Collaborations in Creativity & the Law

The RedBox Mark Has Gone to Waste and 3 Quick Lessons to Learn

Posted in Dilution, Famous Marks, Infringement, Loss of Rights, Trademarks

The RedBox brand continues to dominate the movie rental market. For the uninitiated, RedBox is a brand of movie and video game rental vending machines placed in convenient locations like grocery stores, gas stations, and fast food lobbies, like the one below:


However RedBox’s commercial success hasn’t stopped the brand from going to waste – literally, that is. On a recent walk through Minneapolis, I happened across this monstrosity:


We’ll get the easy jokes out of the way first: No, this isn’t the RedBox for movies on LaserDiscs and VHS tapes; and no, this isn’t the RedBox where you go to rent box office bombs like Gigli, John Carter, The Lone Ranger, and whatever Alvin and the Chipmunks 4 through 7 will be called.

Instead this is a run-of-the-mill waste dumpster targeted primarily toward use at construction sites. There is one unique attribute though if you pay enough attention: the little attached box that includes space for a portable restroom. This combined service is allegedly a game-changer when it comes to efficiency according to the redbox+ website:

The redbox+ system gives you two services with one call. No more needing to use two different vendors for your roll-off and portable toilet needs, you don’t make two phone calls, you don’t get two invoices and best of all you keep your crew on site with a service that they need.

Normally the use of an identical mark with a plus sign would be cause for alarm. I don’t expect to see McDonalds+, Microsoft+, or similar marks used by others any time soon. However it seems unlikely that RedBox the rental service can take any action. The reasons why provide us with three quick tips regarding trademark infringement and adoption of strong, protectable trademarks:

  1. “They stole my name” doesn’t work if the goods or services are so unrelated that no consumer would likely be confused. It’s a stretch to think that a dumpster and toilet business would be connected to an entertainment vending machine, so an infringement claim would be an uphill battle.
  2. Starting with a commercially weak mark will entitle your brand to a narrower scope of protection. By the time the RedBox movie brand was registered, there were a number of other RED BOX marks already registered in connection with various goods and services, including toys and games, fiberglass pipes, tape, printed publications for business topics, and sound equipment. This widespread use in connection with other goods also makes a dilution claim less plausible.
  3. Notwithstanding the above, the best legal approach isn’t always the best marketing approach. Marketers and trademarks lawyers both understand the friction between beginning with a strong, unique, distinctive trademark – it is easier and less costly to protect and enforce and provides the owner with broader rights. However it takes longer to educate consumers about the product (what’s a Xerox, anyway?). But having a name that directly communicates something about a product has marketing appeal, either by telling the consumer about the product itself, or making it more memorable in the marketplace (“Look, it’s one of those RedBox things!”). Walking that line can be tough, but RedBox is an example of having a good product that can become a widespread commercial success, even if the mark isn’t the next Apple or Microsoft.

What’s the Story with STORIES?

Posted in Genericide, Patents, Social Media, Social Networking

Instagram recently released a new feature called Instagram Stories, which allows users to curate a collection of photos or videos of moments to share with friends for them to view, but then it disappears after a day.  The thing is Snapchat, a competing photo sharing app, already had a feature called Stories, which allows users to curate a collection of photos or videos of moments from the past day to share with friends for them to view.  Mashable has a nice post comparing the two features and identifying some of their differences.

So, can Instagram have Instagram Stories and call it that when Snapchat Stories already exists?

The answer, as it often is in the law, is “it depends.”

On the trademark side, neither Snapchat nor Instagram seems to have filed a trademark application for their respective Stories marks, with or without their house brand.  Notwithstanding that though, Snapchat has been using Stories since at least 2013 and would have prior trademark rights to STORIES over Instagram, which was just released this year.  However, they would only have those rights if STORIES actually functions as a trademark, rather than being a generic term.  A trademark can be generic if it becomes the common word or term used to identify a particular product or service regardless of source.  Examples of this include aspirin or elevator.   Trademark owners risk their trademarks becoming generic by their own improper use of the mark, like by using the mark as a noun rather than an adjective next to a generic term for a product (e.g. KLEENEX® tissues).  They can also become generic by failure to properly police the use of the mark by consumers or the media.

