DuetsBlog

Collaborations in Creativity & the Law

Did Sony Let the Terrorists Win?

Posted in Mixed Bag of Nuts

Unless you’ve been living under a rock recently, you’ve probably heard about the hoopla caused by the new Seth Rogen and James Franco movie called the interview.  The movie follows a plot to assassinate North Korean dictator Kim Jong-un.  According to recent reports, North Korea was behind a cyberattack against Sony which included theft of emails and the theft and release of various Sony movies.  A timeline of the hack is available here.

Earlier today, news reports broke indicating that Sony would be pulling its world wide release of the film.  An example is here.

Not surprisingly, many have decried Sony’s decision.  Many have referred to this as a “freedom of speech” issue.  That’s not entirely accurate because “freedom of speech” in the United States constitutional sense simply means that the government has limited abilities to sensor or punish speech.  People often fail to recognize that “freedom of speech” does not preclude private employers from punishing or firing you for things that are said or done at your job, nor does it preclude a film distribution company from pulling a plug on a film that, presumably, the film’s creators and actors would like to have shown.  After all, this is their expressive work and they probably believe the message is important.

So, even though Sony obviously has the right to pull the movie, should it have?  This is obviously a serious question, and its a topic that is substantially more serious than my ordinary posts.  Here at DuetsBlog, I expect we all believe in the importance of expression and the “marketplace of ideas.”  So when glorified cyber-bullying (albeit by a country that is potentially a nuclear power) pollutes that marketplace and stifles expression, I feel a profound sense of disappointment and loss.  At the end of the day, I don’t know whether Sony’s decision was “right” or “wrong,” but I do know which decision I would have preferred.

The Strange Case of Strange Fruit

Posted in Branding, Guest Bloggers, Marketing, Mixed Bag of Nuts, Search Engines, Social Media, Social Networking

- Laurel Sutton, Senior Strategist at Catchword Brand Name Development

Of all the marketing people in the biz, you’d think a PR firm would have the best instincts for names that appeal, rather than repel, the public at large. A firm in Austin, Texas that specializes in food and drink recently chose the name Perennial PR, which is pretty good, by naming standards: it’s alliterative, has nice associations with longevity and beautiful flowers, and would likely offend no one. It’s a safe choice, in contrast with the firms previous name: Strange Fruit PR.

Does that name make you stop reread the sentence? Or does it just seem like a fun way to reference their unique take on hospitality and food & drink?

Perhaps it’s a generational thing. The song “Strange Fruit”, recorded by Billie Holiday in 1939, was explicitly about the lynchings of young black men in the American South. It was named the song of the century by TIME magazine in 1999 and added to the National Recording Registry by the Library of Congress in 2002. It continues to be covered by various artists and has inspired other creative works. It’s a song and a metaphor that has never really departed from society’s stage.

But it would be a mistake to assume that everyone in the U.S. shares that knowledge – especially those under the age of 40. Perennial’s co-founder, Mary Mickel, explained in a statement to the American Statesman, “We of course Googled to ensure that it was not taken elsewhere and found the Billie Holiday song online. Thinking it would have nothing to do with our firm, and since it was written in 1939 it wouldn’t be top of mind in the public consciousness. We now know we were naïve to think that, and should have known better.”

It’s a good apology; too bad it had to come after they were called out on Twitter by writers like Audra Williams and Mikki Kendall. It’s interesting that they started using the name Strange Fruit PR back in 2012, but got real heat for it only in the righteously angry days of late 2014. Up until the change, they’d even defended the name as encompassing “the uniqueness and creative individuality that our clients reflect”. (That’s some good PR-speak!)

Lesson #1? Google can only provide you with data; it can’t tell you which decision is correct. Evaluating Google results when researching, say, your new company name, is a skill in and of itself; as we in the naming business like to say, “Don’t believe everything you read on Urban Dictionary.”

