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

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

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

redbox

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

RedBoxWaste

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

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

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

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

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