations for quality with their customers. So a knock to the German brand may not affect them too much in the short term (except for those working with Volkswagen) but could affect their ability to attract new business.

Made in Germany Stamp

Policing a brand is difficult. Mark owners spend considerable energy ensuring their vendors, franchisees, etc. adhere to standards of use, service, and production to prevent a weakening of the mark and, ideally, create a brand known for a certain quality. But how do you police a brand when that brand is an entire country? Moreover, the brand is not held by a single stakeholder, but rather by the German people. Much will depend on the response of the German public, government, and other German companies. All have been quick to condemn Volkswagen, but people are eyeing the other German car makers, as well as the other major auto industry players. With Germany in a leadership role in Europe, and increasingly globally, it may not be enough that every car maker was doing it if the other German brands get sucked in.

Perhaps this is why the emissions scandal seems to have generated so much more news and backlash than General Motors ignition switch problems or Toyota’s “sticky” gas pedals. Both of those resulted in a number of deaths directly attributable the problem and the company’s decision not to recall. The emissions cheating may have resulted in deaths, but in an abstract way in which it is impossible to connect the death of any individual directly to Volkswagen’s additional emissions. It seems to me that putting a name and face to an actual casualty tends to whip up anger more than scientific reports and estimates that are unreadable to most. Maybe we expect cold calculations regarding product recalls but don’t expect the company to outright cheat? Maybe indifference is bad but lying is worse? Or maybe Volkswagen represents Germany in a way that General Motors and Toyota don’t represent the United States and Japan.

EU Court Strikes Down US-EU Safe Harbor for Trans-Atlantic Data Transfers

Posted in Almost Advice

The European Court of Justice (the “ECJ”) ruled that national regulators in the EU can override the 15-year-old pact between the U.S. and EU known as the “Safe Harbor.” The Safe Harbor allowed companies based in the U.S. to move personal data on Europeans to U.S. based computer servers without violating the EU’s privacy laws.

The ECJ’s ruling does not order an end to the data transfers, but holds that national regulators have the right to investigate them and suspend them if they do not provide adequate protection for the personal data. European data protection regulators can now pursue companies for violations.

In anticipation of the ECJ’s decision, the European Union Commission had been working on a Safe Harbor framework to replace the framework that has been struck down by the ECJ. However, it is uncertain when or if this replacement framework will be finalized.

Companies that are relying on the U.S.-EU Safe Harbor Framework to comply with the EU Data Privacy Laws need to consider implementing a new strategy. One possibility is to adopt Model Contract Clauses, which can be set up with the EU. However, Model Contract Clauses are based on the Safe Harbor principles and can be subject to a legal challenge. The other possibility is to adopt Binding Corporate Rules. Binding Corporate Rules (BCRs) are designed to allow companies to transfer personal data from the European Economic Area (EEA) outside of the EEA in compliance with the 8th data protection principle and Article 25 of Directive 95/46/EC. BCRs are legally sound, but are more complex to establish

On Slanted Arguments and Red Herrings

Posted in Articles, Branding, Copyrights, Trademarks, TTAB, USPTO

Last Friday, both slanted arguments and red herrings were present during the 90 minute en banc oral argument before the Court of Appeals for the Federal Circuit (CAFC) in In re Tam.

The question invited by the CAFC to be addressed in Tam is whether Section 2(a) of the Lanham Act’s prohibition on the federal registration of trademarks that consist of or comprise matter that may disparage persons violates the First Amendment.

The CAFC previously had affirmed the Trademark Trial and Appeal Board’s decision in Tam upholding the USPTO’s refusal to federally-register THE SLANTS mark for “entertainment in the nature of live performances by a musical band,” concluding that when used in connection with applicant’s services, THE SLANTS would be perceived as disparaging to a substantial composite of the referenced group — persons of Asian descent, violating Section 2(a) of the Lanham Act.

After vacating that decision, now, the CAFC is asking whether Congress even has the power to refuse registration of a trademark consisting of or comprising matter that may disparage persons. And, although the court didn’t specifically ask for briefing on whether the scandalous and immoral portions of Section 2(a) must fall too under the same First Amendment theory, the lawyer for the American Civil Liberties Union, who was permitted 10 minutes of oral argument, as amicus curiae, encouraged the court to “embrace” that idea.