And Lesson #2: When people tell you that your brand name is problematic, you should listen to them. If you’re privileged, you may have lived a life in which a song like “Strange Fruit” isn’t relevant; but you must acknowledge that, for a significant percentage of your audience, the sentiments of the song are all too real.

About the generational thing: I have noticed that many of my naming clients, especially the younger ones, are not very sensitive to (what seem to me) overtly negative WWII references. “You might not want to use Axis as a name, or SS as a product model prefix,” I will point out gently. Blank stares.

Also noted: there’s a performing arts company in Melbourne, Australia called Strange Fruit, but one suspects the phrase doesn’t have the resonance there as it does here. This is not to deny the long history of racism against Australian Aboriginal people; but Australia does not have the experience with slavery and its horrific aftereffects as does the U.S. I wonder if they have ever gotten complaints about their name.

Henley Is Not Taking It Easy

Posted in Advertising, Fashion, First Amendment, Infringement, Law Suits, Trademarks

According to music icon Don Henley, intellectual property rights are not a joking matter.

Duluth Trading Company found this out when it adopted the advertising slogan: “Don a henley, take it easy” to promote and sell Henley shirts (examples pictured below).

Despite my purported (at least in my mind) fashion expertise, I first learned what a Henley was by reading the complaint filed by Don Henley against the Duluth Trading Company.

Henleys (the shirts) are named after rowers that donned (no pun intended) them while rowing in royal regattas called Henley-On-Thames.

Don Henley sued Duluth Trading Company based on the ad campaign, alleging violation of his common law and statutory rights of publicity; trademark infringement and false endorsement in violation of federal law; and violations of the California Business & Professions Code.

In response, Duluth Trading Co. basically asked Henley “Can’t you take a joke?” The company’s lawyers brought a motion to dismiss the right of publicity claims based on the First Amendment, which allows using a celebrity’s name in a transformative nature to cheekily point out the coincidence that the iconic Mr. Henley’s first name also means “to wear” and his last name explains what you should be wearing.

You may recall that I posted about the right of publicity before here. Regardless of the merits as an Eagles (and especially Don Henley) fan, I am pulling for Mr. Henley to win this dispute.

Top 10 Branding Tips Using PR

Posted in Advertising, Branding, Goodwill, Guest Bloggers, Marketing, Mixed Bag of Nuts, Social Media, Social Networking

- Debbie Laskey, MBA

There is an often-overlooked aspect of marketing that can be considered a distant relative. Public relations, also referred to as PR, is this sometimes forgotten but very important component of marketing promotions. At its core, PR can be defined as managing a brand’s image and reputation, but it touches all aspects of a business including employees, shareholders, customers, investors, financial markets, politics, media, and business partners.

When executed well, PR can garner free publicity in The New York Times, The Wall Street Journal, and on CNN. When executed poorly or a crisis happens, publicity or saying the wrong thing may cause an employee to be terminated – or even worse, a company can go out of business.

Talented PR professionals develop long-term relationships with reporters, and over time, reporters depend on marketing and PR pros to provide them with the information they need to write their articles.

Here are my Top 10 Branding Tips Using PR:

[1] Develop a competitive positioning statement and include with all printed collateral and online web pages, for example, fact sheets, brochures, annual reports, etc.

[2] Write articles about your company and how your product or service has solved problems for your customers – and submit to local, regional, and national publications and websites.

[3] Videotape experts from your company as they answer questions about your product or service and submit to TV and radio stations.

[4] Develop traditional press kits and online versions and include fact sheets, press releases, media alerts, printed or PDF versions of media coverage, etc.

[5] Develop a media list of appropriate reporters who cover your industry and reach out to share updates on a regular basis – don’t forget to update on a regular basis too.

[6] Create a schedule for regular press releases and distribute to your media list – and post on your online press room.

[7] Develop testimonials and case studies by interviewing satisfied customers and use these people as brand advocates/ambassadors – include these items in your press kits.

[8] Showcase your brand at industry trade shows and obtain keynote speaking engagements for your company experts – events are also great places to announce new products or services.

