Permission to Exploit Jennifer Aniston's Right of Publicity?

It is probably safe to assume that Channel 45 obtained permission to use Jennifer Aniston's likeness and exploit her right of publicity in promoting viewership of syndicated Friends television programs. That's a deal where everyone appears to win, Channel 45, viewers, advertisers, Aniston, and the other Friends cast members who share in the syndication royalties along with Ms. Aniston.

Last August, I noted the irony of how one of the Friends, Ms. Aniston, appears to have been singled out from her co-star friends, despite their history of solidarity as a group, to serve as the primary marketing face on billboards in promoting viewership of Friends re-runs on television. Then, this month, the above revised billboard caught my attention since it is otherwise identical to prior Aniston billboards, with one key difference. For the past several weeks, Aniston billboards in the Twin Cities have not only promoted Friends, but they have leveraged other non-Friends programming on Channel 45 too.

So, given how often well-intending companies can misapprehend the scope of rights they have been licensed, and given how some are more inclined to ask for forgiveness than advance permission, at times, what I'm not inclined to assume is that Channel 45 obtained an advance license to expand the use of Ms. Aniston's likeness and intellectual property for the additional purpose of promoting viewership of the Minnesota State High School Tournaments on Channel 45.

Since a good portion of the above billboard promotes more than viewership of Friends re-runs, I'm left wondering about the scope of Channel 45's apparent license to use Ms. Aniston's likeness.

Recognizing how carefully celebrities control the use of their likenesses, do you think Channel 45's permission covered any use of Ms. Aniston's likeness beyond promotion of Friends re-runs?

Do you agree, additional permission is required to run the above billboard?

If not, where would you draw the line?

Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness

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Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn't have to be toasted for the name to fit.

But, what if you're selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn't start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company's claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company's claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term's placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn't cut short and decided on summary judgment with a limited record, we'll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I'll have to say, at this point, "Texas Toast" sounds to me like a category of croutons -- those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza -- each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn't matter if you're the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant's use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant's first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn't likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti's mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti's claimed TEXAS TOAST mark for croutons, so it doesn't become registered prior to trial, but we'll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

  1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
  2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
  3. Is Texas Toast suggestive of croutons, because, a consumer's imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti's suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff's own description of its croutons below the jump.

Continue Reading...

How Does an Apple Sound?

I have been critical in the past of some of Apple's apparent trademark gaffes (here, here, and here), but I do like the company's products--I own two Apple computers and two iPods.  (This represents great progress for me.  In college, those of us in engineering referred to Macs as "MacIncrash" computers, having had too much experience losing data on them.)

The Unofficial Apple Weblog ("TUAW") posted some excerpts of an video interview of Jim Reekes done by the blog One More Thing (a Dutch blog).  Mr. Reekes was a programmer at Apple for eleven years or so, roughly from 1988 until 1999, and, among other things, he created the distinctive sound that nearly every Apple computer makes when starting up

In the excerpts posted at TUAW (note: there are a couple of profanities), Reekes discusses some of the history of the startup sound as well as the genesis of the name of the "sosumi" chime.  There are interesting legal aspects to both.  As Reekes notes a couple of times, the startup sound is quite distinctive--a word that signals trademark significance--yet I have been unable to locate a federal trademark registration for it.  Even so, it seems to enjoy fairly broad common law rights--enough that audiences recognized it in the movie Wall-E.  This is one trademark that Apple has gotten quite right.

The full interview is much better than the excerpts at TUAW, however it is an hour long.  TUAW also dubbed in some of the sounds under discussion, which might help the uninitiated.

I'll Huff and I'll Puff ...

Puffing, according to Black's Law Dictionary, is defined as:

The expression of an exagerrated opinion -- as opposed to a factual representation -- with the intent to sell a good or service.

Puffing, as a legal principle, has recently received a fair amount of attention as a result of Domino's new ad campaign. 

Puffing generally exists whereever ambiguous and subjective words (such as good, better, best) are used used to describe goods or services.  Some of you may recall the 3DO gaming system shamelessly touted as The Most Advanced Home Gaming System in the Universe.  This is a classic example of puffery.

Importantly, however, puffing isn't merely a verbal concept.  It also applies to visual depictions.  A rather obvious example would be the animated advertisements showing Red Bull gives you wings.   Obviously, the ordinary consumer isn't going to think that a slightly odd tasting taurine beverage is going to cause wing sprouting. 