Although I have already shared some thoughts on the subject, here, after springing out of my chair a few times while listening to the audiotape of the Tam oral argument, I couldn’t resist sharing a few more thoughts on the subject. Some now, more later.

One of those jarring moments was when Circuit Judge Kimberly Ann Moore, the initial Tam panelist who appeared to spearhead the sua sponte Constitutional review en banc, consistent with her “additional views” appended to the original panel affirmance, asked our friend Ron Coleman (counsel for Mr. Tam) about how the court’s decision would impact the federal government’s copyright registration system.

This led to an unfortunate diversion and a substantial amount of time devoted to the purely academic question of whether Congress could amend the Copyright Act to add a disparagement provision that refuses registration of copyrights on that basis. It seems to me, this kind of question, assuming it is even relevant to the analysis, deserves far more than shoot from-the-hip responses, but since that is what was sought in oral argument, I’ll offer a few thoughts off the top of my head, instead of from the hip.

To my knowledge, correct me if I’m wrong Ron, but Congress has never forbidden and has no plans to forbid copyright registration to disparaging works of authorship, so a parade of horribles based on this fear seems misplaced. And the underlying premise and multiple suggestions during the oral argument that trademark should be treated like copyright is certainly not the law, not obvious, and the premise has multiple flaws, it seems to me.

First, copyright and trademark flow from very different origins and have very different purposes. Copyright protection flows from an express provision in the U.S. Constitution, whereas federal trademark protection flows from the very general Commerce Clause language permitting Congress to make laws affecting interstate commerce. In fact, Congress’ first attempt to create a federal trademark regime in 1870 failed, and was struck down by the Supreme Court, because it improperly relied upon the Copyright Clause of the U.S. Constitution for its authority.

Federal copyright law is preemptive and as a result States cannot seek to protect copyright under State law. Not so with trademark protection, there is no preemption, so States are free to and do protect trademark rights at the State level.

Moreover, a prerequisite to any enforcement of a copyright is federal registration, but again not so with trademarks, unregistered marks may be protected by the States at common law.

Moreover, in terms of Congress’ legitimate interest in discouraging all sorts of confusion in the marketplace, it is reasonable and accurate for the public and potential consumers to infer governmental approval of a trademark when the federal registration symbol (®) is used, because it is unlawful to use it without first having obtained a Certificate of Registration for the mark in question. But again, not so with copyright — there is no prohibition on the use of the copyright registration symbol (©) and there is no registration requirement in order to use it.

In terms of the governmental speech argument there are material differences there too. A trademark registration certificate, when issued by the federal government has its name and fingerprints all over it, positioned immediately adjacent to the approved mark in question. On the other hand, when a copyright registration issues, the material subject to copyright protection does not appear anywhere on the certificate, nor is it even attached to the certificate.

So, to suggest that all forms of IP (copyright, patent and trademark) should be treated the same ignores the careful balance that Congress struck over the last century and longer in legislating unique protections and limitations for each form of intellectual property.

There is so much more to say, but I’ll have to circle back for the rest later, sorry duty calls.

Designers vs Inventors

Posted in Branding, Fashion, Idea Protection, Infringement, Marketing, Mixed Bag of Nuts

Aaron Keller, Managing Principal, Capsule

Design as a way of thinking is popular enough to have made it into the hallowed halls of McKinsey Consulting. We couldn’t be more pleased to see a discipline we’ve been practicing for one and a half decades featured, it puts our methods and thinking in great demand.

But, and this is a big cigarette butt, smoldering on the sidewalk. We have always wanted to distinguish between the practice of design and the thinking methods of design. Being a practitioner of design means you have gone deep on one specific design discipline (architecture, product, fashion, digital, etc.). Being a design thinker means you’ve spent enough time in each of the disciplines or have had specific training on the methods of thinking woven through all these disciplines.

Then, we see this report coming from The Business of Fashion and for some reason it seems to relate to McKinsey’s broad overview of a design driven culture. One of the designers, Maryam Nassir Zadeh, is conducting some “intellectual property shaming” in social media against Mansur Gavriel, a design team they claim to have copied their Mule Sandal.

Screen Shot 2015-09-30 at 4.37.54 PM















You may wonder why this matters. Why would a designer threaten another designer over something that most of us would say is not unique enough to own? And, yes, we agree it is a defensive move and doesn’t contribute to the value of design.