There could also be some issues for Instagram on the patent side.  Snapchat owns at least U.S. Patent No. 9,026,943, which has the following claim:

1. A computer implemented method, comprising:

allowing a user to access a user-controlled social network profile page with posts in a specified order;
permitting a user to traverse an interface element across the posts in the specified order to establish a set position for the interface element;
providing access to posts on a first side of the set position for the interface element to define a viewable profile; and
blocking access to posts on a second side of the set position for the interface element to define a non-viewable profile, wherein blocking access to posts includes blocking access to posts observed by social network members associated with the user, while the user has access to posts on the first side of the set position and the second side of the set position.
If Instagram’s Instagram Stories feature practices each and every element of this claim, it would infringe Snapchat’s patent, assuming of course that the patent is not somehow invalid – a defense that would certainly be brought by any alleged infringer.  It’s also possible that Instagram designed its Instagram Stories feature around claims of Snapchat’s portfolio, which may explain why the order of displaying friends’ posts to a user is different and other differences between the apps.
Instagram is owned by Facebook, which has a history of mimicking features of Snapchat in its applications as this article from 2014 discusses (see this 2016 update as well).  We’ll have to wait and see if this is the final chapter of this ongoing saga between social media app giants.

One Hot Buzzword in Marketing: Integration

Posted in Advertising, Marketing, Mixed Bag of Nuts

– Jason Sprenger – President, Game Changer Communications

Integrated marketing has caught fire over the last couple of years.  In short, this refers to the concept of an organization working with one outside agency on more than one (or all) of their marketing disciplines (including PR, advertising, graphics/digital, social media, CRM, lead generation, SEO and possibly others).  Back in the day, organizations used to have an ad agency, a PR firm, etc. in order to find the best fits for them in each area.  But lately the trend has been that they’re going more to one agency for many or all of their needs – and that firms have been adding integrated capabilities to try to grab more business from their existing clients.

There are a few reasons for this trend, and they relate to various efficiencies that can be realized from the client side:

  • If an organization turns to one partner for more than one need, then they only need to ramp them up once versus onboarding or ramping more than one organization separately.  Day-to-day communication is often easier.  And, with fewer cooks in the kitchen, work can get done in a more streamlined fashion.
  • Because of the operational efficiencies above, work can sometimes get done cheaper.  So an organization could spend a bit less to have one outside firm doing multiple things than it would take to have more than one outside firm doing those same things.  In an era when we’re all trying to do more with less, this is a compelling argument.
  • It’s just simpler to manage one firm and team of outsiders than it is to oversee more than one.

For these reasons, on the whole I’d say integration has a lot of upside and is well worth considering as an option for staffing and executing in these areas.  There are a few things to keep in mind though, things that I think could be strong arguments against integration if not considered and worked around:

  1. Where does the strategy lie? Who owns the client relationship?  There’s been a massive land grab in recent years, with ad agencies, PR firms and the like competing to not only add more integrated capabilities but then to also show that they’re the ones that offer the best integrated solution.  These arguments are a dime a dozen, but ad agencies often win out and get control of the strategic side and client relationship simply because their budgets are larger.  This might not be the best result; the primary factor in the quality of the agency and team, and then the work product they will deliver, is on the strategic side of the equation.  Who can see the big picture of your business, and who understands the elements of communication in the best way to help you achieve your organizational goals?  In my experience, this is where PR can have a leg up on the rest.
  2. Are the integrated agencies really the best fits, with the particular talents, that an organization needs? In the process of checking boxes so that firms can call themselves integrated, they are adding talent in new arenas to flesh out their capabilities.  But are those people truly good at what they do, and are they right for you?  Can they help you strategically achieve your organizational goals?  How is that firm’s flavor of integrated marketing specifically suited to help you move forward?  It might not be the best solution in that way.  For example, there are more boutique agencies and independent consultants today than ever before, and each offers a specific set of expertise that might match up really well with what you need.  You might not get the financial efficiency noted above, but for a little more spend you might receive a much better work product too.  In other words, you might get what you pay for…
  3. Are the integrated agencies really cheaper or more cost-efficient in your particular case? The newer, more integrated firms have added talent, but that also means they’ve added overhead and other operating expenses that they are passing onto their customers in the form of higher hourly and overall rates.  While there might be efficiencies realized in having things under one roof, they could be canceled out if you’re paying a higher overall or blended rate than you would be if you had other teams with other rates on board.  It depends on the situation whether or not this would apply, but it could.

There’s a lot to keep in mind when considering an integrated marketing approach for your organization, and as such it should be carefully and thoughtfully done.

Worthwhile Uncomfortable Conversations

Posted in Agreements, Articles, Branding, Contracts, Copyrights, Law Suits, Marketing, Trademarks

Seth Godin wrote this past weekend about joint ownership of creations:

“Before you create intellectual property (a book, a song, a patent, the words on a website, a design) with someone else, agree in writing about who owns what, who can exploit it, what happens to the earnings, who can control its destiny.”

