Duets Blog : Creativity and the Law: DuetsBlog

I have a good friend who, on point of principle, eschews endorsing large corporations.  Consequently, when he comes to possess t-shirts that bear corporate logos, he wears them inside out, so as to defeat the nominal marketing power they may have.  He gets a bit of a thrill knowing that he will not be a pawn in that game.  I once ran some errands with him in such a condition, and just about every person that saw him told him that he was wearing his shirt inside-out.  To each one, he briefly preached his gospel, "No corporate sponsorships, ma'am!" 

He hasn't converted me yet (and he may be a trendsetter), but his antics are an apt background to those who are at the opposite pole:  consumers who voluntarily create marketing materials for major brands.  The Internet has amplified this considerably.  I recently hit upon an illustrative case:  Johnsonville Sausage.  About a month ago, I saw a billboard with an enlarged photo of some bratwurst cooking on a grill with a simple white word overlay:  TASTYVILLE.  I salivated like Pavlov's dog.  Just last week, I saw a second, similar billboard, and the word was SUMMERVILLE.  Then it occurred to me:  I bet the Johnsonville website is carrying this theme as well.

Not only is the Johnsoville website playing off of this theme, but the company is conducting a contest in which users can create their own _______VILLE advertisements.  I realize that this marketing concept is hardly novel, but it really struck me how far technology has enabled us to go when it comes to customer-created advertising. 

Of course, art has always imitated life, and the videos here and here really prove it.  Move over YMCA!

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A picture can say a thousand words; so does a face. The same is probably true of non-verbal logos, including the several federally-registered "Chief Wahoo" logos, shown above (all apparently still in use by the "Cleveland Indians" professional baseball team, according to their latest trademark filings).

So, what do they say to you?

My take? I can think of quite a few words to describe them, but none includes the word "honor," as is often the claim made by those in favor of keeping Native American mascots.

From my perspective, "Chief Wahoo" is the non-verbal equivalent of the Redskins racial slur that I blogged about last week.

Last month I blogged about Non-Verbal Logos That Can Stand Alone, and while "Wahoo" certainly can "stand alone" as a non-verbal logo, unlike the famous Nike Swoosh and McDonalds Golden Arches, "Wahoo" should simply "stand alone" in the corner of a dark closet with the door shut and locked.

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The Merriam-Webster On-Line Dictionary tells me that “green”—that word that kindly describes that most vilified of veggies and represents the very being of a beloved character—has been a verb since before the 12th Century. I will take their expert word for it, in spite of the fact that it is only in the past few years or so that I have noticed that this word, so commonly used as a noun and adjective, has come into common use as a verb, as evidenced here, here and here. 

Common sense would say that the meaning of “green” as a verb has changed over time—whatever it meant then, I’d wager that most consumers now recognize the infinitive “to green” to mean something along the lines of “to make ecologically/energy/environmentally more safe/sound/smart/sensible than it was before.” This is all well and good if you want the majority of consumers to know what your “green” brand means. But what if you want to protect your “green” brand?  

The Trademark Office requires owners of marks incorporating merely descriptive terms—those that describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services – to disclaim those portions of the mark. Disclaimers narrow the exclusive rights that a registrant may claim in its mark. While the (re-)morphing of “green” from a noun and adjective to a verb does not necessarily support a claim that all marks using green to indicate some environmentally friendly connection are non source-identifying, it does indicate that the meaning of the word “green” among consumers is changing, and quite rapidly at that. At present, there are over 8,000 live marks on the Trademark Office database that incorporate the term “green”; of these, over 1,400 have disclaimed “green.” While a good portion of these disclaimers no doubt cover marks that mean “green” in the color sense, my random clicking on more than a few marks indicates that the word “green” is increasingly recognized by the Trademark Office as a descriptive term for “environmentally friendly” goods and services. 

The moral of the story? Hurry up and get your “green” marks registered before consumers associate the color with Earth Day and energy as quickly as they associate it with, well, the color.

