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Category Archives: Almost Advice

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Will Marketing Pitfall Lead to Sand Pounding?

Posted in Advertising, Almost Advice, Articles, Branding, Food, Genericide, Infringement, Loss of Rights, Trademarks

Preparing to send off to college my two oldest sons, led us to Ling & Louie’s Asian Bar & Grill’s rooftop patio on Minneapolis’ Nicollet Mall last week, and we found an interesting menu item. Under the Sandwiches category: “Smashed Burger,” is treated generically as a type of sandwich burger, along with “Kobe Beef” and… Continue Reading

That Google Image Search Could Result in Trouble

Posted in Almost Advice, Branding, Copyrights, Fair Use, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Technology

One aspect commonly associated with building and maintaining a business is the company website. Establishing an online presence can be an important tool for connecting with customers. While website creation can be a delightful distraction for some and perhaps a frustrating obligation for others, platforms such as WordPress and Squarespace make it relatively simple for… Continue Reading

I’ll Take a Trademark, Up, With a Twist

Posted in Almost Advice, Branding, Product Packaging, Trademarks, USPTO

Indeed Brewing Company, a popular brewery here in Minneapolis and a favorite of mine, announced that they were revamping their acclaimed packaging.  A story in the Minneapolis-St. Paul Business Journal unveiled their new packaging: As a really nicely executed design, it de-clutters the look of the can while keeping the well-known artistic features and color… Continue Reading

When is enough, enough with trademark applications?

Posted in Almost Advice

How many trademark applications should I file and for what goods and services? These are two critical questions to any filing strategy, and a close second is how often should I file? The answer to how many applications to file is the number of marks that you realistically believe consumers will rely on to identify… Continue Reading

Learning from Goalkeeping

Posted in Almost Advice, Guest Bloggers, Mixed Bag of Nuts, Squirrelly Thoughts

James Mahoney, Razor’s Edge Communications Ken Dryden, Hall of Fame goalkeeper for the Montreal Canadiens, recently wrote a piece in The Wall Street Journal about Carey Price, the current Canadiens goalkeeper. In describing how good Price is and his style of keeping, Dryden wrote: “Price makes every save look easy. On a shot to the… Continue Reading

Trademark Bully Or Responsible Trademark Owner?

Posted in Almost Advice

Travelers Cos., a large property-casualty insurer, sent a cease and desist letter to a small consulting firm in Anchorage, AK demanding that it stop using the image of an umbrella in connection with its business. Travelers has sent similar letters to other companies and taken action before the Trademark Trial and Appeal Board against similarly situated companies…. Continue Reading

Show, Don’t Tell . . . The Preferred Approach

Posted in Advertising, Almost Advice, Articles, Branding, Genericide, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Product Packaging, Technology, Trademarks

FUSE 2015 is off to being yet another amazing, inspiring event for brand strategy and design professionals. The keynote speaker for day one was Eric Quint, Chief Design Officer of 3M, who delivered a very interesting presentation called: “Future Forward: Beyond Design Tourism.” Little did Mr. Quint know that he set the table nicely for… Continue Reading

The Keys are in the Design

Posted in Almost Advice, Branding, Non-Traditional Trademarks, Patents, Product Configurations, Squirrelly Thoughts

We often ask kids this question: “what do you want to be when you grow up?”  While my trajectory towards lawyering is true, my answer wasn’t always immediately “lawyer.”  I sought something that satisfied my passion for the creative, my critical eye, and my aptitude for math.  For a long time, whenever I answered that… Continue Reading

Bringing Down the Bauhaus for Trademarks?

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Marketing, Non-Traditional Trademarks, Product Configurations, Trademarks, TTAB, USPTO

We’ve been spilling a lot of digital ink lately on the topic of non-traditional trademark protection and how the functionality doctrine serves as an absolute bar for such protection. As you know, for some time, we’ve been stressing the importance of close collaboration between trademark and marketing types when it comes to forming public communications… Continue Reading

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Posted in Almost Advice, Articles, Branding, Civil Procedure, Infringement, Law Suits, Trademark Bullying, Trademarks, TTAB, USPTO

Last week, while I was preparing for and had the unique opportunity of arguing a real, live TTAB final hearing on the merits, outside the TTAB’s typical oral hearing location (because it was selected by the TTAB to be part of the ABA’s IPLSpring continuing education conference in Bethesda, Maryland), the Supreme Court issued its… Continue Reading

Is the TTAB falling?