We couldn’t agree more that having a written agreement in advance is far better even if there is a risk of an uncomfortable conversation to secure it.

Making sure you’re on the same page, at the outset, or working through differences on the front end, is one important key to a successful relationship.

It’s worth keeping in mind too, that when the creations are subject to copyright protection, the word “joint work” has a special meaning in the law.

A “joint work” is “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”

Joint authorship of a joint work can be a messy proposition, because creating a joint work means that each author owns an undivided interest in the entire work. So, any of the joint authors and owners have the legal right to exploit the joint work without the permission of the others, but if profits are realized, there is a duty to share those profits with the other joint owners.

This can be a bit confusing to those who haven’t been down this road before either, since it is surprising to some that the various contributions forming a joint work need not be equal in effort, value, or importance.

Depending on what your particular contribution happens to be, you may be not only surprised, but down right disappointed to learn, after the fact, about the legal consequences of creating a joint work.

Thanks Seth, for raising this important issue about intellectual property ownership.

The Olympic Branding Blackout

Posted in Advertising, Branding

Has there been a more constant presence at the Rio Olympics than #brands? I saw it everywhere, from the Polo-branded opening ceremony garb (met with the requisite outrage) to Michael Phelps’ “MP” branded swimwear (of questionable durability).

So it came as a huge surprise to learn the Olympics has a very specific rule regarding branding – “Rule 40” of the Olympic charter. Rule 40, ostensibly designed to protect against “overcommercialisation,” limits athletes, coaches and other participants from appearing in advertising and other marketing, including social media posts, without the IOC’s permission. More significantly, athletes are banned from wearing clothing with logos of non-Olympic brands from July 27 to August 24 of the Olympics.

One compelling example of Rule 40 in action was Emma Coburn, who won bronze in the 3,000 meter steeplechase recently. Coburn is sponsored by New Balance, but wore a Nike uniform as per USA Track & Field’s sponsorship agreement. Coburn could wear her N-branded spikes, but Rule 40 prohibited her from even mentioning New Balance on social media or in press interviews.

When she won the bronze, however, she took the liberty of removing her New Balance spikes and tied them together around her shoulder.

The resulting photo meant, Rule 40 be damned, Nike was forced to share the spotlight:

Goes to show that the Olympic motto remains alive and well: “Faster, Higher, Stronger, #Brander.”

Welcome to the Hotel Chicago Dispute

Posted in Branding, Famous Marks, Law Suits, Marketing, Trademarks, USPTO

Although not the title to an Eagles’ song like “Hotel California,” Hotel Chicago is in the news as it is at the heart of a trademark dispute.  As I was booking a room at the Fairmont in Chicago for next month, I must admit I thought for a second about changing my reservation to the Hotel Chicago Autograph Collection hotel by Marriott to see what all the fuss is about.

LHO Chicago River, LLC (“LHO”) owns Hotel Chicago, a boutique hotel that is part of Marriott’s Autograph Collection hotels.  Shown below.

LHO is suing Joseph Perillo, Rosemoor Suites, LLC and Portfolio Hotels & Resorts, LLC (collectively “Defendants”) who opened a new “Hotel Chicago” on Jackson Boulevard in Chicago.  It is located near LHO’s Hotel Chicago.

Earlier this year, Defendants filed two intent-to-use applications for the HOTEL CHICAGO mark.  The first intent-to-use application was for the words HOTEL CHICAGO at U.S. Serial No. 86/910,607.

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Champagne Velvet – A Brand Resurrected

Posted in Branding, Mixed Bag of Nuts

I was in Indiana this past weekend and, as per my custom when in the Hoosier State, I went to pick up one of my preferred Hoosier brews. Right near the Upland Dragonfly was a six-pack of Champagne Velvet with a scribble at the bottom saying “A Legacy Honored by Upland Brewing Company.” I’d heard of Champagne Velvet and it’s revival by Upland and was intrigued. In spite of the name I decided to try it. Actually with a name like Champagne Velvet I would have had to try it regardless.

Champagne Velvet

Now in my humble opinion, Champagne Velvet sounds like the color of a Buick or the name of a not so classy nightclub. I’m pretty sure that I would advise most brewers away from naming one of the creations “Champagne Velvet” (though as I noted above, I’d have to try a beer named Champagne Velvet just to find out). But this particular brew dates back to the turn of the 20th Century and I’m willing to bet that naming conventions were a bit different back then. And I will reiterate, there is some odd appeal to the name, even if it is just an overwhelming curiosity.