[9] Blogs have become an easy way for companies to share news and control how the information is presented, therefore, create a blog or several blogs – invite comments and monitor them quickly to further evolve compelling conversations.

[10] Since social media has changed the landscape for the dissemination of news, develop a social media marketing plan and integrate it with your overall marketing and PR outreach initiatives (e.g., Facebook, Twitter, LinkedIn, YouTube, Google+, and Pinterest).

What would you add to this list?

Bo Knows, How To Beat a Trademark Bully

Posted in Advertising, Articles, Branding, Food, Marketing, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

This Bo might not have won the Heisman Trophy, he might not have played in the NFL or MLB, he might not have enjoyed a lucrative Nike endorsement deal, and he might not have been named ESPN’s greatest athlete of all time, but this Bo — the defiant Vermonter, a/k/a Bo Muller-Moore, knows how to defend his “Eat More Kale” trademark and turn a trademark bully into fried chicken:

As you know, we have been following very closely — and very critically — for more than three years now, Chick-fil-A’s efforts to prevent registration of Bo’s EAT MORE KALE trademark, based on Chick-fil-A’s federally-registered rights in the EAT MOR CHIKIN fast-food slogan:

This dispute really became for me the poster-child example of trademark bullying, and keep in mind, I frequently report on media allegations of trademark bullying, but I have rarely agreed with the pejorative label, for a variety of reasons.

So, Bo, hearty congratulations to you!

What do you suppose was the deciding factor in Chick-fil-A chickening out and deciding not to pursue the filing of a formal Notice of Opposition with the USPTO? Was it, Governor Peter Shumlin’s support? Your able pro-bono legal team? Your successful Kickstarter campaign? Your deft use of the social media shame-wagon? The USPTO finally seeing clearly? Or perhaps the persistently persuasive DuetsBlog coverage?

Or, will we need to await completion of the promised documentary film, to know from Bo?

Either way, Chick-fil-A finally appears to have found a sense of humor, sending this email in response to a Huffington Post inquiry: “Cows love kale too!”

Let’s hope the cows have learned a lesson about straying past the trademark fence on the farm!

A Charlie Brown Red-Nosed Reindeer

Posted in Mixed Bag of Nuts, Television

If you celebrate Christmas, and even if you don’t, you probably have a favorite Christmas-themed movie.  Elf?  A Christmas Story?  Miracle on 34th Street?  National Lampoon’s Christmas Vacation?

Although not feature films like those, my favorite Christmas-themed masterpiece is the 1964 classic short Rudolph the Red-Nosed Reindeer, followed very closely by A Charlie Brown Christmas (Rudolph edges Charlie out by just a shiny nose).  I think we all in some way can empathize with the “misfits” of Rudolph, Hermey, and I suppose Charlie Brown too.

I found it astonishing that these two Christmas classics are celebrating their 50th anniversary in the same yearRudolph first airing on December 6, 1964 and Charlie Brown thereafter.  I mean, can you think of two similarly inspired, creative, and classic creative works that have created memories for millions (and millions from marketing dollars) to come out in the same year?

What’s your holiday must-see classic?

Oh What A Tangled WEB We Weave When First We…Try To Show Use

Posted in Almost Advice, Trademarks, USPTO

In order to get a trademark registered or maintain a registration, an example of use of the trademark (referred to by trademark nerds as a “specimen”) must be submitted to the US Trademark Office.  Often trademark attorneys rely on the most readily available specimen that they can find:  their client’s website.  But if the website doesn’t meet the Trademark Office’s strict requirements, they will often ask for a few tweaks or request an image showing use of the mark on product packaging, marketing materials, or a manual.

So here are three of the biggest pitfalls trademark attorneys see when it comes to trying to use websites as specimens, and how you can avoid them:

1.  If you sell goods, let me “buy it now” or “add it to cart” – or at least give me all the information I need to buy it from you.  

