Duets Blog : Creativity and the Law: DuetsBlog

It is probably safe to assume that Channel 45 obtained permission to use Jennifer Aniston's likeness and exploit her right of publicity in promoting viewership of syndicated Friends television programs. That's a deal where everyone appears to win, Channel 45, viewers, advertisers, Aniston, and the other Friends cast members who share in the syndication royalties along with Ms. Aniston.

Last August, I noted the irony of how one of the Friends, Ms. Aniston, appears to have been singled out from her co-star friends, despite their history of solidarity as a group, to serve as the primary marketing face on billboards in promoting viewership of Friends re-runs on television. Then, this month, the above revised billboard caught my attention since it is otherwise identical to prior Aniston billboards, with one key difference. For the past several weeks, Aniston billboards in the Twin Cities have not only promoted Friends, but they have leveraged other non-Friends programming on Channel 45 too.

So, given how often well-intending companies can misapprehend the scope of rights they have been licensed, and given how some are more inclined to ask for forgiveness than advance permission, at times, what I'm not inclined to assume is that Channel 45 obtained an advance license to expand the use of Ms. Aniston's likeness and intellectual property for the additional purpose of promoting viewership of the Minnesota State High School Tournaments on Channel 45.

Since a good portion of the above billboard promotes more than viewership of Friends re-runs, I'm left wondering about the scope of Channel 45's apparent license to use Ms. Aniston's likeness.

Recognizing how carefully celebrities control the use of their likenesses, do you think Channel 45's permission covered any use of Ms. Aniston's likeness beyond promotion of Friends re-runs?

Do you agree, additional permission is required to run the above billboard?

If not, where would you draw the line?

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Puffing, according to Black's Law Dictionary, is defined as:

The expression of an exagerrated opinion -- as opposed to a factual representation -- with the intent to sell a good or service.

Puffing, as a legal principle, has recently received a fair amount of attention as a result of Domino's new ad campaign. 

Puffing generally exists whereever ambiguous and subjective words (such as good, better, best) are used used to describe goods or services.  Some of you may recall the 3DO gaming system shamelessly touted as The Most Advanced Home Gaming System in the Universe.  This is a classic example of puffery.

Importantly, however, puffing isn't merely a verbal concept.  It also applies to visual depictions.  A rather obvious example would be the animated advertisements showing Red Bull gives you wings.   Obviously, the ordinary consumer isn't going to think that a slightly odd tasting taurine beverage is going to cause wing sprouting. 

This brings us to the million dollar question though:  Where is the line between puffing and deception?  A fair rule of thumb is that it's probably when the advertisement presents something that borders on verifiable fact which a consumer might believe.  For example, implying that your orange juice is processed by squeezing oranges directly into the carton (shame on you Tropicana) could cross the line.  Or, presenting your product as having verifiably superior leak protection when, in reality, it's comparable to the competition (ahem, Glad-lock) is a no-no.  

In the end, staying on the right side of the puffery/deception line can probably be accomplished with the old adage of  "Think before you speak."  

UPDATE:  I forgot to include one of my favorite examples of puffing:  the one-bajillion to one preference. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

For as long as I have been watching television, I have seen countless public service announcements telling me to wear a seat belt.  One series that sticks out in my recollection is the "You could learn a lot from a dummy" ads.  I think I recall these mostly because there were so many of them, and there was a modicum of character development involved--the dummies were Vince and Larry.  These were not high art, but according to the Ad Council, they were effective. 

There have been other seat belt campaigns.  Here's a PSA from the 1970's, and here's one about the inventor of the seat belt.  In the history of seat belt PSAs, there seem to be two principal categories:  humor and shock.  Often, these PSA campaigns have slogans, too:  Click It or Ticket, Drive Alive, Buckle Up . . .

Until this week, it had never really occurred to me to appreciate the artistic side of public service announcements, and then I saw the Sussex Safer Roads Partnership "Embrace Life" PSA:

I believe this PSA was unveiled a little over a month ago, and it already has more than two million views on YouTube.  The Sussex Safer Roads Partnership has a page discussing the making of this PSA and other elements of the campaign, which include the use of graffiti, which seems like a bold, novel step. 

I think that the PSA and the "Embrace Life" slogan are both home runs.  Well done!

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

You may have heard the news that iTunes has hit the 10 billion (with a "b") mark in number of songs downloaded.  Sales began in 2003.  That's an average pace of more than 1.4 billion downloads a year.  Considering that a typical single song retails for $0.99 on iTunes (likely higher than average price, as many albums with more than ten songs go for $9.99), I thought, "Wow, that's about $10 billion in sales!"  Well, yes and no.  It's only $9.9 billion in sales--$100 million short of $10 billion.  I sometimes tend to think that one decimal place, one hundredth, is "close," and in a sense, $9.9 billion is close to $10 billion.  In another sense, $100 million is a lot of money standing on its own. 

This reminds me of a point made at a trademark infringement trial a few years ago.  A lawyer (not me) asked a business owner whether a production cost difference of a few pennies per piece part was a big deal--hoping to make the point that it was insubstantial.  The owner replied, "It's a big deal when I'm ordering hundreds of thousands of parts."  All of this, of course, is not new.  I recall learning about economies of scale in my 10th grade Economics class, though the lesson obviously continues to impress. 

But here is another big number to consider:  the folks over at FairWinds recently discovered a company that was losing 47 million initial web impressions to typosquatting domain names.  Josh Bourne has a recent post at the Domain Name Strategy blog discussing this and some related SEO (search engine optimization) issues, and it is worth a read. 

Pay attention to how those little things add up!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

by Mark Prus of NameFlash^SM

Some of my name development clients are fans of long, keyword-rich names. Obviously the appeal of a search engine spotting your website is driving this approach.

Some of my naming clients are fans of short names that can be easily shared on Twitter.

Which approach is better?

I will confess I am a fan of short, memorable names. Steve Baird would agree. As Steve so eloquently puts it, “we live in a sound bite world.”

But I strongly believe that picking a name because it would be more attractive to search engines or because it is short enough to Tweet is a huge mistake. Any time you allow tactics to drive your strategy, you are heading down the road to ruin.

A far better approach is to hone your brand’s strategy and test it with consumers until you find the positioning that is going to make all the difference in your business, then develop a name. David Ogilvy once said "The results of your campaign depend less on how we write your advertising than on how your product is positioned." The same is true for your name. Spend time developing a positioning that rings the bell with consumers and then go find the perfect name that brings that positioning to life.

Sound like a difficult thing to do? Not really. I know I am biased by my 25+ years of experience in building great consumer brands, but this task is not difficult. Time consuming? Yes. At times painful? Yes. Expensive? Could be. But in the end, the process of honing the brand positioning and using that as a basis for name development will pay dividends for years to come.

If the name you choose ends up short enough to Twitter, then you may wish to include that tactic in your arsenal. If your name includes relevant keywords, so much the better! But please, don’t pick names because they work better with tactic A or Tactic B!

Your thoughts?

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Recently, a new Verizon commercial caught my eye.  Perhaps you've seen it:

This immediately reminded me of a circa 1993 (has it really been that long?) De Beers commercial (seen here).  Apparently, this is one of at least two Verizon commercials intended to "spoof" some of the classic, well-known commercials from our past.  My immediate reaction, to these commercials was to start brainstorming all of the conceivable bases on which Verizon might be liable given the similarity of its commercials to clearly recognizable commercials from the past.  Under the right factual circumstances, I could see all sorts of claims for unfair competition, trademark infringement, copyright infringement, misappropriation, etc. (not saying those facts exist here).    

AdFreak, a blog which I just recently became aware, described these commercials as "parody."  However, I seriously question whether these commercials would be able to successfully meet the legal requirements for a parody fair use defense.  The fair use defense is a relatively difficult defense to establish, particularly where the "parody" is being used for commercial benefit.  

Moreover, parodies are generally understood by the law to be a criticism of something represented by the underlying material, not merely a clever transformative use.  Compare the above Verizon "spoof" to this, where the use is plainly intended to comment on De Beers alleged enabling of the "conflict diamond" trade.  Or compare it to this "vicious" (WARNING: GRAPHIC AND DISTURBING CONTENT) parody of "overwrought De Beers jewelry commercials."  Each of these uses is categorically different from Verizon's use here.  So, I hope Verizon had something else in its bag of tricks besides the "parody" argument before running these commercials.   