Posted in Almost Advice

A commonly used forum to resolve trademark registration issues, which also commonly resulted in negotiated settlements over the use of mark, may no longer be so common. Today, the United States Supreme Court issued its heavily anticipated opinion in the B&B Hardware v. Hargis Industries case, which involved the issue of whether TTAB decisions on… Continue Reading

Actually Resisting the Temptation to Tout Function and Hopefully Own a Trademark

Posted in Advertising, Almost Advice, Articles, Branding, Loss of Rights, Non-Traditional Trademarks, Patents, Product Configurations, Product Packaging, Sight, Technology, Trademarks, TTAB, USPTO

Continuing our ramp up toward the launch of our Strategies for Owning Your Product Designs webinar next week, I’ve been thinking a lot about the Morton-Norwich factors — the common analysis for determining whether a product design or feature can be owned as a trademark or whether it is functional and part of the public… Continue Reading

Protecting Your Bacon: Patent versus Trade Secret

Posted in Almost Advice, Food, Idea Protection, Law Suits, Loss of Rights, Mixed Bag of Nuts, Patents

While, generally speaking, copyright law protects art, and trademark law protects branding, patent and trade secret laws protect information.  In deciding how to best protect proprietary information, innovators and businesses often come to a difficult patent/trade secret crossroads: do we keep this as a trade secret, or apply for a patent application?  However a company… Continue Reading

We Prefer A More Subtle, Delicate Approach

Posted in Advertising, Almost Advice, Articles, Branding, Guest Bloggers, Look-For Ads, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, SoapBox, Squirrelly Thoughts, Trademarks

For those of you who have been with us since the beginning of this wonderful collaboration of legal and marketing types, known as DuetsBlog, you also know we have a mascot dubbed Duey — he’s depicted in the squirrel graphic at the top of this page. Here is his story, as told by Aaron Keller… Continue Reading

Owning the Visual Identity of a Generic Word

Posted in Almost Advice, Articles, Branding, Food, Genericide, Infringement, Law Suits, Loss of Rights, Marketing, Trademark Bullying, Trademarks

Unless you have created a highly stylized, distinctive, graphic representation of a generic designation, perhaps something like the Miller Lite script, don’t bother trying to own or enforce it:   Most likely, you’ll end up regretting the decision to enforce, when the court of public opinion weighs in, after the social media shame-wagon flogs it… Continue Reading

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… Continue Reading

The Office Action Response

Posted in Almost Advice

For the most part, the law regarding the examination of trademark applications is slanted in favor of the examining attorney. However, examining attorneys have evidentiary burdens to meet. Analyzing the evidence offered by the examining attorney is as important as arguing the interpretation of the law. Additionally, understanding the evidentiary rules can make the difference in… Continue Reading

Spring Cleaning in the Winter?

Posted in Almost Advice

Winter is as good a time as any other for some spring cleaning when it comes to data privacy. In this case, the task is dusting off the privacy policies that you probably had drafted a while ago and probably have not looked at since to make sure they are up to date with any changes in the… Continue Reading

Reeejected!

Posted in Almost Advice, Trademark Bullying, TTAB

Think an undefended opposition proceeding is a slam dunk, then you better think again.  In Emminence, LLC v. Lisa Kelly, Opposition No. 91205286 (October 8, 2014), the Trademark Trial and Appeal Board dismissed an opposition proceeding even though the defendant did not offer any evidence or even a trial brief in support of her case…. Continue Reading

HOW To Support a Lawsuit in 140 Characters or Less

Posted in Advertising, Almost Advice, Branding, Infringement, Law Suits, Marketing, Social Media, Trademarks

It’s not too often that we see a trademark dispute that affects the marketing and advertising community directly (rather than just their clients), but the facts on this one read like answers to the Five W’s: Who? Popular Greek yogurt manufacturer Chobani, its ad agency Droga5, and corporate leadership guru Dov Seidman. What? A trademark… Continue Reading

When it Feels Like “Look For” Advertising, How About a Little Follow-through?

Posted in Advertising, Almost Advice, Articles, Branding, Food, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks

As we head into the weekend, I thought I’d leave you with a Culver’s ad that feels like “look for” advertising: We’ve spilled a lot of digital ink on the topic of how “look for” advertising greatly enhances a brand owner’s ability to federally register non-traditional trademarks. Now, if Culver’s would only follow-through and seek… Continue Reading

To speak or not to speak about a data breach

Posted in Almost Advice

I recently posted about some companies making the decision to not announce when a data security breach has occurred, or at least they would think twice before announcing. According to a couple crisis communication experts, that delay in announcing could harm the business in more ways than just increasing the chance of legal liability. In connection… Continue Reading