DuetsBlog

Collaborations in Creativity & the Law

Beretta, (No) Thank You Very Much . . . .

Posted in Advertising, Articles, Infringement, Law Suits, Marketing

Apparently Elvis Presley was a well-known Beretta gun owner during his life, so I suppose his lips might have uttered the words “Beretta, thank you very much.” The King’s estate, however, isn’t thankful about an Elvis-themed advertising campaign designed to promote the sale of Beretta firearms.

Ad Law Access reports that Elvis Presley’s Estate filed suit against Beretta for the ad below and other activities:

Guns.com’s report is here. And, here is a link to a pdf of the complaint filed in federal district court in the Western District of Tennessee.

In the end, will Beretta be singing “Don’t Be Cruel,” “Heatbreak Hotel,” or “Jail House Rock,” while the Estate is singing “Don’t“?

An Utterly Disingenuous Post About The Resolutely Hyperbolic Nature of Legal Writing

Posted in Mixed Bag of Nuts

During my time at Beloit College, I spent too much time playing frisbee golf, drinking Keystone Light, and getting mad at Ryan Schur and Chris Deszynski while playing FIFA 2005 even though I knew their only purpose in playing the game was to trash talk me until I snapped.  But I did learn a few things from the excellent writing professors at Beloit and an important one is that it is better to “show” the reader something than “tell” them.  For example, I can just tell you that I’m one of the most heroic and successful people you’ve ever met or I can let you arrive at the same conclusion by writing that, in the last week, I have won four NBA championships (with the Knicks!), saved Seattle from an overzealous government organization (with good karma!), and qualified for the Champion’s League with Brentford F.C. (almost impossible, just ask Brentford fans).  Do you see how you might be suspicious that I was a hero and a success if I just told you, but you truly believe it because I showed you?  That’s the power of showing, not telling.

And lawyers screw this up all the time.  We (meaning other lawyers, not me — I’m using the “Throw Other People Under the Bus We”) love to tell, not show.  Just yesterday, a brief filed by an opposing lawyer mentioned my client’s “outrageous behavior,” called every argument I made in my brief “untenable,” said that I had “utterly failed” to explain why I should win, and concluded by arguing that he should win because “enough is enough.”  For those of you who aren’t litigators, I can assure you that this brief is in no way a rare occurence in the profession.  It is the rule, not the exception.  But if you were able to stay awake while reading our briefs, I think most rational people would think that I should probably win on three of the issues we are arguing about and he should win the other — and my guess is that we both know that.  And I doubt you would find that my client’s behavior was “outrageous”, that I had “utterly failed” in my brief, or that the doctrine of “enough is enough” had to be invoked because the opposing lawyer only told the reader these things.  He didn’t show them.

So why do lawyers do this?  Judges hate it, I hate it, and they would for sure get a B- from Shawn Gillen for that type of writing.  (Talk about an unholy trinity of people you shouldn’t make mad!)  My guess is that it’s a combination of unsavory factors: a little bit of everyone-else-does-it-that-way, some he-wants-to-be-a-bulldog-lawyer-well-I’ll-show-him-who-the-real-bulldog-is, a dollop of old-fashioned laziness because it is easier to say the other side is full of it than to show that they are full of it, a sprinkle of the judge-is-going-to-think-his-case-is-better-unless-I-act-just-as-outraged-as-him, and finally the fact that your client really likes it when you say mean things about the other side.  None of these reasons make sense to me and I’ll keep trying to show, not tell.

Has Brand Jordan Stepped Out of Bounds?

Posted in Branding, Fashion, Guest Bloggers, Mixed Bag of Nuts, Trademarks, TTAB

- Draeke Weseman, Weseman Law Office, PLLC

In 1984, Nike needed an NBA superstar. Magic Johnson and Larry Bird wore Converse brand basketball shoes, as did most of the other major NBA stars. Adding to the pressure, Nike sales were in general decline as Reebok was dominating the broader fitness shoe market with its white aerobic shoes.