Ultimately, the moral is that its important to always recognize the danger in "borrowing" someone else's marketing concept or intellectual property, no matter how limited or transformative the use.  Additionally, its important to recognize the fair use defense is not always the best shield to protect yourself, particularly if you're involved in commercial advertising.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

In December, PepsiCo introduced the United States market to a new, special limited time offer. From December 28-February 22, the Pepsi brand would offer Pepsi Throwback. This version of Pepsi contains real sugar, just as Pepsi products did until the early 1980s. This is the second market trial of Pepsi Throwback, as it had originally been on store shelves in the spring of 2009. As we near the end of this limited time offer, I urge Pepsi to make Pepsi Throwback the standard Pepsi product permanently. Offering a cola product with real sugar and 1970s era nostalgia packaging will benefit the brand. It is a healthier product that will foster goodwill in the marketplace, it evokes positive memories and it gives the brand an advantage over Coca-Cola.

The best decision that Pepsi can make from a product standpoint is to remove high fructose corn syrup. Until the last 2-3 decades, the vast majority of colas were sweetened with sugar instead of high fructose corn syrup. Since high fructose corn syrup was introduced, the nutrition value (or lack thereof) has been intensely debated, particularly in recent years. Many attribute high fructose corn syrup to causing higher rates of obesity. It is not smart strategy to use an ingredient that can be perceived as harmful to health. By removing high fructose corn syrup, Pepsi gains a competitive advantage over chief category rival Coca-Cola, assuming that Coca-Cola doesn’t revert back to sugar as well. Even if Coca-Cola does make the move, Pepsi would retain first mover advantage, and would still be more positively perceived. This move of returning a product to the original formula evokes nostalgia feelings. When a brand can be associated with positive, nostalgic feelings, it is usually a beneficial occurrence.

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

Last week we blogged about the dreaded D-Word and how some marketers unwittingly undermine trademark rights in a brand name by explaining that the name "describes" or is "descriptive" of the goods or services sold under the brand.

We also have blogged about the danger of "taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet," because doing so "unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive." This particular marketing pitfall was illustrated by probing the Gatorade label last May.

Today, we continue the similar theme of common marketing pitfalls that can render an otherwise strong and suggestive mark merely descriptive, and weak, if protectable at all.

Icon Burger Development Company launched the Smash Burger franchise a couple of years ago, and it recently found its way to the Twin Cities. Great food and concept, by the way. The founders are really on to something here, but the marketing efforts have a few, let's say, trademark issues.

Smash Burger, at the outset, had the potential to be a strong and smashing (i.e., wonderful, impressive) brand with strong and inherently distinctive trademark rights. Indeed, the U.S. Trademark Office registered a number of different SmashBurger variants, each without a showing of acquired distinctiveness or secondary meaning, here, here, here, and here. It has even federally registered the word SMASH standing alone, and the tag-line: SMASH. SIZZLE. SAVOR.

When your unique and valuable brand name is SMASH BURGER, and you want to own and continue to own rights in SMASH, and related SMASH marks, best not to use "smash" and "smashed" as words to describe the type or name the category of burgers you sell. For example, the website explains why people love SmashBurger: "Fresh, never frozen 100% Angus Beef smashed, seared and seasoned on the grill." As part of the SmashBurger story, it is told: "We start with 100% Angus Beef smashed, seared and seasoned on the grill . . . ." The homepage further reads: "Smash Burger is a great new burger place for a better burger made with 100 Angus Beef that is smashed, seared and seasoned on the grill."

Perhaps most devastating from a trademark perspective, the SmashBurger drink cups read: "Where SMASH means we literally smash 100% Angus beef at a high temperature to sear in all the juicy burger goodness":

Sounds good, if you're dining, but ouch, if you're the patty, or perhaps a trademark type. It appears the Examining Attorney never combed the SmashBurger website, as many will do, in search of descriptiveness admissions that can and will be used against the brand owner and trademark applicant. It remains to be seen whether these issues are raised at some point in the future.

When marketers are tempted to use their brand name in a descriptive way, my suggestion is to consult a thesaurus in search of alternate terms to use in copy that share the same meaning as the branded and trademarked term. This helps avoid a trademark invalidity challenge by the Trademark Office or competitors. 

Would the effective marketing story be lost if words like "smacked," "pounded," "pressed," "crushed," or "slapped" were substituted for "smashed," and terms like "smack," "pound," "press," "crush," or "slap" were substituted for "smash" in the copy, leaving SMASH for use only as a trademark and brand name? I'm thinking that consumers will exercise a little imagination and still get the marketing point, without doing harm to the trademark.

What do you think?

• Email This
• Print
• Comments (5)
• Trackbacks
• Share Link

Putting aside, for now, the unsettled question of who currently owns the iPad trademark, and Dan's perspective on Apple's trademark clearance strategies, from last week, look at what our finely-tuned e-mail spam filter just snagged:

It is a similar story to my previous Free Dell XPS Laptop Spam Scam? blog post from last December. Here, however, the Apple, iPad, and the (possible) iPad configuration trademarks, are the newest form of brand bait for what appears to be an ongoing type of spam e-mail scam. They're fast. It only took about two weeks after Apple's announcement of the iPad for these folks to bait their electronic hook with the newest branding lure.

By the way, how is it that these folks can make the free offer before Apple's iPad tablet is even available to the public? As of today, Apple still has a notify me page, if you'd like to "be among the first to receive iPad." So, doesn't the present unavailability of the iPad add to the misleading nature of the above advertisement because it seeks "testers" for this "new" product?

What do you think, misleading advertising, fair use of Apple's intellectual property?

This story also appears related to the topic covered in my previous Is Wal-Mart Giving Away Free $1,000 Gift Cards? blog post too.

What do these unsolicited e-mail programs have in common? Well, besides the fact that they all appear to originate from Canada (for reasons unknown to me), they use well-known, if not famous brands to attract attention online and convince you to supply them with your e-mail address. Really, would anyone pay even an ounce of attention to any of these e-mail spam solicitations without the unauthorized use of these popular brand names and images?

In an apparent attempt to avoid misleading anyone and confusion, of course, as was the case with the Free Dell XPS offer and the Wal-Mart $1,000 Gift Card offer, the Apple iPad ad offers a purported disclaimer:

The advertisers in this email are not affiliated with any of the above brands.

This is a third party advertisement sent to you by the list owner. If you no longer wish to receive email from this advertiser, please write Reward Group 191 7 West 4th Avenue, Suite 279 Vancouver, B.C. VJ6-1M7 or visit our email removal site by click here.

If you do not wish to receive correspondence from the list manager you will need to follow the unsubscribe instructions provide by the list manager on how to remove you from their list.

Who are the advertisers? Who is the list owner? It says the advertisers are not affiliated with any of the brands, so does that mean the list owner is? Does this disclaimer do the job with claims relating to likelihood of confusion as to source, affiliation, sponsorship, and approval?

Even in the unlikely event it does, what about claims for initial interest confusion? Where is the disclaimer for that additional type of unlawful trademark confusion? And, since there is a reasonable claim of trademark fame for many of these brands, is it even possible to have a disclaimer that avoids a state or federal dilution claim concerning a famous mark?

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

As we have previously written, one way to acquire trademark rights in a non-traditional trademark, especially a product configuration trademark, is to use "look for" advertising.  Here's an example, although not a very prominent use of the "look for" slogan (here in context):

You don’t have to cross the Pacific to enjoy the sweet taste of a Hawaiian original. King’s Hawaiian Sweet Bread can be found throughout the mainland at your local market.  Look for our distinctive “Island Orange” packaging in your service deli or hot bakery section. Take a moment to escape to paradise with King’s Hawaiian!

The real trick, though, is to have your ads and marketing materials convey "look for" without saying "look for."  You have to know when to hit the consumer over the head, and when not to. 

Here's a commercial for Glaxo Group's ADVAIR product that, in my opinion, does that perfectly (sorry, couldn't find a better copy). 

Not surprisingly, Glaxo has a pending application to register the configuration of the ADVAIR "Diskus" as a trademark.  Despite the colorless image, the application does claim the colors purple and white as part of the mark.  Although I have not reviewed the application in detail, Glaxo seems to have positioned this product well to succeed with this registration.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Frequently brand owners find themselves in the position of wanting or needing to explain the thinking behind their name, mark, and/or brand. Sometimes the explanations appear publicly on product packaging, websites, catalogs, brochures, advertising, and frequently in press releases, or perhaps in statements to reporters, especially when trademark litigation concerning the brand is involved. Such explanations about the brand's meaning also can be found in consultant's naming briefs that are easily discovered during litigation, and, if the brand story is told there in a way that "describes" instead of "suggests," the D-word may be used against a brand owner during trademark litigation to severely weaken if not invalidate the underlying trademark. 