I brought my find back and asked my grandma if she knew Champagne Velvet. She immediately said that it was out of Terre Haute, Indiana and one of the beers that my grandpa used to drink until the brewery shut down in the 50’s or 60’s. This was back before the dominance of Miller and Budweiser, when regional and local breweries reigned. Champagne Velvet was akin to Grainbelt in Minneapolis, Narragansett in New England, Stroh’s in Detroit (there’s also a Stroh’s ice cream, by the way), or National Bohemian in Baltimore. Most of these breweries either folded or were consumed by the growing giants of today’s beer landscape through consolidations, mergers, and acquisitions.

Champagne Velvet 2

The Terre Haute Brewing Company, the old brewers of Champagne Velvet, was once the seventh largest brewery in the United States. Terre Haute was a major brewing and distilling city due to its proximity to the raw crops involved and railroad links. In 1990’s a worker cleaning out the old brewery came across a notebook and sold it to a local Champagne Velvet enthusiast. That notebook, it turns out, had the original Champagne Velvet recipe. Fast forward to a couple of years ago and Champagne Velvet it once again on the shelves. It was popular in its first life and appears to be pretty popular on its second go around.

It’s actually a pretty great beer. Beer Advocate gives it an 80 (out of 100). Keeping to lagers and pilsners (as Champagne Velvet is a pilsner) the Beer Advocate score for some other beers are: Budweiser – 58, National Bohemian – 70, Stella Artois – 71, Grain Belt –  76, Yuengling – 77, Pilsner Urquell – 82. The fact that it’s a true resurrection (they are using the original recipe) and it’s brewed by a local brewery like the good old days makes the return that much sweeter.

So the next time you find yourself in the Hoosier State (or somewhere that Upland distributes) grab some Champagne Velvet and toast to true brand resurrection. Or just enjoy a good pilsner.

Stealth Marketing: How Marketers Use Emotions To Sneak Their Messaging Past Your Brain’s Filters

Posted in Advertising, Branding, Guest Bloggers, Marketing

-Mark Prus, Principal, NameFlash Name Development

When your brain uncovers new information, it says: “You Shall Not Pass!” Fans of “The Lord of The Rings” will recognize this as Gandalf’s quote (https://youtu.be/V4UfAL9f74I) or perhaps will recall its use in the “Forgetting Sarah Marshall” movie (https://youtu.be/l7Z05Fq2f58).

Your brain applies this gatekeeper logic to prevent itself from being overloaded by irrelevant information.  Just imagine if you had to pay equal attention to every single stimulus the brain receives…you would be overwhelmed in minutes.

The brain has a well-defined way to deal with information from the environment**. It has strict criteria for allowing incoming information to flow and it effectively uses a three-stage process to filter out irrelevant information. Like the famous “Bridgekeeper” from the “Monty Python and the Holy Grail” movie (https://youtu.be/pWS8Mg-JWSg), the brain requires that information meet three challenges before it is stored in long term memory (and not forgotten).

Stage 1: Sensory Registration – This system filters incoming environmental information to determine how important it is. In milliseconds, the brain evaluates the sensory input and relates it to the individual’s past experiences to decide what to do with it. Most of the time it decides the input is unimportant so it ignores it. This is how you can read a book while your spouse watches television. But this system can also save you because it gives dangerous stimuli (like a gunshot) maximum focus and attention.

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Can Starbucks Tolerate Cannabis Parody?

Posted in Advertising, Articles, Branding, Dilution, Famous Marks, Fashion, FDA Approval, First Amendment, Food, Infringement, Law Suits, Marketing, Trademarks

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:

StarbucksCannabisOne of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.

It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.

Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.

Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?

Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?

In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?

With 5,000,000 Registrations in the Books, What’s Next?

Posted in Trademarks, USPTO

Two months ago we discussed the impending issuance of U.S. Trademark Registration Number 5,000,000. That milestone has now come and gone, with Reg. No. 5,000,000 issuing on July 12, 2016. Ladies and gentlemen, I give you, COASTAL TACO BAR + CHILL:

5 million certificate

With the high failure rates of restaurants, there is a fair shot that Reg. No. 5,000,000 doesn’t make it to through a full registration term, but maybe I’ll see surprised. Besides, there could easily be a less interesting winner – at least this mark is registered on the Principal Register! Based on the restaurant’s website, I’d eat there if I ever find myself in Cleveland. Plus, it fills the combo Mexican restaurant/Yoga studio void that consumers have struggled with for decades.

Of course, if downward dogging it into a frozen strawberry margarita isn’t your thing, you won’t have to wait too long for a new milestone to celebrate. Since July 12, the Trademark Office has been issuing new registrations at a rate of about 4,800 per week. At that rate, we’ll be celebrating Reg. No. 6,000,000 in no time – August 2, 2020 to be exact.