Under the gun, Nike decided to gamble on a rookie with the Chicago Bulls named Michael Jordan – and it WAS a gamble. Although Jordan had made the game-winning shot in the 1982 NCAA championship game, he hadn’t made it back to the NCAA Final Four. In the 1984 NBA Draft, he was notoriously drafted third, behind Hakeem “The Dream” Olajuwon (who later humbly endorsed a $34.99 shoe) and, uh, some other guy named Sam Bowie. Jordan was also a young black man, and nobody was sure that his endorsement would carry over to a white audience (for context, the Cosby show premiered on September 20, 1984). Despite these risks, but perhaps in part because of his success at the 1984 Los Angeles Olympics, a bidding war escalated between Nike, Reebok, and Adidas, resulting in a five-year $2.5 million payday, plus royalties, for Jordan (for comparison, Jordan’s rookie NBA contract was $6 million over 7 years) and a new athlete for Nike to live or die by.

The colorful, expensive, Air Jordan I debuted in 1985 and changed the way consumers looked at basketball shoes. David Stern, then NBA commissioner, immediately banned the red and black shoes for violating NBA uniform policy. Jordan played in them anyway, and Nike gladly paid the $5,000 fine per game. Meanwhile, Jordan led the Bulls in points, assists, rebounds, and steals, made the cover of Sports Illustrated, participated in the dunk contest, played in the All-Star Game, led the Bulls to the playoffs, and was awarded Rookie of the Year honors. You most likely know the rest.

Fast-forward thirty years, and the Jordan brand is as strong as ever (some might say too strong). The Jordan brand is ubiquitous in basketball: according to this Forbes article, one out of every two pairs of basketball shoes sold in 2013 were brand Jordan. Continuing to expand the brand, Jordan is now challenging the luxury shoe market to a little game of one-on-one.

Called the Jordan Shine, the newest Jordan brand sneaker takes the original 1985 Air Jordan I silhouette and dresses it up with a woven-leather upper. The shoes will be available in either monochromatic black or red and will retail for $400.

But the move might not be the slam dunk Jordan is hoping for. Standing between Jordan and the luxury-shoe basket could be U.S. Trademark Application Serial No. 77/219,184, for the mark depicted below, for “footwear:”

The mark is described as “a configuration of slim, uniformly-sized strips of leather, ranging from 8 to 12 millimeters in width, interlaced to form a repeating plain or basket weave pattern placed at a 45-degree angle over all or substantially all of the goods.”

The owner of the mark is Bottega Veneta, a Gucci subsidiary, and maker of high-end luxury shoes, like the following:

By applying for trademark protection for the leather weave, Bottega Veneta is making the claim that this design does more than just look nice, it tells consumers that Bottega Veneta made the shoe.

Currently, the Bottega Veneta application is facing opposition from a designer in New York who claims that the design is aesthetically functional (i.e. it just looks nice). But the likelihood of success for that claim is questionable, given the Trademark Trial and Appeal Board’s recent decision in In re Bottega Veneta International S.a.r.l., Serial No. 77219184 (September 30, 2013). Finding that the woven-leather mark is not aesthetically functional, the Board noted:

Our finding that the design is not aesthetically functional is based on a very narrow reading of the proposed mark, and the scope of protection to which it is entitled. . . .

[W]e reiterate that we are finding only that the specific design for which applicant seeks registration is not aesthetically functional. We are not finding that the protection to be accorded this mark would extend to allow applicant to prevent the use, for example, of similar designs with different size leather strips, or to goods having a plain weave set at an angle but also having noticeable plain leather portions.

 (For full coverage of the TTAB case, visit the TTABlog.)

This clarification from the TTAB might be helpful for Jordan, whose shoes seem to have a leather weave set at a different angle, with slightly more plain leather showing at the heel. But what do you think? Has Jordan stepped out of bounds with his new luxury shoe design? Or has Jordan narrowly avoided having his shot at luxury shoes blocked?

Next up: How will Jordan do if these shoes, called the Jordan Future, are matched up against a pair of Louboutins? Does the contrasting red outsole infringe Louboutin’s trademark? Or is the lack of lacquer enough?