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning. For a rather witty account of Firefly Digital's trademark fight with Google, see Ron Coleman's Gadget Goes Gonzo post from a few days ago.

Engaging in a trademark battle with Google is tough enough, but Firefly Digital certainly didn't help itself by the following explanation of the meaning behind its claimed GADGET and WEBSITE GADGET trademarks:

“They embody our passion, our vision and our values,” Spears said. “They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.”

Putting aside what Nancy Friedman might call another misguided use of the meaningless P-word, for Firefly Digital to utter the D-word and admit that its trademarks "are descriptive of our products on many levels," is an admission unlikely to go unnoticed by Google and likely to haunt Firefly Digital for some time.

The problem with "describing" the meaning behind a brand name is that it undermines a claim of inherent distinctiveness and puts the brand owner in the position of having to prove distinctiveness. It also complicates the issue of priority since trademark rights aren't acquired upon first use with merely descriptive marks, as they are with those types of marks falling on the suggestive side of the line along the important Spectrum of Distinctiveness.

This common marketing pitfall is reminiscent of another I previously blogged about: Staying on the Right Side of the Line: Suggestive v. Descriptive.

So, what ever you do, don't "describe" the brand and what it means, instead, explain and weave stories around all that it "suggests" or might convey through the exercise of one's imagination.

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

With more than a little help from Betty White and Abe Vigoda, Mars topped USA Today's AdMeter for 2010 Super Bowl television advertisements.

For anyone out there who thought Abe Vigoda had passed on, and Mars' ad was just another technological resurrection of a dead actor to sell products, like me, you're operating on old and incorrect information, really old and incorrect information.

People magazine apparently jumped the gun back in 1982, and I never caught the correction or the many running jokes that followed his premature obituary. OK, so I apparently missed every one of his film and television appearances since then too.

While we're on the subject of missing information, for those of you who never caught my previous post about whether Mars could pursue the cross-section of a Snickers candy bar -- as a trademark -- here you go. For those of you who never caught Dan's post about Snickers apparent efforts to establish non-traditional trademark rights, here you go.

Note the prominent candy bar cross-section in the final scene of the Snickers commercial?

Mars, us hungry trademark types are waiting. . . . 

UPDATE: AdvertisingAge reports that Snickers ad tops Nielsen IAG Ad Ratings too.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The Super Bowl is much more than a football game to determine a champion; it is a cultural phenomenon. One of the most important elements of Super Bowl Sunday isn’t the on the field action; it is the commercials on television during the breaks in the action. For companies that want to advertise during the game, it is quite costly to partake in this action. A 30 second spot during Super Bowl XLIV will cost $2.5-2.8 million. That figure only includes paying the television network for the time. It doesn’t include costs to produce the ad. The final cost for a 30 second Super Bowl ad could easily run $4 million +. With this in mind, there’s one glaring question. Is Super Bowl advertising worth the cost?

The answer to this question isn’t a simple and definitive yes or no. Advertising during the Super Bowl can raise brand awareness. It also can be used simply to remind a target market of the importance of a brand within a product category. Using an ad in this manner would reinforce existing brand beliefs and hopefully induce a desire to purchase. However, a Super Bowl advertisement can affect a company negatively if not executed correctly. The effectiveness of Super Bowl advertising depends on the perspective of the advertiser, a brand’s strategic objectives and other marketing mix elements.

One of the appealing elements of advertising during the Super Bowl is the fact that it consistently draws a significant audience. More than 90 million people in the United States have watched each of the last 4 Super Bowls. Every Super Bowl since Super Bowl XXVII in January 1993 has drawn at least 80 million viewers. This is noteworthy because television audiences have become far more fragmented over time. The proliferation of television networks with cable/satellite TV, video entertainment options such as video games and DVDs and the vast array of Internet content have been the primary causes of audience fragmentation. The Super Bowl has been one of the few television programs that has been relatively unscathed by audience fragmentation. As a result, the network broadcasting the game (CBS this year) can charge premium pricing for advertising.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

It's not every day you get a chance to use that phrase in a headline. But, what may become known as the "The Cayman Kerfuffle", presents the perfect opportunity.

Would a reasonable person find these confusingly similar?

$51,000 Blue Cayman                                                      $30 Blue Cayman

Let's see, one is a sleek, pricey, well-engineered, high performance sports car that is available in a variety of colors, the other is a stubby, inexpensive, molded plastic clog-like sandal that is also available in a variety of colors. Hmmm.

Even though the Porsche vs. Crocs dust up was discussed widely in November 2009, the seeming inanity still grinds on my nerves. So I can't resist another airing.

If you missed the coverage, here is the kerfuffle catalyst from the Crocs, Inc. Form 10-Q:

"On May 11, 2009, Crocs Europe B.V. received a letter from Dr. Ing. H.c.F. Porsche AG ("Porsche") claiming that the Company's use of the "Cayman" shoe model designator infringes upon their Community Trademark Registration of the mark "CAYMAN" in class 25. Porsche is requesting that Crocs Europe B.V. immediately cease and desist use of the Cayman mark and pay Porsche's attorney's fees in conjunction with the issuance of the notice letter. On July 30, 2009 the Company was served with notice of an injunction against Crocs Europe BV's use of the Cayman mark in Germany. The Company intends to vigorously defend itself against these claims."

Granted, Porsche has a registered trademark for "Cayman" in several international classes including 025, which does encompass footwear, and sells a line of Porsche Design shoes, although, apparently, not under the Cayman label.

I might understand Porsche being embarrassed by the possible association with the popular foam resin clogs spotted on the feet of celeb-kinder in Hollywood, South Beach, and other trendy locales. But infringement? Seriously? Shouldn't Porsche be more embarrassed for making this an issue? Likelihood of confusion is doubtful, unless Porsche dramatically changes its fashion strategy.

Realistically, few people will confuse Crocs Cayman clogs for a Porsche Cayman sports car or one of their designer driving shoes. Fewer still will think they originate from Porsche. Should they, a quick check of the Crocs logo on the shoe itself would correct any incertitude.

Several thoughts arise: Since the Crocs Cayman line was available commercially as early as 2004, five years before the registration issue date of April 2009 for Porsche, does Crocs have prior rights? Should International Truck Intellectual Property Company, owner of the Cayman trademark in International Class 012, which includes sports cars, seek redress from Porsche for infringement? Should Lacoste file an amicus brief since they have an oblique interest? After all, a Cayman is a type of alligator, and should Porsche prevail -- I don't see how, but lets pretend – based on their interpretation of infringement and confusion, the Lacoste logo, shown below, would be a likely next target.

Stay with me on this. It is probable that people driving Porsche Caymans could also be wearing Lacoste clothing, so confusion of origin is surely immanent. Hey, is that a Cayman polo shirt you're wearing?

On the subject of confusion, perhaps the Cayman Islands should pursue Porsche and Crocs for infringement. It is likely to find both products on the Islands, even at the same time and place, and wouldn't the Cayman Islands have prior rights, if we follow the labyrinthic logic in this argument? Toss in people wearing Lacoste fashions, and since most can't tell a Cayman from a run of the pond alligator, it could start a whole reptilian-brand confusion-fest and who knows where that would lead!

This could become a Trademark Infringement Smackdown with, say, Crocodile Dundee headlining. Although, come to think of it, this has certain "The Real Housewives of Intellectual Property" (surely an oxymoron) qualities to it and could spawn a new reality series on Bravo. The notion is no more ridiculous than the Porsche accusation -- and indubitably more entertaining. 

OK, my tongue is tired of being in my cheek.

The old maxim "just because you can, doesn't mean you should" seems apropos. The ill will engendered by overly aggressive enforcement, where likelihood of harm is not apparent, is damaging to a brand, even one as famous and resilient as Porsche. It will likely appear to consumers as needless bullying. That perception can cost far more to rectify than any possible impact of the perceived infringement.

Who's the likely winner in this spat? Certainly not Porsche. Crocs stands to gain from the publicity generated by this action. It is not exactly the way a company wants to gain visibility, but as a creative guy managing brands, I'd take what I get and spin it into branding silk – at the expense of Porsche, of course.