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What is Twitter? What’s a Tweet? Can I be Tweeted?  Will a Tweet hurt? Twitter is a micro-blogging portal that allows for sharing messages and links that are 140 characters or less and it is being talked about everywhere. This buzz is causing clients to ask questions, similar to those above, about what this space means for them. The majority of these questions seem to be surrounding trademark rights with Twitter profile names. Similar to the domain name “squatting” from the early 90’s, people are registering Twitter names for brands that they do not represent. 

First, it is important to remember that as social media continues to take over the on-line space companies need to be registering their names on these sites. If a company is proactive about this process, the issues surrounding trademark violation will not occur. Second, let’s be honest, very few companies have the resources, time, or ingenuity to realize they need to be doing this. That being said, there are many things a company can do to reclaim their trademarked Twitter name from its current owner.

The first thing a company should do when it finds their trademarked brand has been taken on Twitter is see when the last tweet was sent from the account. If the account has not had activity for 30+ days and the company can prove the trademark, the company can work with Twitter directly to retrieve the account. If the account is being actively used the company should personally reach out to the person who has it. Simply ask them to turn the profile over to the company and reference the trademark rights. It is important to note that the company will likely fair better by playing nice and offering a complimentary something to the person for their time and inconvenience. If the profile is not surrendered after these efforts legal steps can be taken to retrieve the account. Another thing to consider is that if the person who owns the account is not causing detriment to the brand it may be timelier to simply create a differing variation of the trademarked name and begin Tweeting from the new account. 

Happy Tweeting

—Ted Risdall, Risdall Marketing

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Memorial Day is another example of successful re-branding: Memorial Day apparently used to be called Decoration Day.

Although most appreciate and understand that this federal holiday since 1971 comes on the last Monday in May, there is a concern that "many Americans nowadays have forgotten the meaning and traditions of Memorial Day." It is more than a three-day weekend, it is a day to remember those who have died in military service for our country.

After you have paid your respects on this Memorial Day, I have a suggestive branding challenge for you, below the jump, if you're interested.

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It seems everyone is re-branding these days. George Stephanopoulos was talking about the need for the Republican party to re-brand during his show “This Week“. Should the party change its mascot from the elephant to a pig? Probably not. Pigs over-consume and that is not in vogue with the current state of the economy. In addition, the swine flu has harmed the image of the pig. What about a dog? Dogs are man’s (and woman’s) best friend. They are loyal. This might work as a new symbol for the Republican Party.

When re-branding a product, a company is seeking new customers and expanding its market share.  The Republican Party will be seeking additional voters.  The Republican Party has taken to the road for town meetings with pizza to get in touch with the public.  Enticing people with food or other free giveaways is a great way to obtain information for use in re-branding efforts.  

One way to tap into a different voting base, the younger voters, would be to take a page from the Democrats and use the Internet.  The Republican Party can no longer ignore the Internet.  Maybe, twittering would be a new venue that the Republican Party could start its re-branding.  Many young voters are American Idol fans (as are older voters).  If  the Republican Party could hire new idol Kris Allen to sing a theme song, this could boost its membership and ultimately voters.

Part of the re-branding efforts will also include slogans and a platform of issues.  It is a big process that could take years.  It will be an interesting process to see how the Republican Party has re-branded itself for a run at the presidency in 2012. 

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The Minnesota Twins are opening a new outdoor ballpark next year.  At the end of last year, the Twins mailed me a nifty little digital timer that was pre-set to countdown to opening day for the 2010 season.  (These timers hit 500 days back in November.)  While I am an enthusiastic Twins fan, I am also admittedly a geeky engineer, and my first thought was, "I wonder if the battery is going to last until opening day 2010?"

Yesterday morning, I discovered the answer:

Let us hope that this is not some sort of portent for opening day 2010! 

The Twins should look into getting their money back from the supplier.  This is a good reminder that in a contract for a supply of promotional goods, especially ones with batteries, make sure the seller warrants that they'll do the job.

Now, for the really geeky engineer types, it looks like I will be able to replace the batteries and reset the clock.  Innards detailed after the jump.

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Re-branding occurs all the time.

Re-branding occurs in business. Remember when Bell Atlantic became Verizon? Andersen Consulting became Accenture? How about when Philip Morris became Altria?  

