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The Paradox of Brand Protection: Knowing When to Hit the Consumer Over the Head

Posted in Branding, Law Suits, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Packaging, Sight, Smell, Sound, Taste, Touch, Trademarks

I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins. Being able to own and enjoy exclusive rights on "day one"—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything. Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed). On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all. So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.

As the opening paragraph suggests, trademarks are not all created equal. Inherently distinctive trademarks are the obvious target, the gold standard, for brand names because they are always recognized and rewarded with immediate legal rights. Courts view these marks as sufficiently creative and unique to presume they function as trademarks, believing without proof they automatically identify, distinguish, and indicate source. Inherently distinctive word mark examples include KODAK for film (coined trademark), APPLE for computer (arbitrary mark), and COPPERTONE for suntan oil (suggestive mark). Descriptive marks, on the other hand, while capable of being owned and acquiring distinctiveness, are not inherently distinctive. In fact, they are inherently lacking in creativity, so those who pick (not create) these designations must live with the uncertainty of when, if ever, exclusive rights attach. Owning them takes longer, is more expensive, and is more difficult. This is because the law refuses to presume a trademark function with the use of descriptive terms. Nor does the law reward those who choose to "hit the consumer over the head" with such a blunt device (would-be trademark); one that immediately and overtly describes something about the product. As a consequence, picking (not creating) a descriptive mark, brings a state of limbo for an unspecified period of time, where there can be little or no control of destiny. These folks typically have to hope others voluntarily steer clear until after acquired distinctiveness is achieved. For example, the CALIFORNIA PIZZA KITCHEN mark was used for six years before those words were owned as a federally registered mark. A lot can happen in six years to get in the way of obtaining exclusivity. Generic terms, even worse than descriptive ones, apparently "hit the consumer over the head" so badly with the obvious connection to the goods that they are incapable of being trademarks—they cannot be owned, they are simply part of the public domain, free for all to use. Examples include LITE for beer and BRICK OVEN for pizza—both name entire product categories, they don’t identify, distinguish, or indicate source. There is simply nothing creative about them.

So, if "hitting the consumer over the head" is not a rewarded activity for branding professionals, where is the other half of the lesson, the promised paradox piece? Actually, there is a time and place for everything and being blunt, direct, and overt is not always a mistake for marketers. At times, bluntness and overtness is not only rewarded, but an important component for legal success. The key is knowing and understanding those circumstances where "hitting the consumer over the head" is appropriate, beyond repeated purse-snatching or shoplifting episodes, of course. This is where the paradox comes into play.

As you may recall, we previously blogged about some types of non-traditional trademarks here. Non-traditional trademark formats extend far beyond words and logos, encompassing any other subject matter that may be perceived by one or more of the five senses, provided they still identify, distinguish, and indicate source. Color, product configuration, product packaging, uniforms, restaurant interiors, building exteriors, sound, touch, scent, and taste, all have potential. What we haven’t explained before about many types of non-traditional marks is that the law can be quite skeptical of them, and as a consequence, proof that they actually function as trademarks can be helpful in easing the skepticism. When such proof is required, the target, or the gold standard, is being able to point to "look for advertising"—consumer communications where one directly informs of an intention to treat non-traditional subject matter as a trademark. So, "hitting the consumer over the head" with this blunt and overt "look for" advertising can be necessary and important, if not critical. Because the Trademark Office or a court might be highly skeptical of a claimed trademark in the polka dot background of a product label, it may want to see evidence that the claimed trademark owner was blunt in stating its intentions on packaging and in advertising, "Look for the Polka Dot Label, as a sign of high quality milk from XYZ Company." Perhaps the mark is the container itself, so "Look for the unusual shape of our milk container to be sure you are getting high quality milk from XYZ Company" is needed. These very overt kinds of marketing statements are a common element of many successful efforts to protect various non-traditional, yet visual trademarks. Most such statements are boring, pedestrian, and not very creative. They seem to distract from other important messages to convey. One good exception is the "What Can Brown Do For You?" tagline, used by UPS, to reinforce a more creative form of "look for" advertising to acquire exclusive rights in the color brown for the various services it provides.

As non-traditional trademarks proliferate, the brand new challenge of creativity will be in developing the legal equivalents of "look for" advertising when marks touching the other non-visual senses are involved. Using the admittedly clunky "look for" phrase won’t even work when something other than a consumers eyes need to experience the claimed mark. The challenge there will be in coming up with creative and engaging ways to be overt about the intention of having consumers experience the subject matter in question as a trademark.

So, when creating and building new brands, consider whether being blunt and overt or subtle and suggestive, is the right course of action, to achieve your desired result.