Randall Hull, The Br@nd Ranch®

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

In December, you may recall, I blogged about Boise State's federal registration of the color blue as applied to athletic field turf, known to many as Smurf Turf. At the time, I wondered out loud whether Boise State's success in the U.S. Trademark Office might lead others to follow along this trademark path?

Hat tip again to Brad Frazer, for letting us know that last week, apparently inspired by Boise State's success and notoriety, Eastern Washington University, located in Cheny, Washington, announced its "Red Turf" project for its Woodward Field, shown below:

The plan, supported by a generous $500,000 gift from Eagle alum Michael Roos of the Tennessee Titans and his wife Katherine, has targeted completion in time for the opening of the 2010 football season, if all goes well with additional fund-raising efforts. The red artificial turf promises to be the first of its kind, not just in NCAA Division I football, but in the entire country, so the path appears clear for claiming, or I should say, at least working toward claiming, exclusive rights in the red-colored athletic turf.

Given how some have predicted this plan promises to cause a run on multi-colored turf by publicity-starved schools, I'm left wondering whether Eastern Washington will seek ownership and file an application to federally-register red in the same way that Boise State did with blue. Of course, one of the differences between the two is about twenty some years of use and notoriety.

A long period of substantially exclusive use goes a long way to establishing acquired distinctiveness when dealing with non-traditional trademarks such as single-color marks. Along those lines, it is worth noting the U.S. Supreme Court has indicated in Wal-Mart v. Samara that single colors can never be considered inherently distinctive, so Eastern Washington would have to establish secondary meaning or acquired distinctiveness in the red turf, as Boise State did with blue, before any registration on the Principal Register could issue.

In addition, since the proposed single color red turf mark is not in use yet, Eastern Washington could file an intent-to-use application, and assuming it could acquire distinctiveness or establish secondary meaning in the red-colored turf during the pendency of the application, the filing date would relate back and serve as its nationwide constructive use date for national priority purposes. The problem with not filing such an application is, if another athletic program were to do so before Eastern Washington was able to complete the project and provide athletic events on the new turf, it may find itself in the undesirable position as the second-comer for priority purposes, even though it might have been the first to come up with the idea for a red turf athletic field.

Sounds to me like a job for a team of creative trademark, marketing and PR types, to accelerate the period of time needed to develop the necessary evidence of acquired distinctiveness.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Earlier this month, I noted Accenture's words in publicly ending its relationship with Tiger Woods, having announced around December 13, 2009, that it would "immediately transition" to a new ad campaign, and then compared those words to the company's actions in continuing to run the Tiger Woods airport ads even three weeks after their termination announcement. Right after Accenture's announcement, Going Concern Blog asked "Who Will Replace Tiger Woods at Accenture?" They offered some possibilities, including Phil Mickelson, who is already tied to KPMG.

Accenture's marketing team apparently spent some quality time at the zoo to come up with Tiger's replacements, yes, that's plural. A few days ago, in the Minneapolis airport, I saw Accenture's answer to Going Concern's question: Animals. Concourse G was sporting some brand new Accenture ads, one featuring an elephant balancing on a surfboard, with the tagline "Who says you can't be big and nimble?," and another featuring some frogs hopping over one another with the tagline "Play quantum leapfrog." By the way, how nimble or quantum-oriented is a company that needs at least four weeks to have their words and actions begin to merge?

Putting aside the timing for a moment, you might ask, why animals? Clearly animal mascots and endorsers are a much safer option than human beings, for a variety of obvious reasons. Indeed, one Twitter user notes that using an elephant is "no risk." By the way, someone ought to remind Daniel Snyder of this if he ever has the wisdom to re-brand the Washington Redskins professional football team, as I have previously suggested.

Actually, the largest surprise during my experience in Concourse G, a few days ago, was seeing a lingering Accenture ad still featuring Tiger, now more than a month after Accenture's promise of an immediate transition. The Tiger ad in question was of the thinker/doer variety, so a curious one to keep in circulation, as it appears Tiger is doing much more thinking than doing at the moment.

Given how long it has taken Accenture to "immediately transition" to new Tiger-free ads, given that it hasn't yet successfully removed all Tiger ads from circulation, and given the damage it is believed that Tiger has caused to the Accenture brand, I'm left wondering whether companies plan for these kinds of endorsement-gone-wild contingencies as part of their crisis management planning. It would appear Accenture did not and was caught flat-footed, but who would have guessed, right? Nevertheless, Accenture's unfortunate experience might be a good lesson to all those companies who closely link their reputation with endorsers or mascots outside of the animal kingdom. Perhaps having some pre-approved ads ready for emergencies would permit a nimbler and more quantum-like response when things go wrong.

With respect to the choice of animals, they certainly have served others well. For example, a clumsy white duck works for Aflac, and a little green reptile, seems to work pretty well for GEICO. To the extent either of those little guys offend, disgust, or embarrass anyone, at least Aflac and GEICO are in control of their words and actions, so any resulting damage is more easily considered a self-inflicted wound.

• Email This
• Print
• Comments (4)
• Trackbacks
• Share Link

I recently spotted this bit in an ad flyer:

And it got me to thinking, what makes a fluorescent shoplight "high performance?"  Does American Fluorescent make a non-high performance shoplight, or just a regular performance shoplight?  If so, how is it advertised? 

When it comes to laudatory terms, trademark law mirrors common sense:  although it may be possible to secure proprietary rights in a laudatory term as a trademark, laudatory terms are generally considered weak and entitled to a narrow scope of protection.  In other words, laudatory terms seldom make good, strong trademarks, which should aim for distinctiveness. 

Apart from being weak, the other issue to be wary of in connection with laudatory terms is false advertising, although claims of this sort tend to be rare when a company puffs its own products.  Ads comparing a company's product with its competitor's product tend to draw the most fire in the false advertising arena.  Even so, it is theoretically possible to go too far when it comes to laudatory terms.  (In the above ad, the claim that the fixture "creates" 90% more light than a standard shoplight is more likely to draw fire in the false advertising context than the "high performance" claim, although the two are likely intended to be read together.  It also may be the retailer making the claim, not the manufacturer.)

Of course, I do not recommend erring on the other end, either--something that comes close to disparaging the product than puffing it up--and I've actually seen something that comes close, which, to paraphrase Dave Barry, I am not making up:

Why not just call it "Joy" and be done with it?  There is probably a good reason, but I certainly do not know what it is. 

Here's to many high performance trademarks down the road.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Jacket maker Weatherproof Garment Company took advantage of a GQ-style photo of the President standing in front of the picturesque Great Wall of China.

The White House was not pleased.

Smack in the middle of Times Square in New York - one of the busiest and most-watched intersections on Earth - stood a larger-than-life billboard featuring President Obama, in a Weatherproof jacket, in front of the Great Wall of China.

Now wait. Don't we see the image of the President just about everywhere? Your local newspaper doesn't need White House permission to feature the Pres on page 1, do they?

Of course not. But that's different.

News organizations (even bloggers) can use the image or likeness of political figures - with a few exceptions - in editorial content. That can include all manner of news reports, commentary, and even political cartoons. It's a sort of "fair use" interpretation and falls into the freedom of speech / freedom of the press continuum.

Clearly, that's not what Weatherproof was doing.

The headline "A leader in style" is clever, yes (borrowing "style points" from the unarguably GQ-ish President), but could hardly be seen as political commentary. Whatever Weatherproof may have tried to claim, the company is hoping to sell jackets. Plain and simple.

At least, that's how the White House interpreted it.

Last week, White House counsel Kendall Burman and Weatherproof spokesman Allen Cohen had a "cordial conversation" in which Mr. Burman reminded Mr. Cohen that public figures have a right to protect their likeness for commercial purposes. Needless to say, Weatherproof agreed to take down the billboards at the earliest possible time.

That said, it will be two weeks before the logistics line up to make that happen. Two weeks of continued visibility. Two weeks of continued buzz. All told, it will turn out to be a pretty good return on advertising investment.

Methinks Weatherproof knew exactly what it was doing when it flirted with the edge of the law.

This is gorilla advertising of the first order.

Yes, two billboards in Times Square aren't the equivalent of stuffing flyers under windshield wipers at your local supermarket, but it's still pretty darned creative. With a modest investment, and a cheap license fee from the Associated Press for the photo of the President in China, Weatherproof was able to generate disproportionate attention for their little campaign.

I have to admit, I took a look-see at the Weatherproof website. I need a new coat, and the one in the ad looks pretty good. Frankly, I never would have considered it otherwise. We'll have to see what the ad does for sales on a larger scale, but my guess is the net-net will be positive.