Calling Non-Traditional Trademarks By Name

Posted in Advertising, Articles, Branding, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Technology, Trademarks, USPTO

Things that are worth talking about need names. Good, distinctive names are best. As you may recall, last year we wrote this about non-verbal logos needing names:

“Marketing types, when brand owners operate in the world of non-verbal logos, isn’t spreading the news by word of mouth more difficult without a word to bring the image to mind, like Nike’s Swoosh, McDonald’s Golden Arches, or Coca-Cola’s Contour Bottle?”

Toyota’s Lexus automobile brand appears to be in agreement – applying this principle to non-traditional configuration trademarks too – because it created an engaging name for the unique automobile grille feature depicted below:

Two months ago Toyota received a federal trademark registration for the above-shown Lexus grille design, dubbed the “spindle” — here is the USPTO drawing for the mark:

Last September Toyota submitted 324 pages of argument and evidence to convince the USPTO that the “spindle grille” design functions as a trademark that has acquired distinctiveness in a very short period of time (seven months between the claimed first use date and the date when evidence of distinctiveness was submitted).

I’m convinced that having an engaging name for the grille design not only went a long way in facilitating word of mouth media buzz about the new look, but it also facilitated the equivalent of look-for advertising (an important element of proof in establishing non-traditional trademark rights). Toyota’s lengthy USPTO submission is replete with dramatic references to the signature ”spindle grille” design feature:

“In the Lexus LF-CC’s case, the concept clearly shares some design clues with the LF-LC concept released earlier this year, but in its own unique way.  This is perhaps the boldest interpretation yet of the now signature Lexus spindle grille: Framed by the front edge of the hood, deep lower spoiler, and projecting front fender tips, the grille mesh takes on a pronounced form.”

The Lexus website tells a wonderful story that reinforces the trademark claim in the grille design:

“A DASHING VISUAL FEATURE INTRODUCED WITH THE CURRENT GENERATION GS IN 2011, THE SPINDLE GRILLE HAS HERALDED A NEW CHAPTER FOR LEXUS AS A PREMIER AUTOMOTIVE BRAND”

“The bold, 3-D appeal of the grille’s profile is the result of an ongoing design evolution. The upper half of the grille, a trapezoid-like shape, was first introduced in 2005 with the GS model. It was part of Lexus’s attempt to create an individual face for the brand — soon leading to the decision to develop an additional lower grille aperture, forming the resultant spindle grille.”

“‘Everyone at Lexus believed that we should try putting forward one L-finesse design philosophy in a much bolder manner,’ explains Takeshi Tanabe, project manager of the Lexus Design Division. ‘L-finesse consists of the following three elements: seamless anticipation, intriguing excellence and incisive simplicity. They all must be reinforced in our design.’”

“Many drawings and clay models later, the overall design concept was perfected. The upper and lower grille apertures have been merged to form one distinctive shape, with chrome lining decorating the grille’s trim, making a bold visual statement.”

“GRILLE TRIM CHROME FINISHING”

“The vehicle’s finishing traces the contour of the spindle grille to create a unified appearance so distinctive that the origin of the car could not be mistaken for any other brand.”

But, here is where it starts to get a bit ugly, from a trademark perspective anyway:

“LOWER GRILLE APERTURE”

“Positioned low on the front end, the lower grille aperture gives a strong road presence to the vehicle. Its trapezoid-like shape assists the flow of air into the engine room.”

And, it gets worse, read on — here comes the dreaded F-word, right out of Toyota’s own mouth, or aperture:

“The recognizable geometric grille is a result of its function, too. In particular, the lower half is structured to assist intake airflow, optimizing the temperature of the engine under the hood.”

Was it really necessary to highlight functionality as part of the story? Everyone knows that air passes through a grille, but touting the shape as improving function, not good.

The trademark story was so compelling, and then it all comes to a screeching stop.

Any predictions on whether Toyota will be able to successfully deploy an airbag to prevent a non-traditional trademark casualty here?

Why “Hours of Energy Now”?

Posted in Articles, Branding, Food, Marketing, Product Packaging, Sight, Trademarks

Tim, after shopping at Costco over the weekend, the reason why the 5-Hour Energy folks seem so interested in owning “Hours of Energy Now” became more apparent:

Does Costco’s Kirkland brand energy drink packaging specimen demonstrate trademark use of the phrase “Hours of Energy Now!” better than those provided by the 5-Hour Energy folks?