Re-branding occurs in politics too. Just days ago, Judson Berger discussed a kind of "re-branding madness" consuming Washington, D.C. right now: "Terrorist attack is out. -- 'man caused disaster' is in." Our friends at Catchword Branding had a lot of fun with the political re-branding of Swine Flu.

Re-branding even occurs in the world of professional sports. Remember when the NBA franchise Washington Bullets became the Washington Wizards in 1997 out of concern that the Bullets name of some twenty-three years (1974-1997) had acquired "violent overtones".  How about the recent re-branding from the Seattle Supersonics to the Oklahoma City Thunder? Even the NFL has decided to recognize Cincinnati Bengal Chad Johnson's re-branding to Ocho Cinco.

Re-branding changes, according to Wikipedia, are "usually in an attempt to distance [the brand] from certain negative connotations of the previous branding." So, given the widespread meaning and understanding of "redskin" as "offensive slang" and that it is "used as a disparaging term for a Native American," given the pain the term has caused, and given that the team's helmets sport a Native American profile and not a certain variety of spud on them, why won't the Washington Redskins get on the re-branding bandwagon in our nation's capital? After all, even one of the attorneys at the same law firm hired by the team apparently has spoken out, read about the details here.

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Is one of the more common questions asked to trademark attorneys. And the answer is, registering the stylization of your mark is a good way to expand the scope of protection for your mark.

Under Consideration’s Brand New Blog recently commented on the new design of the Sunny Delight logo to Sunny D. Two commentators said “I feel like a Fanta now” and “[i]t reminds me of Snapple's brand for some reason - maybe it is the ‘S’ . . . .” While these comments do not necessarily demonstrate actual confusion between Sunny D and Fanta or Snapple, they do raise an important issue; namely, confusion as to source, sponsorship, affiliation, or endorsement can occur from the stylization of terms even when the terms are different.

A federal registration for the standard character form of a term extends protection in the mark to all stylizations of the specific term only. But as the Sunny D comments show us, a similar stylization for different terms can also cause problems for trademark owners. Therefore, if you create a unique, stylization for the terms in your mark, consider seeking a federal registration for both the standard character and stylized form for the terms in the mark.

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Branding is a business of tiny rock hammers and wrecking balls.

Hear me out.

I’ve always believed that we can cull lessons from movies, so let me share one on branding success from one of my favorites, The Shawshank Redemption.

The main character, a banker named Andy Dufraine (Tim Robbins), is sentenced to life in prison for a crime he didn’t commit.

At Shawshank prison, he becomes friends with Red (Morgan Freeman) who is able to get things from the outside. Saying he likes geology, Andy asks Red for a tiny rock hammer and later for a poster of Rita Hayworth.

I’m not going to get into the full plot and deeper meaning of the movie, but suffice to say Andy doesn’t use the tiny rock hammer to play with rocks and mold chess pieces. He uses it to dig his way out of the concrete wall in his cell, hiding the hole with the poster. The endeavor to secure his freedom takes him 20 years.

Branding can be like chipping away at a concrete wall. It takes time, patience and determination.

You don’t slap a name on a product or a business, call it a day and then expect a brand to flourish.

Rather, you begin the hard work of chipping (infusing) meaning into the brand. And you do it mostly by living the brand. To quote Andy: “I guess it comes down to a simple choice, really: get busy livin’ or get busy dyin’.”

A brand is nothing less than what you put into it. Everything you say and everything you do become a reflection of your brand. In particular, it’s everything you say matching everything you do (high say, high do).

You can say who you are until the cows come home. You can spend millions of dollars on marketing. You can have the slickest ads. But if your customers’ experiences don’t live up to the promise your brand represents, you’re getting busy dyin’ and quick!

We are in love with wrecking balls, aren’t we? We love the big impact hits, the big breakthroughs, the game changers, the transformations, etc.

Oh, I’m all for a hard hitting wrecking ball. Apple’s “1984” television commercial comes to mind. Recognized today as one of the most influential commercials of all time, Apple used it to introduce the Macintosh computer. The ad startled all who saw it, generated millions upon millions of dollars of free publicity and turned Apple into a household name. The high impact ad was a wrecking ball for Apple.