But aren't there any risks in this type of strategy?

Yes, certainly.

The President may engender good feelings for many people, and many people may view him as a style/trend leader, but those warm fuzzies are not universal. Does the Weatherproof brouhaha actually dissuade right-leaning buyers from the brand?

Perhaps.

But my guess is that Weatherproof understands its buyer demographics pretty well.

Was the campaign risky?  Yes. But did it pay off? I think 'yes' as well.

—Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column

• Email This
• Print
• Comments
• Trackbacks
• Share Link

John Welch, over at the TTABlog, reported on a recent trademark specimen of use case (pdf here); one near and dear to my heart, since I represented the Applicant seeking to register the composite word-only mark DELI EXPRESS SAN LUIS for sweet rolls. At issue in the case was whether the product label specimen (appearing below) shows use of the DELI EXPRESS SAN LUIS word-only mark as set forth in the standard character drawing of the trademark application:

The Trademark Trial and Appeal Board (TTAB), in what it admitted to be a "necessarily subjective" analysis, examined the product label specimen -- and on that basis alone -- concluded it does not show use of the claimed DELI EXPRESS SAN LUIS mark:

Here, we agree with the examining attorney that the specimen depicts the two literal portions DELI EXPRESS and SAN LUIS in such a manner that consumers would not perceive them as constituting a single composite mark. First, the DELI EXPRESS portion is not only in a different font but is contained within a yellow-background, and then a larger red background, separated from the remainder of the packaging design by a black bar outlining the top left corner of the package. The other literal portion, SAN LUIS, is outside of that border area and is further separated by a fanciful triangle design and placed upon a green background. The term CONCHA appears below these two elements in a lighter green box. Taken together, we find that the impression left by this specimen is that the two elements, DELI EXPRESS and SAN LUIS, are two separate trademarks rather than the single mark shown on the drawing page (emphasis added).

I respectfully submit that these kinds of determinations -- especially since they are admittedly and "necessarily subjective" -- are not binary, either-or propositions. For example, it is entirely possible for a single specimen to show two trademarks that function as separate individual trademarks and also function together in the same specimen as a unitary word-only composite mark (see third-party registration examples below the jump).

Here, it seems to me, that the specimen in question shows multiple word-only marks (among others too, when designs and stylization is considered), including DELI EXPRESS, SAN LUIS, and the composite of those words, DELI EXPRESS SAN LUIS. Indeed, if a consumer were shown the product label and asked what brand of concha or sweet roll this is, it would be entirely reasonable and appropriate to answer: DELI EXPRESS SAN LUIS. If so, how can it be that the specimen does not show use of the claimed mark?

Given that the drawing shows the mark sought to be registered by applicant (TMEP 807; 37 CFR 2.52), given that applicants enjoy some latitude in choosing the mark to register and include in the drawing (TMEP 807.12(d)), given that the main purpose of the drawing is to provide notice of the nature of the mark sought to be registered (TMEP 807), given that the mark shown in a standard character word-only drawing need not appear on the specimen in the same font, style, size, or color (TMEP 807.03(e)), given that the USPTO actually encourages applicants to use standard character drawings (TMEP 807.04(b)), given that a standard character drawing is a quick and efficient way of showing the essence of a verbal mark (TMEP 807.04(b)), and given the "necessarily subjective" nature of the determination, I submit that the appropriate test for determining whether the specimen shows use of the verbal, word-only mark claimed in the standard character drawing, is whether it would be reasonable for consumers to request applicant's product by the claimed trademark, given what actually appears on the specimen.

In other words, how might consumers request applicant's sweet roll product? Again, I submit it is entirely reasonable that consumers who have seen the product label would request the product by asking for a "DELI EXPRESS SAN LUIS concha or sweet roll." Now, while they might also request a "DELI EXPRESS" concha or sweet roll, or perhaps a SAN LUIS concha or sweet roll, the most complete, accurate, and precise way to request the product would be to ask for a "DELI EXPRESS SAN LUIS" brand concha or sweet roll, and also thereby treat the words as a unitary composite mark, because:

1. The DELI EXPRESS house brand (and primary brand) and the SAN LUIS secondary or sub-brand are the only brands and word-marks on the entire label;
2. They appear proximate to one another, side-by-side on the same horizontal plane, at the top of the label, for easy, conventional reading from left to right;
3. They form the dominant portion of the label since the design elements can't be spoken;
4. The DELI EXPRESS phrase appears in solid black lettering on a yellow-background, and the SAN LUIS phrase has a black-outlined border and it stems from a triangle design element matching the same yellow-background carrying the DELI EXPRESS phrase;
5. There is no requirement to include generic words as part of the claimed mark, i.e., concha or sweet roll;
6. Consumers familiar with applicant's products are accustomed to similar label formats where the DELI EXPRESS house brand is proximately positioned with other sub-brands like SUPER MEGA, SNACKERS, COFFEES OF THE WORLD, and SUB SELECTS, to form federally-registered word-only standard character trademarks: DELI EXPRESS SUPER MEGA, DELI EXPRESS SNACKERS, DELI EXPRESS COFFEES OF THE WORLD, and DELI EXPRESS SUB SELECTS; and
7. Consumers of packaged food products have been conditioned to perceive house marks and secondary marks as not only having separate trademark significance from each other, but also significance together, in the same specimen, even when different colors, styles and fonts may be used for each or portions of each, and even when other matter or wording may appear between them(see third-party registration evidence below the jump).

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

As an attorney, one of my most oft-committed sins against the art of persuasion is forgetting that brevity is key. Get in, deliver your message, and get out.

In contrast, concise delivery of a message is something that good branding and advertising generally excel at. I say "generally," because as I was sitting at/in/on/around/near Mall of America Field at Hubert H. Humphrey Metrodome watching the Minnesota Vikings de-pants the New York Giants to get the #2 Seed in the NFC playoffs, I began to think of other sponsorship mouthfuls that make me question whether any message really gets transferred to the recipient. Given my football frame of mind, the only thing I could think of was the horrendous rebranding of the Chicago Bears as Bears football presented by Bank One.

But, that also get me thinking about some sponsorship "eyefuls" which often leave me confused. For example, there’s this:

(If you prefer live action…)

This...

And this:

While I can’t claim to be an expert on advertising expenditures, it seems to me that budgets may be better spent trying to distinguish yourself, rather becoming another voice in a sea of noise.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

The impact of the Tiger Woods scandal in branding can be viewed from two different perspectives. The first perspective comes from the point of view of the companies that paid Woods to endorse their products. The second perspective is how the personal brand of Tiger Woods will be impacted as the smoke clears from this series of events.

Two professors in University of California-Davis’ Economics Department attempted to measure the impact from the first perspective. They claimed that shareholders in publicly traded companies that Woods endorsed lost $5-12 billion in the weeks that followed the car accident in Florida that set off the scandal. They undoubtedly have an interesting perspective, but there are limiting factors in their research. However, an undisputable fact of the Tiger Woods scandal is that it put a lot of brand management teams in a very delicate situation. Brand managers at firms where Woods served as an endorser had to consider how their brands would be perceived by their target consumers if they were to continue the relationship. It is not an enviable position. 

When a brand chooses to link arms with a celebrity endorser, it must consider which celebrities will be effective endorsers. It is essential to select celebrities that will positively contribute to revenue growth and profitability. I believe that a celebrity endorser is most effective when the target consumer perceives them as attractive or desirable in some fashion and the product is related to the expertise of the celebrity. For example, Michael Jordan was an effective endorser of both Nike and Gatorade because of his status as an elite athlete and the fact that both brands are related to athletic performance. Gisele Bundchen is an effective endorser for Dolce & Gabbana fragrances because scent is an important aspect of appearance and she is the embodiment of phenomenal appearance. She would be far less effective as a celebrity endorser for the Toyota Camry. With regards to Tiger Woods, he is most effective in endorsing Nike Golf products and any other golf related brands. His effect is diminished for brands like Gillette and AT&T.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

When brands and trademarks are at risk of being infringed, swift and immediate protective action is required, given the inherently reputational nature of the resulting damage. That is why the law typically presumes the necessary "irreparable damage" when issuing immediate injunctive relief, once a plaintiff is able to show, among other things, that it is likely to win its trademark infringement claim. Without "irreparable harm or damage" there can be no court's injunction because the simple payment of money will right the wrong.