Yet, here is the larger story to consider. A designer as a copier of other styles is certainly not respectful. And, for us, it brings up the word “inventor” versus “designer.” We have found over the years we have evolved from being designers of things to being inventors of solutions. The distinction is about being distinct. Sometimes design can be defined as a thoughtful refinement of an existing idea. Invention is more correlated to making a distinct solution.

This is where you’re thinking, are you just splitting hairy words? Perhaps, but this is where design thinking makes a contribution far beyond the individual practice of designing. We, as thinkers, believe the solution should be invented and not seek to achieve distinctiveness, but rather be distinct. The more ownable the better for any design and we often start projects with patent, trademark or copyright metrics mingled into our big hairy objectives. Again, this might be splitting the phrases “inspired by” versus “copied from” but we see this as an important part of properly respecting the discipline of design thinking.

Now, this is where you come into the conversation. If you’re reading this blog on intellectual property, you’re self aware enough to know when something feels too close to an “inspired by” design the team looked at research. There are three things you can do. Raise your hand and send out an email and make sure people get it, identifying the IP proximity issue. Create a digital trail to document your objections. Last, push your team to invent new versus design from something already in the world.

Plus, who wants to get into a social media, passive-aggressive slam fest with the nearest design? Frame up the effort as an invention of something new versus a refinement of something already. Spend more time to be more unique. Here’s how it starts, “we need to reinvent the Mule shoe for our design portfolio.” This is in contrast with, “we need a Mule shoe for our line, go design.”

Apple and The World’s Most Public Privacy Policy

Posted in Advertising, Branding, Contracts, Marketing, Search Engines, Technology, Trademarks

It bears mentioning when one of the world’s most famous brands releases one of the world’s most prominent and readable privacy policies. That’s just what Apple did this week, and the message to other brands is clear – privacy policies can be a massive marketing opportunity, not just an obscure legal nuisance.

Every business that interacts with its customers and obtains customer data needs a privacy policy. It informs customers about how it will collect, use, share, and protect the consumer data it collects from them. Many sweep their policies under the rug, and we’re all familiar with the fine print links at the bottom of most websites. Like many clickwrap agreements or other terms and conditions, virtually no consumers read privacy policies, and few are aware of what they agree to when they provide their data to these businesses.

Apple unveiled a new privacy policy this week that turns that concept on its head. Starting with a letter from CEO Tim Cook, the new policy covers all of Apple’s activities and interactions with customers. It is clear, informative, and — most importantly — readable to the average consumer. In fact, as many commentators have noted, Apple actually wants consumers to read the policy. (I should note that Apple’s website — as opposed to its activities more generally — still uses a more traditional, verbose privacy policy.)

Screen Shot 2015-10-02 at 7.44.59 AM

This is a bold step in getting consumers’ attention. And not surprisingly, the tech press has warmly welcomed Apple’s new policy. It’s also a shot across the bow at companies like Google that rely on consumer data as a facet of their monetization strategy (very broadly speaking, Google uses targeted advertisements for much of its revenue, while Apple relies chiefly on its physical products)

As web services continue to broaden their reach, just about every brand owner can take a page out of Apple’s book. This new policy speaks to the importance of a thorough and well-thought out privacy policy, not just for legal compliance reasons but also to support your brand. A privacy policy is not only a legal document — it’s also a marketing strategy.

Successful brands build trust with consumers and encourage transparency, and a readable, forthright privacy policy is a great way to do that. As more and more data breaches occur in the marketplace (most recently, for example, the T-Mobile / Experian breach), it is critically important to inform consumers of what you do to protect their data, not just for legal reasons, but to inspire trust in your brand. This is particularly important in industries where consumers may not be familiar with the businesses’ inner workings (ask someone on the street where “the cloud” is located).

Now may be a good time to ask: is your policy mere boilerplate, or, like Apple, does it work to shape your brand?