 

Hours of Energy, But No Trademark Registration

Posted in Advertising, Branding, Fair Use, Food, Marketing, Trademarks, TTAB, USPTO

The energy drink businesses is big, big business. From Red Bull and Monster to that strange 35 ounce purple can that you saw in a gas station once, consumers love energy drinks. Along with Red Bull and Monster, 5-Hour Energy is one of the most successful and recognizable brands. Innovation Ventures, LLC, the owner of the 5-Hour Energy® brand of energy drinks, recently lost its attempt to register the mark “HOURS OF ENERGY NOW.” (Decision available here).

We’ve discussed the pros and cons of descriptive versus distinctive names before. The 5-Hour Energy® brand is a prominent example of how marketing, advertising, and commercial success can turn a bland, descriptive name into a strong, memorable brand. It also helps if your product is one of the first of its kind on the market. It’s hard to believe that the product has been around since 2004, making this year the tenth year anniversary (I’m crossing my fingers for a limited edition 10-Hour Energy anniversary product). Even though the 5-HOUR ENERGY mark is not inherently distinctive, Innovation Ventures was able to obtain a federal registration by claiming that it had acquired distinctiveness among the public based on its advertising, volume of sales, and commercial success.

Unfortunately for Innovation Ventures, though, it doesn’t matter how many bottles are sold, advertisements seen, or dollars made, if you are not using the name/term/phrase as a trademark, you won’t obtain a registration.  In this case, the Board ruled that the applied-for mark HOURS OF ENERGY NOW would not be perceived as a trademark, but instead merely an informational phrase. It appears that this isn’t the first time Innovation Ventures has run into specimen problems, having abandoned trademark applications based on specimen refusals for their FIX THE TIRED, TIRED SUCKS, BEAT THE 2:30 BLUES marks and not even submitting statements of use for their abandonded  NO 2:30 FEELING LATER. and NOT A DRINK JUST ENERGY marks.

The Lanham Act does not preclude slogans from registration, but the slogan must be used as a source identifier. The test is whether the public would perceive the term or phrase as a mark (as used on the goods). For example, JUST DO IT versus PROUDLY MADE IN THE USA. The public’s perception is determined by examining the specimens submitted with the application. Innovation Ventures submitted the three specimens below:

On the bottle and the carton, the phrase appears as part of a four bullet point list:

  • Hours of energy NOW
  • No crash later
  • Sugar free
  • 0 net carbs

The same “Hours of energy now. No crash later.” appears on the point-of-sale display as well.  Based on these specimens, the Board concluded that consumers would perceive the mark as merely informational, informing consumers that the products “will provide an immediate boost of energy upon consumption and that the increased levels of energy will last for several hours.” (based on their other filings, I wonder if Innovation will want to apply to register this phrase too?)

The situation is another in a long line of examples of a two important lessons be careful when submitting specimens of use. There are numerous refusals that could have been easily avoided had the applicant taken more time to select an appropriate specimen of use. The only thing worse than making a mistake is making an avoidable mistake.  In this case, it may have been difficult to fix.

The mark is so descriptive that it would have been tough to get around. However, Innovation Ventures dug itself a pretty big hole for their attorneys to attempt to scratch and claw their way out. The specimens do not capitalize any term other than the “Hours,” there is no use of a TM symbol, the phrase appears as part of a list of four other information phrases (I’m guessing not even Innovation Ventures attempted to register “O NET CARBS” as a mark….), and the text is displayed in the same font, size, and location as these other informational phrases. This brings us to the second lesson: get your attorney involved early. It doesn’t have to be extensive involvement. Ideally, the initial proposed packaging and advertisements would be shared with your attorney to review for red flags, but at a minimum get a quick review before finalizing packaging for production.