But, what about outside the context of trademark infringement and court ordered injunctions, in the world of contracts, for example, when a sponsor no longer wants to be associated with a celebrity endorser that has become damaging to the sponsor's reputation? Is the same degree of immediacy required to erase all public signs of the relationship? Perhaps it depends on whether the damage rises to the level of irreparable damage or harm. If so, then perhaps no amount of money will be or should be spared to pull the ads immediately and stop the reputational bleeding.

One might ask how this dynamic has played out between Accenture and Tiger Woods.

After the New Year, and about three weeks after Accenture announced it had ended its relationship with Tiger Woods, I noticed a multitude of Accenture ads in three different airports (Minneapolis, Dallas, and Phoenix), all featuring guess who? Tiger.

My first thought was genuine surprise to see them, given it had been three weeks, and further given that Accenture was so promptly out of the gate as the first sponsor to publicly sever its ties with Tiger. Indeed, two weeks after Tiger's reputational scandal broke in the news, Accenture announced Tiger "is no longer the right representative" for Accenture's advertising, and it was reported the company would "immediately transition" to a new advertising campaign. Some experts even cautioned that Accenture's Tiger billboards and airport advertising "need to be replaced quickly" for obvious reasons, as they now "damage" Accenture's brand and reputation.

So, how damaging to the Accenture brand is the lingering association with Tiger and the smirks that seem to follow given the now rather awkward branding messages that Accenture had adopted as part of the Tiger relationship? If you read Accenture's words from December 13, how quickly they were announced, and how others have praised Accenture for taking this swift and necessary action, the damage sounds quite serious, perhaps even irreparable, but isn't talk cheap? Or at least, more inexpensive than actions? 

For example, I'm certain the cost of scrubbing a website and purging corporate headquarters of any sign that Accenture still knows "what it takes to be a tiger" is far less than the cost of purging all airports of any trace of the Accenture/Tiger endorsement arrangement. In any event, it would have been more than mildly interesting to be part of the dialogue that must have quantified the cost of implementing the directive for an "immediate" transition from Tiger, and the alternative quantifications of slower transition plans, and the one that the company eventually settled upon.

Do you agree that the greater the damage to Accenture, the more "immediate" the transition would have been, i.e., days, not weeks or months?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Times. Garamond. Arial. Copperplate. Chances are that if you are reading this, you not only know what the four terms preceding this sentence mean; you probably use them throughout your daily life.

I’m talking about fonts. In the branding world, fonts add more than a little something extra to the words of an advertisement, a title, or copy, communicating to viewers something more than that which words, pictures and layout can express on their own.  

The mixture of hard angles and titled edges of the font used in the “Star Trek” title evoke what we imagine to be the future:

The classic, familiar edges of Times New Roman make reading most documents, and just about any newspaper with the words “Times” in the title, easy to read:

Fonts are clearly integral to branding and advertising. But how can they be protected? 

Trademark law requires a symbol to identify a source of goods and services. A font is, by definition, a size and style of type; thus, the most that trademark law can offer is to protect the names of fonts (e.g., Palatino, Lucida). Thus, while the public may not infringe a font creator’s rights by using a font, unscrupulous font designers should not be able to sell or license fonts under the names of previously established fonts.

Although some Western countries protect typefaces through copyright law, U.S. law currently does not offer such protection to fonts. Of course, the technology used to create a font, such as computer software, may be protectable under copyright. 

Typeface designs may, however, be protected by design patents, provided that the font meets the requirements for a patentable design. 

For this reason, a license may be necessary in order to use a font in connection with your commercial branding activities.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Apparently I'm rapidly fading from ESPN's target demographic. This became painfully clear to me over the holiday season, with ESPN's Bowl Week promotion, featuring Atlantic's hip-hop artist B.O.B. performing "I Am The Champion":

It's not that ESPN is promoting an up and coming rapper, I understand that marketing decision. It's the title and lyrics of the selection -- the underlying marketing message. It reminds me of Toby Keith's intentionally humorous tune called "I Wanna Talk About Me." Now, call me old fashioned, but I still think of football as a team sport. So, I'll have to admit I was a bit confused by ESPN's musical choice for promoting Bowl Week with a tune that selfishly promotes "I" and individual performance, instead of "We," teamwork, and team performance.

As a result, my humbly suggested New Year's Resolution for ESPN is to consider promoting teamwork when the topic of the day is a team sport, and to perhaps re-tool the B.O.B. video and reserve it for the promotion of individual sports like boxing, bodybuilding, surfing, judo, table tennis, croquet, and chess. "I am" makes more sense than "We are" for these sports.

Anyway, I'm wondering what's wrong with Queen's classic "We are the Champions" power ballad for team sports like football, especially during Bowl Week?

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

As we begin the new year, we thought it might be a good opportunity to take a brief trip down memory lane, to identify, remind you of, and/or introduce you to what appear to be some of the most popular DuetsBlog posts from 2009 (ordered by date, not by popularity):

1. Non-Verbal Logos That Can Stand Alone, And One That Can't
2. Unlawful to Rollerblade?: An Important Lesson in Product/Service Naming
3. Do I Need To Register The Stylized Form of My Mark
4. "Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins
5. "Chief Wahoo" Re-Branding Underway? A Painful Lesson on Saving Face
6. Tasty Humor?
7. Just Verb It? A Legal Perspective on Using Brands As Verbs: Part I
8. The Case of the Screwed Screw Maker
9. Just Verb It? Part II: A Legal Perspective on Using Brands As Verbs
10. Rapala Fishing Lures: More Hits Than Google? Or, More Cats Than You Can Shake a Stick At?
11. Just Verb It? Part III: Testing the "Slippery Slope" of Using Brands as Verbs
12. Without Words, But Not Speechless: More On Non-Verbal Logos That Can Stand Alone
13. Pros and Cons of Stand-Alone Non-Verbal Logos and Other Trademark Styles: A Legal Perspective
14. I See Blue Ovals
15. Counting By Numbers, or Stripes? A Likelihood of Confusion Tale.
16. The P-Word
17. Alpha Watch: Li'l "a" Goes to the "e" Market
18. Fair Use of 3M's Post-It Note?
19. You Mess with Red Bull, You Get the Horns!
20. Corporate Coups and Trademark Abandonment
21. My Aha Moment
22. Getting Familiar With the Basics: A Planning Primer
23. Double Negatives in Branding: Nobody Doesn't = Everybody Does?
24. Who Owns a Trademark Worth $19 Million?
25. An Ode to the Brand of Brands, the King of Cola: Coke

We look forward to continuing our conversation with you during 2010!

Happy New Year!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

If you travel by air at all, I suspect that Southwest Airlines' "Bags Fly Free" campaign resonates a bit:

This is but one of many examples of Southwest Airlines' marketing and business savvy.  By all appearances, this is a company that exudes a love for its business, which necessarily requires a love for its customers.  It meets its customers where they are:  blogging, on YouTube, on Facebook, on Twitter, on TV, in print . . . you get the idea.  They are well known for using humor both in advertising and in providing services.  It is a company that is meeting its mission. 

Here's to more fun in 2010!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

I’m thrilled to have this platform to vent about a long-standing beef: awkward, made-up product and company names. Trademark lawyers call them coined.

Among the worst offenders are automobiles, technology and finance. When I was a kid, cars had names like Roadmaster, Thunderbird and Catalina. Now a prospective car buyer has to wade through an alphanumeric sea of names like IS, GLK350 and FX35.

I don’t blame trademark lawyers … exactly. But the need for a strong, legally defensible name no doubt accounts for some of the odd lexicography we see.

I reserve most of my reproach for the naming consultants who come up with these clunkers and the corporate executives who think that a vague name containing an X will magically transform their company into a paragon of the new economy.

See if you can match these 10 names to the products or services they represent. Warning: One of them is a complete fake, made up by me!

1. Celero                                   a. dental insurance

2. Tolamba                               b. private mortgage banking

3. Onvio                                     c. oil and gas operations

4. Fortex                                    d. email relationship manager

5. Xobni                                     e. fake!

6. Opteum                                 f. motion control equipment

7. Contango                              g. trading software

8. Nexxar                                   h. wealth management services

9. Provantis                               i. money transfer services

10. Graxxion                              j. allergy treatment

Answers are below the jump.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Same drill as yesterday. Another email spam scam? More trademark fair use abuse?

Is it just me, or is the branded email spam coming out of the virtual woodwork, or what?

It appears that spam email -- complete with fully branded solicitations -- is becoming more and more aggressive, both from legal and technology perspectives.