Clouding Up Trade Secret Protections

Posted in Almost Advice, Idea Protection, Loss of Rights, Technology

“The cloud” can refer to a lot of things, and is frequently a misunderstood concept. While cloud computing can encompass a number of Internet-based functions, in its simplest form, “the cloud” merely refers to the use of remote servers for data storage, processing, and management. Usually, the remote servers are hosted by a third party cloud service provider. The cloud service provider stores and maintains the physical servers that users access remotely. So essentially, cloud computing is the use of someone else’s server, located somewhere else, to do something on your local computer. Dropbox and Google Docs are common examples of cloud storage. As another example, software like Adobe Photoshop can be provided over the cloud, rather than requiring a user to download it locally.

Many businesses have taken to the cloud in recent years for their processing, storage, and other needs. Cloud platforms provide several benefits over more traditional, local, computing. For example, a business can increase its cloud storage space easily and fluidly, without the need to purchase and store physical drives.

Along with the benefits, however, cloud computing brings new concerns as well. One issue may be the incompatibility of the cloud with trade secrets.

A trade secret, as defined by the Uniform Trade Secrets Act, is information that is (1) secret; (2) valuable because it is secret; and (3) subject to reasonable efforts to maintain its secrecy. The Coca-Cola formula, for one. Disclosure of a trade secret to a third party can, in many cases, render the information no longer protectable as a trade secret. If Coca-Cola were to disclose its secret formula to an outsider, it may no longer be able to protect it as a trade secret in a suit for misappropriation, for example. Generally, unless subject to a confidentiality agreement, the disclosure of a trade secret to a third party can render the information no longer protectable.

So the question becomes: is a cloud service provider a third party? When a trade secret owner stores a trade secret in the cloud, and effectively “discloses” the information to the cloud service provider, has secrecy been lost? Courts have not had a chance to answer this definitively. The outcome may hinge on the often boilerplate Terms of Use agreements associated with cloud service providers. Unfortunately, such agreements often disclaim any liability on the cloud service provider for loss of confidential information. This may render it difficult for trade secret owners to argue that secrecy was not lost and that reasonable efforts to maintain secrecy were exercised for trade secrets that are or were at any time stored in the cloud.

In order to avoid the potentially harsh consequences of defending the trade secrecy status of information stored in the cloud, Professor Sharon Sandeen of Hamline Law School offers practical advice for trade secret owners to consider. For example, while a business might place a majority of its storage in the cloud, it might consider maintaining any proprietary information separately and locally. And ideally, a business or other trade secret owner may want to seek an express confidentiality agreement from the cloud service provider.

While businesses looking to the cloud for storage and other services should keep trade secret protections in mind, the cloud can still be a useful addition to many business’ computing needs.

When Over-Breadth Can Bite You Like a Lynx

Posted in Almost Advice, Articles, Branding, Marketing, Trademarks, USPTO

While lynx may not be generally known for having a ferocious bite, they do have sharp teeth and I’m sure they can inflict serious pain when they do decide to attack.

In the same way, while breadth can be a good thing when it comes to how a brand owner recites its services in a registration application, there are and must be limits, and when the obvious ones are ignored, especially given the clear and preexisting landscape of third party registrations, the USPTO might be inclined to, let’s just say, at least show its teeth.

For example, you might wonder, what might happen when someone files a multi-class, intent-to-use federal trademark and service mark application, claiming a bona-fide intent-to-use the applied-for mark in connection with an exceedingly broad description of goods and services covering nine different classes, including over-breadth examples like “education and entertainment services” in Int’l Class 41?

Let’s just say, you might get a close up view of the USPTO’s choppers, in the form of a 115-page Office Action, complete with 30 prior registrations cited as the bases for likelihood of confusion refusals, along with 11 more potential likelihood of confusion refusals if those prior-filed pending applications mature to registration.

We know this to be true because earlier this month the USPTO refused registration of the LYNX TECHNOLOGY trademark and service mark application with this warning:


Some of the prior entertainment service mark registrations cited as the bases for likelihood of confusion refusals involving Int’l Class 41 included:

  • MINNESOTA LYNX for rendering live basketball games and basketball exhibitions;
  • AUGUSTA LYNX for providing professional hockey exhibitions;
  • OTTAWA LYNX for entertainment services in the nature of baseball exhibitions;
  • LINXX ACADEMY for martial arts instruction; and
  • RUFUS LYNX for entertainment services in the nature of personal appearances by a costumed mascot at basketball games and exhibitions.

Goodness, there are more federally-registered LYNX marks for entertainment-type services than there are living species of the Lynx genus, but when there is no limit to the claimed “entertainment services,” you still get a brush with the USPTO’s teeth.