Working with a trademark attorney early on in the process can help you avoid costly (and unnecessary) legal fees, which in turn could help you avoid that 2:30 feeling when you receive the bill…

EPILOGUE: if anyone knows where I can buy a can of Surge, please let me know. I wouldn’t need 5-Hour Energy if I could my hands on some Surge. I’m not picky, any vintage will do, although I recall 1999 being an excellent year for Yellow-5 dye. Just make sure the can or bottle is still factory sealed.

FUSE 2014

Posted in Advertising, Branding, Keyword Ads, Look-For Ads, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Trademarks

As many of you know from Steve Baird’s post earlier this week – Ola Crapola! – we attended the FUSE 2014 Brand Strategy & Design Conference in the Windy City.   It was fun to hang out with creative design and brand people for the last couple of days.

The presentation from the Voice Lead from Chipotle was especially memorable.   One of the ad campaigns “Farmed and Dangerous” involved a soap opera type series promoting Chipotle.  There was a big “bad” company that was feeding its cows oil pellets (somehow resulting in more profits).   Not the healthiest choice.   In addition, there was an unfortunate side effect of exploding cows.  The good guy farmer named “Chip” (short for Chipotle – good marketing) was going to expose this unhealthy phenomenon; check out the video here.

In addition, Chipotle partnered with Oscar winning directors Brandon Oldenburg and Limbert Fabian, along with singer Fiona Apple to make a viral ad/short about a scarecrow with a similar theme titled “The Scarecrow“.

As the Huffington Post explains:  “The original ad left us feeling all the feelings thanks to one extremely sad scarecrow working in one extremely disturbing food factory.  Until he discovers the pleasures of fresh food, that is.”

My friends Aaron Keller and Kitty Hart of Capsule joined us at FUSE.  Throughout the conference, they blogged about the presentations.

Empathy and meaningful connections were themes in many of the presentations we saw throughout the conference.  The following quote from Maya Angelou resonated:   “I’ve learned that people will forget what you said, people will forget what you did, but people will never forget how you made them feel.”  This is an important quote to keep in mind when branding, selling, designing, and indeed, transcends most careers.   As a litigator, I know that it is important to connect with a jury and leave them with a good feeling toward my client.  How does empathy impact your career?

Capturing Tiger Woods at The Masters

Posted in Fair Use, First Amendment, Trademarks

My second favorite golf major, The Masters, starts tomorrow in Augusta, Georgia.  And as much as I dislike its history of racism, misogyny, and banning an announcer because he used the terms “bikini-waxed” and “body bags” during a Masters telecast, the fact of the matter is that The Masters is basically a crotchety old man who takes himself too seriously and I like seeing him every spring.

Like any other tradition in America, The Masters has played a role in a number of lawsuits and since using the name “Tiger Woods” automatically leads to more views, I’m going to talk about the Masters lawsuit that involved him.  Back in 1997, Tiger Woods won his first Masters and between his personal hype, the fact that he was the first African-American winner of a tournament that had a less-than-stellar racial history, and his absolute domination of the field, it was a big deal.  Rick Rush, who self-proclaims that he is ”America’s Sports Artist,” captured the moment in his painting, The Masters of Augusta.

Tiger Woods, who was notoriously protective of his image (I haven’t checked in with him since the late 90s, everything is still cool on that front, right?), sued Rush, claiming that Rush was inappropriately profiting off his image.  This resulted in a classic art v. commercialism courtroom battle.  Rush claimed that the painting was his art and Tiger responded that, “yeah, but it’s of me, so you can’t sell it without my approval.”  Both the district court and the court of appeals that looked at the case used phrases like First Amendment and fair use a lot before ultimately decided that Rush was right.

The Halo Effect of a Great Name

Posted in Guest Bloggers, Marketing, Mixed Bag of Nuts, Technology

- Mark Prus, Principal, NameFlash

Tom Cruise is 5’ 7” tall, but you would never know it based on the way Hollywood portrays him in the movies. Just look at his relative height in these scenes from some of his movies.

Hollywood uses technical tricks like having the leading man stand on “apple boxes” or wear lift shoes, or have the supporting cast slouch or always be seen in a sitting position. Why does Hollywood do this? It’s because we all love a tall, dark and handsome leading man. There is a real “height bias” that demonstrates the principle of the “halo effect.” If the leading man is tall you will attribute other things to his character such as power, leadership, and positive emotions (i.e., the halo effect of height).