We have a pretty aggressive email spam filter, but this one, like the one I blogged about yesterday, slide right through our screen, just like butter.

From the legal and trademark perspective, don't these advertisers pay attention to the limitations of the nominative fair use defense?

With respect to the purported disclaimer, if you were to scroll all the way down to the bottom of your computer screen, before you hit the CLICK HERE icon, you'd find it is virtually identical to the one from yesterday, only the mailing address has changed:

The advertisers in this email are not affiliated with any of the above brands.

This is a third party advertisement sent to you by the list owner. If you no longer wish to receive email from this list owner, please write Gift Sponsors 7B-871 Victoria Street North, Suite #105, Kitchener, Ontario N2b 3S4 or visit our email removal site by click here.

If you do not wish to receive correspondence from the list manager you will need to follow the unsubscribe instructions provide by the list manager on how to remove you from their list.

Now, at least one website suggests that Wal-Mart is the one actually behind these kind of free gift card offers, here, but I find that really, really hard to believe.

What do you think? What do you know?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

What if you were told that if you agreed to "test" a Dell XPS laptop you could keep it, for free?

Would you expect the offer to be from Dell Computer?

After all, who else but the manufacturer would care to give a computer away for simply having you test it?

Would you at least expect the offer to be affiliated with, or authorized, or approved by Dell Computer?

What if the unsolicited email offer avoided your spam filter and looked something like this?

Would you click on the "CLICK HERE" icon as instructed, or would you scroll all the way down to the bottom of the page to see if you might be able to learn more before clicking?

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Worries about having a white Christmas in Minneapolis and elsewhere have been quiet this year. Thus far, we have spent far more than our typical time shoveling some especially heavy wet snow this holiday season, but don't get me wrong, I'm not complaining.

I do have snow on my mind, however, because each time I think we might be done shoveling, we look out the window and there is more to tackle. So, with each trip outside over the last couple of days, I'm feeling less and less like the ambitious viking dude shown above. 

Who is he anyway?

Might the artwork be a promotion for the Minnesota Vikings and their foreshadowing of the Super Bowl spoils they hope to bring home during the 2009 football post season?

Might it be some action artwork featuring a well-known entertainer and educator known as Ragnar, a/k/a Joseph Juranitch?

(For a clever ESPN Sports Center commercial featuring Ragnar and Adrian Peterson, enjoy here).

Nope, the entire image is a non-verbal non-traditional federally-registered service mark, covering the "transportation of goods by ground transportation," and it apparently is owned by a gentleman named Eduardo Gonzalez, doing business as Freezman Transport, based in, of all places, La Jolla, California:

So, here's an interesting question to ponder over the holidays, can a non-verbal service mark be refused registration as primarily geographically deceptively misdescriptive? Here's the three part test: (1) The primary significance of the mark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the mark indicates the origin of the goods or services when, in fact, they do not come from that place; and (3) the misrepresentation was a material factor in the consumer's decision.

Know of any non-verbal marks that meet this test? If so, they are unregistrable even if acquired distinctiveness can be shown, since no secondary meaning or Section 2(f) evidence will save such a barred mark under Section 2(e)(3) of the Lanham Act.

A while back, John Welch over at the TTABlog discussed some interesting applications of the test for primarily geographically deceptively misdescriptive marks (albeit with some verbal mark examples), here and here.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

You may recall the Gatorade v. Powerade false advertising lawsuit filed by a Pepsico entity (Stokely-Van Camp, Inc.) against rival The Coca-Cola Company back in April, discussed here (with a copy of the complaint).

You also may recall how G scored an F in the courtroom, back in August, losing a hotly contested motion for preliminary injunctive relief, discussed here.

So, I guess it was only a matter of time before G decided the case wasn't worth breaking a sweat over any longer.

Interestingly, the Stipulation and Order ending the case, has the owner of the Gatorade brand dismissing with prejudice (meaning they can never be reasserted) all claims it had asserted in the lawsuit against Powerade brand owner Coca-Cola. 

It shows Coca-Cola only dismissing with prejudice its affirmative defenses and counterclaim, "insofar as they specifically address [Gatorade's] marketing, labeling, advertising and/or promotional claims concerning the inclusion of calcium and/or magnesium in Gatorade Endurance Formula." All other defenses and claims asserted by Coca-Cola were dismissed without prejudice (meaning they are not barred from being reasserted in the future).

Given this unequal treatment in the settlement, it would appear that Gatorade was more anxious to end the case than Powerade.

Recalling that Gatorade and Powerade battled in court over advertising claims back in 2006, any predictions on how long until these two sports drink brand rivals slug it out again in court?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Every once in a while, a really solid advertising campaign comes along that stands out among its peers.  There is obviously no accounting for taste, but one characteristic that attracts me is timelessness -- timelessness as opposed to trendiness, whether that be embodied in a gag, a joke, a celebrity endorsement, or some other hook that loses about ninety-five percent of its effectiveness after one viewing.

I think American Express has hit on a timeless campaign in its "The Faces of Charge" campaign, where it uses everyday objects to portray sad faces and happy faces, like these:

The voiceover on the television ads suggests that an American Express charge card can take the pain out of some inconvenient consumer experiences, like the breakdown of recently purchased products, theft, or traveling.  Enhancing the parade of faces is the spartan accompaniment of Bach's Cello Suite No. 1, which subtly changes mood with the faces.  Less is more.  (It is almost always more.)  The television ads end with a simple and direct presentation of the charge card products against a black background above the tagline, "Don't take chances, take charge."  The "take charge." then morphs to "TAKECHARGE.COM."  Very well played.  This campaign will likely stand the test of time. 

The Inspiration Room has a post on this campaign, as well as video of one of the commercials. 

• Email This
• Print
• Comments (6)
• Trackbacks
• Share Link

Are you shopping for a trademark? Stores spend lots of money branding their names. Accordingly, many register their store names as trademarks.   Over Thanksgiving while shopping in Turkey,  I saw the store front sign Inci®.

I thought it was unique because you do not often see the ® on a store front sign. For example, you do not see bloomingdale’s® or Neiman Marcus®.  Although I am not quite to the shopping level of Isla Fisher’s character in the movie “Confessions of a Shopaholic,” I still have never seen the Inci® store anywhere in the United States, or even on the streets of Paris or London. 

When I returned to the United States, I checked the United States Patent and Trademark Office (USPTO for short) website and found that there is an abandoned trademark for Inci in the United Statesand two live trademarks for Yeni Inci

and Inci Fatih.

According to the USPTO website, “Inci” means pearl. Although I cannot fully understand the Turkish registration website, I was able to determine that the same trademarks are owned by the same entities in the United States and Turkey. The registrations are for clothing. It is unclear, however, if this trademark owner is associated with the Inci® store that I saw in the Turkish mall.

Could the owner of the Turkish store Inci® receive protection in the United States even if it did not have a valid  registration? Possibly. The “famous marks” doctrine could provide such protection. This doctrine was born in my favorite city Paris. Article 6bis of the Paris Convention for Protection of Intellectual Property protects marks within a nation where it is well-known even though it is not actually used or registered in that nation  So, if Inci® can show that it is well-known in the United States it may receive additional protection. 

The courts are far from uniform in applying the “famous marks” doctrine. A New York court ruled in favor of Cutabaco, the company producing the favorite cigar of Cuban President Fidel Castro.  The court held that Cutabaco had a legally protectable right to COHIBA because the Cuban brand was well known among United States premium cigar smokers before the American company General Cigar resumed use of the COHIBA trademark. Accordingly, the court granted Cutabaco an injunction prohibiting General Cigar from continuing to sell cigars under the COHIBA trademark and cancelled General Cigar’s COHIBA. On the other hand, the Second Circuit refused to recognize the doctrine in connection with the famous Bukhara restaurant of New Deli. The Second Circuit explained that Congress had not incorporated the doctrine into Federal Trademark law so it would not recognize the doctrine.  

Whether Inci® or other such European stores would receive protection in the United States without registered trademarks will depend upon how famous the stores are and what court they land in. With the international nature of the economy, this is a topic that the Supreme Court will likely take up in the years to come.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Tiger Woods’ scandal proves once again that celebrity gossip mongering is a blood sport. The bigger the celebrity, the more the blood will flow. In Tiger’s case, he can open up a blood bank. Though it’s unlikely to reach the insanity that was unleashed when Michael Jackson died last summer, it will take the feeding frenzy to a new, all-time low, not because of his marital infidelity, but because of his immense stature as an iconic personality and global brand.