This brings us to the million dollar question though:  Where is the line between puffing and deception?  A fair rule of thumb is that it's probably when the advertisement presents something that borders on verifiable fact which a consumer might believe.  For example, implying that your orange juice is processed by squeezing oranges directly into the carton (shame on you Tropicana) could cross the line.  Or, presenting your product as having verifiably superior leak protection when, in reality, it's comparable to the competition (ahem, Glad-lock) is a no-no.  

In the end, staying on the right side of the puffery/deception line can probably be accomplished with the old adage of  "Think before you speak."  

UPDATE:  I forgot to include one of my favorite examples of puffing:  the one-bajillion to one preference. 

And The Oscar Goes To...Overbranding?

While watching the Academy Awards on Sunday night, the winner of the Animated Short Films category definitely caught my attention. The winner was Logorama - a 16-minute French anumation created around the use of 3,000 well-known trademarks.  

The plot is described as a police chase through Los Angeles which includes a machine gun-toting Ronald McDonald who is a fugitive running from the police, played by the Michelin men.  Every inch of the picture is made up of a trademark, logo or character, instantly causing sensory overload (see a prior blog by Brent Lorentz titled Sensory Overload here).  According to Wikipedia, the creators described the film as the presentation of “an over-marketed world” where “logotypes are used to describe an alarming universe (similar to the one that we are living in) with all the graphic signs that accompany us everyday in our lives.”   During his Oscar acceptance speech, the producer opened by thanking "the 3,000 unofficial sponsors" and assured them that "no logos were harmed in the making of the project."

Talk about Logorama is heating up on the Internet with most people wondering how they got away with it.  In a brief clip, I noticed sporadic use of the registration symbol.  One blog includes a quote from one of the creators after the film aired at Sundance, noting "no brand owners had objected yet," but "we hope there is no CEO of McDonalds here tonight."   While everyone has a right to present artistic commentary, it will be interesting to see if any brand owners object now that the film has received so much press.

Another interesting tidbit - when I tried to watch a YouTube video clip on one website, it had been removed due to a copyright claim.   

Total Recall

by Randall Hull of The Br@nd Ranch®

AKA: "Oh What a feeling".

Unless you have been on a trek to one of the poles or living in a cabin deep in the woods somewhere, you have likely heard about the huge problem facing Toyota Motor Corporation and its U.S. organization Toyota Motor Sales USA Inc. Here's a quick recap just in case:

Toyota Motor Corporation began a recall in late 2009, which – as of March – totaled 8.5 million cars globally due to braking problems and accelerator pedal defects which were initially blamed on other things such as "floor mat entrapment". The initial recall included Toyota's Corolla, Matrix, Camry, Highlander SUV, RAV4, as well as Tundra and Sequoia trucks. After Toyota admitted the 2010 Prius had a design defect in its anti-lock brake system, it too joined the list, and the U.S government began investigating the automaker.

And then there's the Black Box. As in commercial airlines, automobiles have "black boxes" known as Event Data Recorders, or EDRs, which keep a data record of various things the automobile was doing a few seconds prior to and after a crash. The EDRs in Toyotas use a proprietary software which, according to an Associated Press investigation, until recently could be read by only one laptop in the U.S. In response to growing pressure Toyota has delivered three laptops to the National Highway Traffic Safety Administration with the software capable of reading their EDR data. The AP investigation also found that Toyota was not offering full disclosure about what their device did and did not record.

Discussing the legal implications and what was and was not disclosed is beyond the scope of this article and my expertise. I want to focus on how this could throttle the Toyota brand and how they can put the brakes on this situation before it spins out of control. After reading all the news releases and legal saber rattling, "Oh What a feeling" is taking on a whole new meaning for me.

Toyota has been producing vehicles since 1936, and up to now, safety and reliability has been the foundation of their brand. Yet, in the middle of all this Toyota officials admitted the company's rapid growth may have gotten in the way of maintaining the highest standards of quality control. Its the familiar company profits before customer safety scenario -- hardly confidence building.