The thing is… wrecking balls don’t come along very often. Just when you think you might have one, its actual impact disappoints.

More often than not, you need to chip away with a tiny rock hammer to earn your place in the minds and hearts of those you care about.

Should we rule out wrecking ball tactics? Of course not… but as I’ve said before, branding is not a 5K or a sprint; it’s a marathon event. What you need in brand building more than anything is persistence and a commitment to give your brand meaning over time versus overnight. You can still break through… you can still be remarkable and be seen as remarkable… it just might take longer than you’d like to achieve this level of success.

Does this make sense to you? What are your thoughts on the use of tiny rock hammers and wrecking balls in brand building?

—David Cameron, On Brands

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Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen. 

But what about when a branded prop dominates the ad or the identifiable trademark is another's product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another's commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz' ads, continue reading after the jump.

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Gripe sites have been around for almost as long as the Internet itself, and they tend to be difficult to shut down.  Conventional wisdom among brand owners is to send a threatening letter and play the odds that the (likely) individual with an axe to grind will not want to get sued by a corporation. 

There are two problems with that strategy.  First is the possibility that the letter will draw more attention to what is likely a sparsely visited site, or the person or entity running the gripe site will actually sue first, as Mike Morgan has done against Goldman Sachs.  Second, and by far the larger problem, is the failure to assess the root causes of the gripe site.  For many retailers, the roots can often be traced to a bad customer experience.  With Goldman, the issue seems to be more that Mr. Morgan is just looking for a place to vent.  Sometimes, the griper is just off the deep end.

As a usually disinterested observer, I find mild entertainment value in how clever the gripers can sometimes be with their domain names, like NoDaddy.com.  There is even enough gall and vinegar to fuel sites devoted to griping wholesale, like this one and this one (warning, these may be offensive).  Interestingly, I have yet to run across any sort of praise sites, like cokerocks.com.  Do any exist?

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The question of whether federal trademark registration should be pursued is a frequent question of those in the marketing world, especially during difficult economic times. I wrote a short piece for Create Magazine a couple of years ago, and you can read it, here. As you will see, there are many benefits to registration and some significant risks in foregoing this valuable protection, making the relatively small investment well worth it.

Just so you know, nothing (including current economic conditions) has changed or rendered my thoughts on the subject moot, in fact, during these tough and challenging economic times, businesses and non-profits would do well to not cut this important cost or corner.

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.

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I submit that when a multi-million dollar study finds that one of the “core aromas” of one of the top-selling wine varietals in the world consists of one of the foulest smells known to man AND a winery seizes the day to incorporate said core aroma into a distinctive brand name, there may very well be no surprises left in the branding world.

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Don’t think speed dating and branding have anything in common? Consider this. In a typical speed dating scenario, you walk into a room, you see 20 different people you don’t know anything about, and you get to spend about 60 seconds with each one. Then, you decide if you want to build a relationship with any of them.

Sound familiar?

It’s a lot like introducing your brand to consumers. You’re up against lots of other brands, you’ve got about 60 seconds to connect with them, and you have to make one hell of a good impression. So here are a few speed dating techniques you can effectively apply to branding.

1. Be interesting and engaging. Have a real personality...YOUR personality. The last thing you want to do is have people forget you 30 seconds after they meet you. Find a way to stand out and be memorable.

2. Don’t tell your whole life story right away. Can you imagine how boring it would be to listen to someone babble on and on about every detail of their lives? You’d tune them out incredibly fast. Yet, that’s what a lot of brands do—try to tell the consumer every feature, every benefit and every difference the very first time they meet.

3. Look good...no, GREAT. Make sure ALL your marketing materials—from business cards to brochures to your web site — make you look absolutely stunning. You’re not going to get a second date if your web site is dressed in 70’s disco pants and a mullet hairdo. (Unless, of course, you’re selling retro disco fashions!)

4. Be yourself. The more true to your brand you are, the more people will feel you are authentic, and will connect with you.

Speed dating has some great techniques you can use to introduce your brand to new customers. If it’s done right, it leads to the ultimate branding goal—a long term, loving relationship.