For goods like apparel, golf balls, or political bumper stickers, in order to use a webpage as a specimen, it must have the following elements:

(1) a picture or textual description of the identified goods;
(2) the trademark shown in association with the goods; and
(3) a means for ordering the identified goods.

There must be a way for a customer to order the goods directly from the applicant’s web page, preferably a “Buy It Now” or “Add To Cart” link.  But if being your own e-commerce retailer is not feasible, you can include a telephone number and explicitly state that orders can be placed through there.  Listing distributors or simply having the company’s phone number and address on a webpage won’t suffice.

2. Be clear about the services that you provide.

For marks used on services, the webpage must sufficiently reference the services so that one can conclude that the mark is being used in connection with the claimed services.  If an inference needs to be made about your services because the language used on your website is vague, then it will likely be rejected under recently revised examination guidelines from the Trademark Office.  Often either clearly referencing your services on an “about” page with use of the mark or by using simple headers that identify key aspects of your services rather than just long paragraphs, this can help ensure that the website specimen is promptly accepted.

3. Your website’s so fancy, you already know, that no one can get a screen grab of the mark used near the goods or services.

Like Iggy Azalea, we all like modern, cutting-edge websites, but if someone can’t print it or do a screen capture that clearly shows the mark used near the goods or the description, it’s not going to work.  Don’t let your trademark feel too lonely.  A simple fix in many cases is simply replacing “we” with your brand.

 

The more that marketing teams and the legal department can bring awareness to this and can work together to review websites, catalogs, and other trademark use, the more both teams will come out feeling like this:

The College Football Playoff™ college football playoff

Posted in Fair Use, Genericide, Trademarks

 

This past Sunday, the College Football Playoff Committee unveiled the four college football teams that will be participating the very first playoff in college football. The festivities begin Jan. 1, 2015, with Oregon battling Florida State in the Rose Bowl followed by Alabama and Ohio State duking it out in the Sugar Bowl. However, as the debate regarding who will win the college football playoff continues on television, in the comment sections of websites, and around the water cooler, a different type of college football debate has been ongoing at the U.S. Patent and Trademark Office (USPTO).

Despite the players and teams being a mere three weeks from taking the field, the application to register the COLLEGE FOOTBALL PLAYOFF mark is still on the bench. The application suited up back on March 28, 2013 but is still no closer to registration today. The application includes the following identification of services:

Entertainment services in the nature of television and radio sports programs featuring college football games, exhibitions and tournaments; entertainment services, namely, organizing and staging college football games, exhibitions and tournaments; and providing information, news and programming, scores, standings, statistics, and history, all in the field of the sport of football, via the internet

The examiner initially refused registration on the grounds that the mark was merely descriptive, but included a statement informing the applicant that the mark may be generic in connection with “organizing and staging college football games, exhibitions and tournaments.”

In response, BCS Properties (the applicant) claimed that COLLEGE FOOTBALL PLAYOFF was not descriptive but instead a suggestive mark. It made the oft-asserted but rarely successful argument that a component of the mark has multiple meanings and therefore consumers will need to exercise imagination, perception, and thought to determine the exact nature of the services. The applicant conceded that the Examining Attorney’s definition of “college” as “an undergraduate division of a school or university” was a possible definition, but argued that “college” can also be defined in other ways, including (1) a body of clergy living together and supported by a foundation; (2) a building used for an educational or religious purpose; and (3) a preparatory high school. The implied argument is that consumers encountering the COLLEGE FOOTBALL PLAYOFF mark won’t be certain whether these football tournaments involve university students, clergy roommates, buildings, or high school students. I don’t find this argument convincing, but maybe that’s just me.

The real emphasis of the response was on a claim of acquired distinctiveness. The applicant submitted numerous examples of news articles, websites, Facebook Groups, and evidence regarding viewership of the last BCS Championship Game (25.6 million viewers).

Overall, these are substantial numbers, but the Examining Attorney called an audible and denied the claim of acquired distinctiveness. Instead, the Examining Attorney issued a refusal on the basis that COLLEGE FOOTBALL PLAYOFF is a generic term for “college football tournaments.” Determining whether a mark is generic involves a two-step inquiry: (1) what is the genus of the services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods and/or services?