Added to this poor communications mix, when Toyota should have reassured the world they had the recall situation in hand, they made a fundamental faux pas, overlooking the importance of not only what you say but also how you deliver the message. In January, a Toyota executive addressed television cameras wearing – gasp! – a surgical mask. Perhaps this is common in Japan during cold season, but the message was broadcast worldwide, where a cultural nuance such as this could easily be misconstrued. First, it projected a "we are in toxic triage" image, and secondly, CEO Akio Toyoda should have delivered the message – sans mask. The U.S. marketplace, particularly, does not take kindly to aloof leadership in a crisis, and quite simply, this was a crisis of confidence, where brands live or die.

This debacle holds so many lessons for brand managers and executives, alike. Primary amongst them what not to do when your product demonstrates a performance problem that puts your customers at risk. When building public trust in your product and your company, transparency followed by action is fundamental. The risk in failing to staunch eroding customer confidence is forever tarnishing your brand.

The Toyota recall, of course, is not the first time well known brands have faced a crisis.

In 1994, a professor at Lynchburg College reported a bug in the Intel Pentium floating point unit. He sent a memo to Intel reporting what became know as the Pentium FDIV bug. Intel, caught by surprise, had no crises strategy in place and chose to deny the problem. When public pressure became too great, Intel announced a recall and Andy Grove, Intel CEO at the time, offered one of the greatest mea culpas in corporate history. Although jokes prevailed for some time, the public forgave and moved on.

Johnson & Johnson had a huge headache in 1982 when cyanide-laced Tylenol in the Chicago area resulted in 7 fatalities. Johnson & Johnson took only 6 days to respond and recalled 30 million packages. At the time the incident was thought to be fatal to the company, but the public saw the action as a prime example of corporate responsibility. The final result was tamper-proof packaging on medications and Johnson & Johnson's brand intact.

Perrier recalled 160 million bottles of mineral water in 1990 when traces of benzene were discovered. Although the amounts were not considered enough to present a risk, Perrier acted to protect its reputation and was hailed as responsible public citizens.

Companies, who have dealt with critical challenges promptly and well, demonstrate how a brand can be guided through crises and emerge untarnished, if not stronger for it. A genuinely sincere apology timed appropriately will go far in winning back customer loyalty and restoring trust. Many companies have learned their customers listen most closely when they honestly admit failure.

Toyota is one of the world’s strongest brands according the Interbrand's rankings. CEO Akio Toyoda must utilize his best public communication skills and convince the public that he has taken control of this crisis. Then act swiftly and effectively. Should Toyota successfully address the many product issues, they will recover with nothing more than a bloody nose. But should they fail to resolve the problems fully, as recent reports indicate, the damage incurred may be fatal and the Toyota brand could be so severely tarnished, it will take years and millions of dollars to restore. "Oh what a feeling" that would be.

More Godin on Trademark? The Sequel

  Thumbnail for version as of 15:21, 6 September 2009  Thumbnail for version as of 14:28, 28 October 2007  Thumbnail for version as of 05:55, 3 December 2007

Last week we explored how at least some of Seth Godin's trademark advice is a bit dated.

This week, let's take a close and careful look at his advice concerning trademark registration:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

Actually, I've never met lawyers who "demand" that their clients register their trademarks. Strongly recommend, yes, and for good reason, yes, but demand, no. That is not a lawyer's role. Even inexperienced trademark lawyers know to explain the costs, benefits, and associated risks of pursuing or foregoing federal registration. Unfortunately, Mr. Godin appears to misapprehend all three.

We already have discussed the many and substantial benefits afforded to those who federally register their trademarks. These go well beyond what you have, "by the time you get to court." Indeed, in some instances, having the ® will avoid the need to go to court altogether, since the registration is actual proof of the claimed right and may be enough to move a squatter off your mark without even resorting to formal legal action. Good luck with that, if all you have done is "just ™ it." Moreover, in other instances, having the ®, can be the difference between continuing to use or expand the use of your trademark and not, so this is certainly more than "some" minimal benefit.

As to the risks, those who don't appreciate the value of a federal registration or the importance of filing prompt registration applications likely aren't aware of or don't understand this significant risk:

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application -- to see how the product does -- before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well "see how the product does" with another name.

Now, as to the issue of cost, given the substantial benefits conferred and the substantial risks avoided, when those are recognized and understood, the financial cost of a federal trademark application seems well worth the $275 governmental filing fee toward the creation of an intellectual property asset of national scope.

Last, as to Mr. Godin's assertion that federal registration "doesn't actually increase the value of your trademark," he is simply wrong, so there you go. It stands to reason that national rights are worth more than local rights. Ask any party to a franchise agreement or even their informed bankers who loan money based on them.