—Erik Meade, MindFire Communications

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During tough economic times, we all look for places to cut costs. For anyone wondering whether it is wise to cut corners on due diligence when launching a new brand or product name, consider the consequences by reading a short piece I wrote for Create Magazine a couple of years ago, here. Nothing has changed, this is still money very well spent.

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The overlap of virtual reality and intellectual property is a relatively recent phenomenon. The advent of virtual worlds, such as Second Life, has created increased opportunities for legitimate marketing and branding, as well as, increased opportunities for infringement. Second Life even has its own bar association for those interested in virtual legal practice.

If you noticed the dates from the links above, you'll see that I'm not the first blogger to address some of these topics. Indeed, questions about intellectual property in virtual worlds have been percolating for years. However, recently a real-world lawsuit was initiated over virtual-world infringement. Taser International, Inc. has sued Second Life's creator, Linden Research Inc, alleging that Linden is selling virtual weaponry that infringes its rights. Among the interesting issues likely to arise in this suit will be vicarious and contributory trademark infringement and whether or not the use of a trademark in a virtual world constitutes a “use in commerce” which is necessary for trademark infringement. It will be interesting to see how traditional trademark principles are actually applied in the virtual environment.

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While on maternity leave, I watched a lot of daytime television. From this experience a learned a few things.   First, I am incredibly happy I didn’t discover A Baby Story until after I had given birth. Second, whatever Oprah mentions turns to gold. 

Oprah’s marketing power comes as no surprise to anyone. She has been popularizing products for years.  The sheer mention of a product on her show seems to send sales through the roof.  Last year, she made an off-the-cuff statement about the best white dress shirt for women.  When I tried to order one the following day, the company was sold out of most sizes.  This power, cleverly termed by some “The Oprah Effect” is astonishing.  Another recent example: a few weeks ago Oprah Twittered.  After her inaugural Twitter, traffic to the website increased 43 percent. 

The moral of this blog? If you have a new product, try sending it to Oprah.  If she loves it, the sky is the limit.   And if she doesn’t? Well, ask anyone in the beef industry.

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Too often, trademark owners that seek to exploit their brands through various licensing arrangements inadvertently fall into the trap of an unintended franchise. Such disguised franchises can lurk in a variety of agreements and relationships, including reseller, distribution, and independent contractor agreements that include a trademark license with a fee along with very detailed quality control requirements. Sometimes those requirements are more a reflection of the licensor’s intent to control the business activities of the licensee than merely to ensure the products and services meet certain quality control standards. When the licensor exerts too much control over the day to day activities of the licensee, the relationship can evolve from a licensor/licensee relationship to a franchise with serious implications.

Several states have a "three prong test" to determine if a franchise exists. Those requirements generally include: (i) a license to use a trademark; (ii) the payment of a franchise fee for use of the mark; and (iii) significant control exerted by the licensor/ franchisor or significant assistance given by the franchisor or assistance by the licensor. The control required to create a franchise relationship can be established by training programs, operation manuals, and established business or marketing plans or methods of operation.

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What do you think, infringement or not?

vs.

How about these?

vs.

No, I did not just learn how to use Photoshop.  If you live east of the Rockies, you likely know Hellmann's mayonnaise and Edy's ice cream.  If you live west of the Rockies, you can't buy either Hellmann's or Edy's.  Instead, you can buy Best Foods' mayo and Dreyer's ice cream.  (Check out the websites--they resolve to different domains for each brand, but are otherwise completely parallel.)  To my knowledge, Unilever, who owns the Hellmann's/Best Foods brands, has no relation to Dreyer's, who owns the Edy's and Dreyer's labels.  Each company splits these brands at the continental divide, and each has a different story as to how this came about (one here, the other here). 

Moral:  the United States is a pretty big country.  If through merger or consolidation a company picks up a regional brand with a loyal following, it may pay to have a split personality. 

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There is no question that attempting to own "hot" or versions of "hot" appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy "hot" anyway?

As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her "That's Hot" brand, and judging from her pending federal trademark filings, she still has an intention of expanding her "That's Hot" brand to cell phones and alcoholic beverages, among other items, but apparently not buffalo chicken wing sauce or potato chips, thankfully.