The fact that the MINNESOTA LYNX professional women’s basketball team name and mark can peacefully coexist with RUFUS LYNX, the mascot for the men’s CHARLOTTE BOBCATS professional basketball team, doesn’t open the gate to other LYNX marks without any limitations.

Word to the wise, spending a little extra time on the front end, carefully crafting an application with reasonable scope, can save lots of time on the back end, especially after the USPTO has had to work overtime examining an over-broad application, and growling all the while doing so.

By the way, and on a more positive note, hearty congrats to our own Minnesota Lynx for winning their bid to play in the finals for the WNBA national championship.

Maybe Rufus will be invited to help cheer our Lynx on to victory!

Content Infringement in the Age of Social Media

Posted in Copyrights, Guest Bloggers, Infringement, Mixed Bag of Nuts, Social Media

Debbie Laskey, MBA

These days, as newspapers and magazines are on the wane, it seems as if anyone who can write has become an online journalist to promote his or her area of expertise. In social media lingo, the title is now known as a “blogger.”

According to Wikipedia, “A blogger is a person who keeps a blog as a major activity in his or her life…Many blogs provide commentary on a particular subject; others function as more personal online diaries; others function more as online brand advertising of a particular individual or company. A typical blog combines text, images, and links to other blogs, Web pages, and other media related to its topic. The ability of readers to leave comments in an interactive format is an important contribution to the popularity of many blogs.”

Since a blog is an important element of an overall social media marketing plan that may include sites such as Facebook, Twitter, LinkedIn, Instagram, and Google Plus, it’s important to consider how the blog’s theme and content reflect a business’ or individual’s brand. Does the blog’s voice reflect the brand in a consistent manner? And, most importantly, who reviews the content before posting it live? Does only the Marketing Department review the content? Or, do the Public Relations, Technology, and Legal Departments also review the content?

There are some actions you can and should take to protect your content. First, set up daily alerts with Google Alerts and TalkWalkerAlerts with keywords such as your brand or brands, business name, and blog title. This way, you will receive immediate notification when and/if your content appears on an unknown website. Second, check out the US Government’s copyright site to answer a myriad of questions about copyrights for online content. And third, make sure to add a copyright symbol at the end of all blog posts and on all web pages.

In the words of Oleksiy Synelnychenko of IP WatchDog, “Under the DMCA or Digital Millennium Copyright Act, all content published online is protected under copyright law [because] any content, no matter the form it takes (whether digital, print, or media), is protected under copyright law.”

So, keep up the great writing, aka, blogging – just do your due diligence to protect your content.

Easy Registration Refusal, See Park ‘N Fly

Posted in Articles, Branding, Infringement, Marketing, Trademarks, USPTO

Trademark types know all about Park ‘N Fly, whether they travel or not. That’s because it is more than a nearly fifty year old airport parking and travel service brand and federally-registered service mark, it is short-hand for a famous U.S. Supreme Court trademark case from 1985.

In that decision, the Supreme Court recognized the importance and power of federal registration, ruling that after a registration has become incontestable, someone accused of infringing that federally-registered trademark may not defend itself by arguing or otherwise attempting to show that the registered mark is merely descriptive. Such a defense is simply no longer available. So, good luck overcoming this registration refusal, EZ ParkFly, issued two weeks ago by the USPTO.

One of the added benefits of federal registration is that the USPTO helps out on trademark enforcement, and to some extent, does the trademark owner’s bidding in keeping the Principal Register clear of confusingly similar marks, as demonstrated by the EZ ParkFly registration refusal referenced above. But, when the USPTO doesn’t do the trademark owner’s bidding, and no registration refusal is issued, then the trademark owner needs to step up and oppose, so that is exactly what Park ‘N Fly did a few months ago in opposing registration of this mark:




Who do you think wins this one? Are you surprised the USPTO didn’t refuse registration based on the decades old incontestable Park ‘N Fly registration?

I suspect it is no accident that the applicant is using different coloration of the word PARK and the word FLY to provide a graphic separation of those adjacent terms, for reasons that appear likely motivated by the point of this post.

The question remains though, will that be enough to avoid likelihood of confusion with Park ‘N Fly? It’s kind of hard to interject graphics when the mark is spoken, right?