In support of the refusal, the Examiner relied upon the following:

  • The identification of services includes “college football” as part of the services;
  • Numerous news articles describe the mark as identifying a playoff system for college football; and
  • An article where the director of the College Football Playoff is quoted as stating: “We decided to call the playoff what it is – the College Football Playoff.

Because advertising and sales cannot turn turn a generic term into a trademark, the claim of acquired distinctiveness is moot if the term is generic. In the alternative, the Examiner maintained the merely descriptive refusal, noting that given the highly descriptive nature of the mark, the evidentiary burden to prove acquired distinctive is much greater than it might be for less descriptive marks.

After failing to move the chains with its first response, the applicant filed its second response. It argued that the genus of goods is not “college football playoffs” but instead simply “football.” It also argued that the public does not use the COLLEGE FOOTBALL mark to refer to “entertainment services.” Notably, the applicant provided no evidence to support this claim. With regard to potential acquired distinctiveness, the applicant submitted evidence that its twitter account had over 30,000 followers, its Facebook page had more than 200,000 fans, and noted the numerous news articles referencing the upcoming college football playoff. Besides, the applicant argued, third-parties could use a number of other names for a “college football series,” such as “Collegiate Football Tournament,” “College Football Showdown,” [and] “University Football Series.”

It was a good effort, but ultimately unsuccessful as the Examiner issued a final refusal on August 26, 2014. The examiner noted again that the phrase “college football” is in the identification of services and therefore the proper genus is not simply “football.” The Examiner also noted that the evidence supplied by the applicant makes clear that its mark will be used to identify “those college football games that come after the end of the regular scheduled season that will be used to determine the college football champion.” The examiner also rejected the evidence of acquired distinctiveness, stating that it merely showed that college football itself was popular, not that the mark had obtained acquired distinctiveness.

BCS Properties will have another shot at filing a response to try to change the examiner’s mind. Unfortunately though, the application may have been doomed as soon as the name was chosen. It seems like ages ago, but after the announcement of the new name, there were laughs had as to the less-than-creative name (for example, here, here, and here). Most of the chuckling was that the BCS paid a marketing firm to come up with the name (Premier Sports Management, for the curious). For what it’s worth, I don’t blame the marketing firm. As some of the articles point out, after the BCS era, the goal may have been to simply find a name that the public couldn’t trash.

But even though the hurdle was going to be high, the applicant got off to a false start by including the phrase “college football” in the actual identification of services. The fact that the applicant’s director was quoted as stating that the College Football Playoff name was chosen “because that’s what it is” certainly doesn’t help either.

Yet it isn’t a lost cause. These types of office actions require thoughtful and well-planned arguments, and that planning begins with the application (i.e., not digging yourself a hole). Trademark examination is a unique situation as it isn’t adversarial in the same sense of a lawsuit. Instead, the examiner is both the adversary and the judge. In light of this, organization and word choice can make or break a response, in part because trademark law requires a highly subjective analysis. It isn’t about “tricking” an examiner, it’s about defining and framing the legal inquiries and burdens in a way that makes sense with your particular facts.

The applicant has until February 6, 2015 to respond to the final office action. This gives the applicant additional time to gather evidence regarding public understanding and use of the claimed COLLEGE FOOTBALL PLAYOFF mark. However, I’ve got a feeling that even if BCS is unsuccessful at changing the examiner’s mind, the game will extend into overtime at the Trademark Trial and Appeal Board.

Squeezing the Most Out of a Product Feature

Posted in Advertising, Branding, Goodwill, Guest Bloggers, Idea Protection, Marketing, Mixed Bag of Nuts, Patents, Product Packaging, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

Some folks sing in the shower. Others critique the packaging of their face cleanser.