Otherwise, it really might distract from a recent pair of trademark food fights in Minneapolis, both involving chips claiming to be "hot" too. You may recall the "Red Hot" Chip Fight between Barrel O'Fun and Old Vienna discussed here, that was quickly bagged here.

So, here are the current contenders in the most recent "Blazin' Hot" trademark food fight:

   Vs.        

A copy of the Buffalo Wild Wings trademark infringement complaint against P&G and Pringles is here.

The most interesting aspect of the complaint, from a trademark strategy perspective, is the fact that Buffalo Wild Wings did not bring a claim for infringement of a federally-registered trademark (Section 32 of the Lanham Act). Instead, it only relies on Section 43 of the Lanham Act (designed to protect unregistered trademarks) and a pair of Minnesota state law causes of action, even though it refers to owning some federal trademark and service mark registrations for and containing the term BLAZIN'. Perhaps Buffalo Wild Wings is attempting to insulate them from attack or challenge by P&G, since none is five years old yet or incontestable. Stay tuned to learn whether P&G turns up the heat on this dispute and counterclaims for cancellation anyway.

Now, as to the "original and unique" point raised above, it is worth asking, who else appears to have a stake in "Blazin" hot trademarks for food products? Uh, let's just say, more than a few . . . .

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Under Consideration's Brand New Blog has recently commented on a couple marks that incorporate acronyms for what appear to be otherwise merely descriptive phrases. For example, the mark FPO (For Print Only) used in connection with a blog concerning the production of printed projects immediately conveys information about the nature of the blog. And LB Little, Brown and Company where Little and Brown could be two individuals’ surnames; thus, immediately conveying information about the individuals and not necessarily perceived by the public as an identification of source for the goods or services.

Acronyms, on the other hand, may not be merely descriptive because consumers have to pause and think how the acronym relates to the goods or services on which the acronym is used. Registration of an acronym on the Principal Register allows the trademark owner to get broader rights in a phrase that might otherwise have to be registered on the Supplemental Register. These broader rights provide security to the eventual registration of the full phrase because the acronym can be asserted against other confusingly similar full phrase marks used in connection with related goods or services. Additionally, the acronym provides support for the eventual registration of the full phrase. 

So, if a marketing plan includes the use of a phrase that is likely to be considered merely descriptive of the goods or services, consider incorporating an acronym into the mark. The acronym may provide the protection necessary to smoothly register the full phrase.

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Capsule recently helped name an international spin-off from Fiserv (a $10 billion business), now called StoneRiver and comprising one billion dollars in revenue. This seemed like the perfect opportunity to compare that process with our experience naming a million dollar business in the promotions category: Sidecar. Now that both projects are successfully completed, we can certainly say the difference is clear.

Capsule used the same criteria (memorable, protectable and relevant) in both scenarios. Names were generated using the same unique ideation techniques and filtered thoroughly in roughly the same manner. Similar education materials and methods were used in each presentation of names. If you had followed the process casually it might have appeared fairly similar, but in fact the differences were dramatic. 

The formation of any billion-dollar start up has plenty of opportunities for contention. So, when this large team went through Capsule’s brand definition process, sustaining collaboration and consensus was the unwritten, but highly understood, rule. The final name had to pass the scrutiny of more than a dozen leaders, managers and team members. It also had to be a rallying point for the company. The name had to be the first flag raised above this new venture to signal a bright future for employees, collaborators and customers.

No pressure, just naming.

Now, the million-dollar venture, Sidecar. No less important to each individual member of the team, perhaps even more to the owner who had thrived for over a decade with her existing name. Less lives impacted if things didn’t go well, but perhaps with greater pain if the process was a failure.

While it’s true that fewer people in the process can mean an easier decision-making process, it can also place more risk of failure upon one set of shoulders. So, more risk for an individual can result in almost the same amount of time for one person to make the same decision as a large committee. Make sense? Seems to if you look at the impact of the decision. It also makes sense to consider each with the same amount of care, nurturing and mutual respect.

Regardless of the size of the organization being named, the same important pieces will always be at play: criteria, process, collaboration and risk. Naming is most successful when it’s considered as a point of collaboration.