Without a federal registration, rights are limited in geographic scope to those areas of operation where the use has been substantial enough to generate common law trademark rights. With a federal registration the trademark owner is deemed to have used his or her mark in every sliver, corner, and county of the U.S., as of the filing date, even though the trademark may never blanket the country with their goods or services. So, one need only consider the world of franchise relationships and trademark licenses to appreciate the enormous power and value a federal trademark registration brings to the table and to the bank.

Some other time, I'll explain some of the reasons for using the ™ symbol, but suffice it to say for now, doing so confers no legal rights. So, "when you come up with a great name" and you want to use it and have the best chance of expanding that use over time, as your business continues to grow, don't "just ™ it", instead, seek federal registration at the earliest possible opportunity.

Happy Birthday Duey!

File:Candleburning.jpg

DuetsBlog celebrated its first birthday today, so that means Duey the squirrel is one year old. He has made a lot of friends over the past year (as have we), and he has come a long way (as have we) despite his exhaustion hording nuts (we haven't done any of that) for the long cold winter we had (hopefully this remains past tense).  

This is some of what Duey has observed since our inaugural post entitled Dr. No and the Parade of Horribles:

  1. Some 350 posts (part of the reason for his exhaustion);
  2. Some 530 comments (part of the reason for your exhaustion);
  3. Some 840 followers on Twitter;
  4. Some 250,000 visits; and
  5. Us, having a lot of fun . . . .

Here is a snapshot of where we were back in July 2009, and here is one from December 2009.

Thanks to our wonderful and growing group of talented Guest Bloggers, and thanks to you for your comments and interest in the conversation we have started here on DuetsBlog.

May all collaborations between trademark types and marketing types be early, often, personable, smart, enjoyable, graceful, and mutually beneficial.

Embrace Life: Raising the Bar for PSAs

For as long as I have been watching television, I have seen countless public service announcements telling me to wear a seat belt.  One series that sticks out in my recollection is the "You could learn a lot from a dummy" ads.  I think I recall these mostly because there were so many of them, and there was a modicum of character development involved--the dummies were Vince and Larry.  These were not high art, but according to the Ad Council, they were effective. 

There have been other seat belt campaigns.  Here's a PSA from the 1970's, and here's one about the inventor of the seat belt.  In the history of seat belt PSAs, there seem to be two principal categories:  humor and shock.  Often, these PSA campaigns have slogans, too:  Click It or Ticket, Drive Alive, Buckle Up . . .

Until this week, it had never really occurred to me to appreciate the artistic side of public service announcements, and then I saw the Sussex Safer Roads Partnership "Embrace Life" PSA:

I believe this PSA was unveiled a little over a month ago, and it already has more than two million views on YouTube.  The Sussex Safer Roads Partnership has a page discussing the making of this PSA and other elements of the campaign, which include the use of graffiti, which seems like a bold, novel step. 

I think that the PSA and the "Embrace Life" slogan are both home runs.  Well done!

The BAM in Obama?

The Los Angeles Times reported last week on an interesting nugget – the Missile Defense Agency’s new logo sports a blue O, a red-and-white swooping swirl, and white outlining to set the image off from a blue background. 

The logo looks like this:

Remind you of anything? Say, this:

The LA Times article remarks upon a “perceived similarity” between the two. However, I submit that what is more interesting than this “perceived similarity,” is what the blogosphere is discussing as the perceived message behind the MDA’s new logo. An official at the MDA, Richard Lehner, states that “[t]he symbolism of the design is that it shows missile defense as a global system to defend the US, our deployed forces and allies and friends, as depicted by the path of an interceptor missile and a flash (not a star) denoting a missile intercept.”

The Washington Post, on the other hand, asks “Is the Missile Defense Agency's logo Obama-meets-Islam?”, pointing out that “conservatives’ charges that a logo being used by the Pentagon’s Missile Defense Agency looks very much like a fusion of the Muslim crescent moon and star and the Obama campaign logo. Some folks even detected a similarity to the Iranian Space Agency logo.”

What I find most interesting is that, according to Mr. Lehner, the MDA began using the logo to its materials three years ago to save costs over using its previous logo. I couldn’t find any information on when the Obama logo debuted, but I’m wondering whether the blogosphere has considered the possibility that it is the Obama logo that is newer than the MDA logo. 

What do you think?