 Garnier’s Clean+ Purifying Foam Cleanser is a good cleanser packaged in a plain-looking bottle. The bottle looks like your normal foam dispenser, and, picking it up for the first time, you would expect to pump the top and get some foam. But looks can be deceiving: Garnier’s bottle has no pump. Instead, you simply twist the top and squeeze.

Looking over the bottle, though, there is no name for this unique foam-dispensing mechanism. Garnier provides only a red elliptical shape at the top with the instruction: “squeeze bottle to foam.”

Does this seem like a missed intellectual property opportunity to you? What about a missed marketing opportunity? What if I told you that eight out of the nine reviews I found on Garnier’s website and Amazon mentioned the feature? Here are a few:

I came across this product because my roommate threw it in the trash. She does that a lot; it’s how I try a lot of beauty products. I’m guessing she couldn’t figure out how to work the pump. #notthebrightestbulb. Anyways, you squeeze the bottle, it foams, and comes out.

The bottle is tricky, maybe put some visual directions on the bottle? This is a new design to most people, as I have not seen such cleansers (or other products) where you would have to squeeze the bottle.

The foam dispenser is genius — super easy to use!

It seems to me that Garnier is missing out here. Without a name for its foam-dispensing mechanism, Garnier has no way to capture and develop the goodwill earned by some purchasers’ positive experiences. Naming the product feature would give the public a shared term to reference in passing along word-of-mouth recommendations and lower search costs when purchasers look for other Garnier products with the named feature. A name would also draw attention to the feature, helping some of the purchasers figure out how to use it. And naming the feature wouldn’t be that difficult: a name like “Simple Squeeze” or “Clean Squeeze Technology” might work.

By using a name to call attention to and capture the goodwill in the product feature, and by protecting the name with a trademark, Garnier could gain a marketing advantage against all those normal pump-top bottles out there. Further, the trademark for the name of the product feature could be paired up with non-traditional trademarks, like non-functional product packaging or color, and marketers could work the name into corresponding “look for” advertising campaigns. All of these trademark rights that Garnier could develop would exist on top of any patent rights and copyrights that Garnier might also acquire for the product feature or packaging. This is the robust intellectual property layering that Steve blogged about last week.

Ok, so maybe this is a lot to ask from a foam dispenser. Then again, people like to squeeze things! And squeezing seems to build serious brand connections. Am I right, Charmin?

So let’s ask the marketing types. What do you think: should Garnier try to squeeze a little more out its foam-dispensing mechanism? Should we trademark types spend more time helping our clients find these opportunities to squeeze the most out of a product feature?

Rockin’ Around The ©hristmas Tree

Posted in Copyrights

This past weekend, my wife and I were fortunate enough to take in the sights and sounds of NYC.  Included on our stops was the world famous Rockefeller Center Christmas tree.  The tree was lit on December 3.  Despite the cold, the rain, the wind, and the protests over the recent Eric Garner case, we were able to brave the elements and get several nice snapshots, including some selfies.

Because I can’t really just enjoy the moment without slipping my brain into intellectual property mode, the taking of this picture raised a question for me?  Is my taking of this photo and my use of it in this post an act of copyright infringement?  What about the sculpture below the tree?

The answer might surprise you.  A lot of people generally think that anything displayed in public can be photographed and used with impunity.  But that’s not really the case.  As a general matter, sculptural works in the U.S. are copyright protected, and along with that protection generally comes derivative works protection which would include the right to control photographs of the sculptural work.

Here, I’m probably safe because this is obviously non-commercial use intended to facilitate a discussion on the parameters of copyright law.  I’m pretty comfortable that it constitutes fair use and I’m also comfortable that even if it did not, the fine folks at Rockefeller would let this one slide.  However, that probably wouldn’t be the case if I started running this photo through a printing press and selling reasonably priced postcards on my favorite New York City street corner.

So, a word of advice to any “photogs” out there who may be in the business of selling their photographs.  Make sure to consider copyrights of any potentially protected works that are captured in your photographs.  That should help you stay off the “naughty” list this holiday season.