There are many scientific studies that prove this point. In a 2004 study published in the Journal of Applied Psychology, scientists Timothy Judge and Daniel Cable followed 8,500 British and American citizens through their lives and found that height was strongly correlated with business success. In fact, every inch of height above six feet earns a person, on average, an extra $789 per year.

Beauty is another factor that produces a halo effect. Various studies have proven that beautiful students get better grades than not so beautiful ones, and that good-looking criminals get lighter sentences than ugly criminals do for the same crimes.

The name you choose for your product, service, or company also carries a halo effect onto your business. Because the name is most often the first thing people will hear about you, impressions start to form the second they hear the name.

A great example of this halo effect is Caterpillar Inc. Caterpillar was formed in 1925 out of the merger between Holt Tractor Company and Best Tractor Company (these companies were named after their founders Benjamin Holt and C. L. Best). According to company history, company photographer Charles Clements was reported to have observed that its tractor crawled like a caterpillar, and Holt seized on the metaphor. “Caterpillar it is. That’s the name for it!” So today if you have a choice between Caterpillar and Kubota construction equipment, which would you choose? Probably more often than not, you’d take the one with the halo effect of the caterpillar because being able to crawl over obstacles on a construction site is a primary benefit of the product.

Think about starting a new computer business in the competitive environment of companies with cold, technical names such as IBM, DEC and Cincom. What would you call your company? Steve Jobs and Steve Wozniak decided on Apple Computers. In Steve Jobs’ biography, Jobs said he suggested Apple Computers because he thought the name sounded “fun, spirited, and not intimidating” (halo effect at work). Reportedly, Jobs and Wozniak considered alternate brand names such as Executex and Matrix Electronics, but settled on Apple. With the name Apple, they benefitted from the halo effect for their simple, accessible and affordable computer.

So the next time you have a naming challenge, don’t lean towards generic or descriptive names. Instead, go for a higher level name that carries a positive halo effect and enables you to stand out from your competitors. You should have an easier time getting a trademark (compared to generic or descriptive names), and you will also benefit from the halo effect in your marketing efforts.

Ola Crapola!

Posted in Advertising, Articles, Branding, Food, Genericide, Marketing, Trademarks, USPTO

Crapola sounds like something worth saying on the way to Chicago, after discovering the size of your PowerPoint file is too large to get through the recipient’s firewall, and then realizing the USB flash drive containing your inspiring presentation to FUSE conference attendees remains on your desk back in Minneapolis.

Perhaps an even stronger word might be appropriate, if this mishap were true, but thankfully it is only imagined (at least this version). To avoid uttering this word or an even harsher one, my digital presentation (The Intersection of Brands, Design, and the Law) remains in my pocket, so if it doesn’t make it to the stage today, I won’t either.

Let’s just say, I’m all fired up and ready for FUSE 2014 Brand Strategy & Design, again. So, ola FUSE attendees!

Anyway, back to Crapola, as it turns out, there is another meaning of Crapola, as I learned over the weekend, encountering for the first time an interesting granola brand called Crapola! The brains behind this brand are a husband and wife team doing business as Brain Storm Bakery, located in Ely, Minnesota:

 

Fritinancy traces the history of Granola, perhaps a former brand name, but now very generic. Indeed, the USPTO has recognized “granola” as a generic product name that can be found in the USPTO’s Acceptable Identification of Goods and Services, since at least as early as April 1991. Nancy Friedman knows a lot about the “ola” suffix too, recall her Duets guest post: Shinola 2.0?

In addition to what Nancy has to say, Wiktionary indicates the “ola” suffix is ”used to form humorous and pejorative terms.”

Presumably all these federally-registered competing granola brands are intending the humorous, not the pejorative: GanolaCranola, Yumola, Crunola, Davola, San Franola, and Gheenola.

No doubt Crapola! has humor in mind too.

Just in case you’re wondering, we don’t do the pejorative “ola” stuff here, like Payola, and by all means, no Blogola, nope, none of that here!