No pressure, just naming.

—Aaron Keller, Capsule

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My last post explored the fine -- but critically important -- line, between suggestive and descriptive naming styles, here. As you will recall, marketers and naming gurus who select from the former category are rewarded with immediate rights; selecting from the latter category leaves one in limbo until acquired distinctiveness can be proven, if ever. Landing on the right side of the line (literally and figuratively) on the Spectrum of Distinctiveness, however, is only the first step of the challenge. 

Equally important to landing on the right side of the naming line at the outset, is the constant challenge to keep a suggestive name and mark on the right or inherently distinctive and immediately protectable side of the line. Seems as though there is a strong temptation, if not tendency, to push a perfectly suggestive name or mark back over to the wrong or merely descriptive side of the line through an owner's own misuse on labels, packaging, ad copy, and/or the internet.

Let's just say that I have consumed more than my fair share of Gatorade brand thirst quencher while soaking it up in my hot tub. And let's also just say that during those many extended brand experiences, I have become quite familiar with a particular Gatorade label, one that makes the point of this post quite well.

Anyway, the Gatorade label I'm speaking of, here, prominently displays a federally-registered tag-line with a nice alliterative quality: Rehydrate Replenish Refuel. As you can see from the federal trademark registration, here, the U.S. Trademark Office considered the tag-line sufficiently creative to be inherently distinctive, i.e., suggestive, not merely descriptive.

No doubt this wouldn't have been the case had the Trademark Office seen the pair of descriptive tag-line misuses appearing on my Gatorade label (close-ups here and here). Instead, it would have found the tag-line to be merely descriptive, not suggestive, and refused registration. Why? Bluntly and overtly describing Gatorade thirst quencher as "scientifically formulated with fluid, electrolytes and carbs to rehydrate, replenish and refuel in ways water can't" and also as "a smart choice for athletes because it rehydrates, replenishes and refuels in ways water can't," removes every drop of imagination, thought and perception needed to make Rehydrate Replenish Refuel a suggestive tag-line. Instead it ends up immediately describing a feature of the product and only fuels a finding of mere descriptiveness. 

So, taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet, unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive. Perhaps you're wondering why the Trademark Office didn't pick up on this important point and refuse registration on descriptiveness grounds? Well, let's just say that the Gatorade label submitted to the Trademark Office didn't have the descriptive uses you have seen here. Let's also just say that we'll save for another day and another post what the Trademark Office was provided.

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I am earnestly trying to reserve judgment on the prospect that the Internet Corporation for Assigned Names and Numbers ("ICANN" -- the proverbial "man behind the curtain" of the Internet) is actually going to go through with its roll out of opening new generic top-level domains ("gTLDs") to anyone (a TLD is the thing that comes to the right of the dot in a domain name -- the most famous being COM).  This is no easy task.  Each month some new report comes out that makes the prospect of throwing open TLDs look worse and worse.  As I have observed before, the Internet has a bit of the Wild West to it.  Despite some drawbacks, it has regulated itself fairly well. 

Perhaps the best proxy for the prudence of doing anything is to gauge the number of acronyms it generates:  the fewer, the better.  (By this measure, some of civilization's more dubious achievements include the military, the federal government (or see here), and, of course, the practice of law.)  The debate about ".anythingoes" is relatively new, and the first draft report from the Implementation Recommendation Team (the "IRT") reads like vegetable soup.  The IRT recommends an RPM (rights protection mechanism), a URS (uniform rapid suspension system), a GPML (globally protected marks list), and possibly SERs (sunrise eligibility requirements) in a SDRP (sunrise dispute resolution policy) -- all this (and more!) in a svelte 47 page document complete with numerous footnotes, appendicies, and even a handy flowchart (itself a warning flag):

Don't get me wrong:  if ICANN wants to allow anybody to register any word as a top level domain name, it is worth protecting brand owners.  I'm still struggling with why ICANN is opening up the top-level domain space in the first place.  If ICANN has to create an armada of administrative procedures to protect entities with acknowledged, existing rights, is it something that is really worth doing?

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