Our addiction to sycophantic enabling of celebrity bad behavior is beyond the pale. We reward and celebrate mediocrity. We give a moral equivalency and equal airtime to those knowingly doing the wrong thing. The discussion isn’t about right versus wrong anymore, but instead the takeaway is “don’t get caught!” Woods’ actions aren’t praise-worthy, but the punishment meted out in the court of public opinion of his private, personal situation is off the charts. Tiger’s poor job at managing the damage control process seems to be as big an affront to the public as what got him into this position.

His off-links activities are irrelevant to the golf world in the scheme of what he has done for the sport in the past 15 years. Let’s remember he plays golf and doesn’t hold elected public office. He didn’t impugn the integrity of his sport by betting or use performance enhancing drugs. Does Tiger Woods deserve to be vilified like O.J. Simpson, Eliot Spitzer, Mark Sanford, John Edwards, Bill Clinton, Marv Albert, Pete Rose, Alex Rodriguez, and many others?

• Email This
• Print
• Comments (12)
• Trackbacks
• Share Link

BlueCross BlueShield of Minnesota has had a "do" advertising campaign for a few years, which, as the name suggests, focuses on the word "do."  I like the billboard ads that are a part of this campaign, which also features the tag line "Groove your body every day."  It is a pretty comprehensive campaign, covering television, Internet, "street media," and posters, in addition to the billboards (and, to their credit, all of this and more resides on a website at do-groove.com).  All of the graphical ads are thematically similar in terms of content, layout, and design, and the "do" is always depicted in white on a blue background with a little arrow beside it.  Here's an example.

The other billboards and posters are similar, with each having the blue "do" portion, and the other side in different colors with white text.

Lately, I've been seeing ads from HealthPartners as part of its "Healthy Should Be Simple" campaign, like this:

(Choose?  Ok, I'll take the chocolate bar!)  While there are numerous differences between these ad campaigns (for starters, HealthPartners consistently uses the orange-ish color scheme), the use of a single, lowercase, imperative verb with an arrow in the HealthPartners ads (and it is in most, if not all of them) always makes me think of the BlueCross "do":

This similarity is probably not close enough to warrant action on the part of either company, and, for that matter, I don't know who might have superior rights, but this does illustrate a lesson, that the overall look and feel of any ad campaign often has numerous elements, and the smallest element could raise an issue.  Here, in my estimation, the issue is not legal, but one of market impression:  do either of these companies want viewers to think of the other company when viewing one of these ads?  Probably not. 

Of course, there are occasions when recalling a competitor's ads is exactly the objective, but that objective is most often in service to a clever riposte or illustrating the deficiencies of the competitor's advertised goods or services.  If the use of a similar element was intentional here, I may be missing the point.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This post is not about candy bars or thoughts about whether the cross-section of a candy bar may function as a trademark, for that, see here.

This brief post is about a 100 Grand Super Size thank you to all of our readers, those who submit comments, those who offer suggestions, those who follow us on Twitter, our guest bloggers, and especially, all of you who spread the word about DuetsBlog in so many ways.

Our inaugural post on DuetsBlog was a short nine months ago, on March 5, 2009, when we introduced you to a fellow named Dr. No, and we noted his or her fascination with The Parade of Horribles.

Four months later, we celebrated our 10,000th unique visitor on DuetsBlog, here.

It is with great thanks to you, that nine months after launch, we are here to celebrate our 100,000th unique visitor on DuetsBlog.

Any predictions on when we might reach our 1,000,000th unique visitor?

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

For Mead Johnson, the maker of Enfamil, $13.5 million is a small price to pay to halt the slide towards store brand formula.

Some companies just have a knack for rubbing the federal courts the wrong way.

Case in point: Baby formula brand Enfamil and its maker, Mead Johnson Nutrition.

Last week, a federal court ruled Mead Johnson must pay $13.5 million in damages to its store-brand rival PBM Products for misleading advertising.  At issue was a series of comparative advertisements illustrating Enfamil's implicit claim that its product contains "a specific set of ingredients" that its competitor does not have.  Those deficiencies - so the ads imply - would lead to poor eye and brain development.

Yikes.

It should go without saying (even for the non-jury-selection specialist) that allowing a suit to go to jury when the claims involve lying to new mothers about their baby's health is more than just bone-headed.

And that's not the first time Mead Johnson's ruffled PBM's feathers.  AdAge details a history of squabbles over misleading advertising involving the baby formula giant.  You can read all about it here.

The whole situation begs the question: If Mead Johnson keeps losing in court, why does it keep pushing the limits with its advertising? 

The judge in the most recent case remarked that Mead Johnson engaged in this campaign under pressure from lagging sales.  Apparently, the generic "store brands" were gaining ground (recession-driven, no doubt), and Mead Johnson felt it needed to up the ante to halt the decline.

Perhaps the better question is: Does the strategy work?

I decided to do a little math to try to find out. 

It's been almost a decade since I've been an active baby formula buyer, but I remember how expensive the dry stuff could get.  Boy, things haven't changed.  For my experiment, I chose the Enfamil Lipil Milk-Based Infant Formula with Iron, powdered, in the 12.9 oz can.  Very similar to what my wife and I used to buy.  The average price per container was $14.99.  Some more, some less.  Cheaper if you buy it in bulk.  You get the idea.

In the industry, baby formula is lovingly referred to as "liquid gold".  At a 40 percent profit margin, it's easy to see why.  Obviously, the liquid (and therefore more-quickly perishable) versions sport a lower margin.  Powder margins are higher.  But just for fun, let's stick with the conservative 40 percent number for our calculations.

So, using quick "street math", we can deduce that Mead Johnson makes $6.00 per 12.9 oz. can of formula.

Now let's divide the settlement amount (the original $13.5 million plus perhaps an additional $1 million in legal fees for a total of $14.5 million) by the average profit per can of $6.00.  Of course, that assumes Mead Johnson sells nothing else, but you get the idea.  When you do that, you get just over 2.4 million.

2.4 million is the number of additional cans of formula the company would need to sell to break even from the settlement.

Does that seem difficult?

I don't think so.

Mead Johnson controls about 50 percent of the market for baby formula, or better than a $1.4 billion market in the US each year.  That's over 90 million cans of formula each year.  An extra 2.4 million cans?  Not so tough.

So we come back to the first question.  Does the misleading advertising make business sense?  If the judge's comments are accurate, Mead Johnson was likely more concerned with preventing the loss of the sales for those 2.4 million cans.  Is pushing the boundaries of advertising law worth the brand positioning risk in this case?

Put another way: Will mothers look at a court ruling (essentially saying the company was wrong, and its formula is no better than a generic) or will they believe the powerful pathos advertising appeals imploring them to look after the child's health?

Tough questions all.

But sadly, I think the math answers them.

—Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

A recent domain name decision under ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP Policy), captioned Bin Shabib & Associates (BSA) LLP v. Hebei IT Shanghai ltd c/o Domain Administrator, found reverse domain name hijacking, under some rather interesting, if not questionable circumstances. The Rules that govern the UDRP Policy define Reverse Domain Name HiJacking as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." 

What caught my eye was the three-member panel's use of the ill-fated "knew or should have known" phrase in finding the requisite "bad faith" for hijacking; a phrase well-known to those who follow the trademark fraud case law and appreciate that recently this same "should have known" standard was flatly rejected by the Court of Appeals for the Federal Circuit (CAFC) in In re Bose, as being nothing more than a test for simple negligence. For more on the In re Bose decision, see here and here.

The Bin Shabib & Associates three-member panel, assigned by NAF, was unpersuaded that complainant had proven common law trademark rights in the acronym BSA (under the first UDRP element), so it declined -- as unnecessary -- to make any findings on the second and third elements under the UDRP, namely, the "lack of legitimate interest" and "bad faith" elements. Despite making no findings on either of these two key elements, the panel held as follows:

Also, the Panel finds that Complainant knew or should have known that it was unable to prove that Respondent lacks rights or legitimate interests in the disputed domain name or that Respondent registered and is using the disputed domain name in bad faith. Based on the foregoing, the panel finds that reverse domain name hijacking has occurred. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”) (emphasis added).

A couple of curious points are worth discussion. First, putting aside for a moment the dubious "should have known" standard of bad faith, how can complainant be guilty of "bad faith" -- sufficient for hijacking -- in failing to appreciate that it had no chance of proving the very two elements for which the panel made no findings? Second, neither of the quoted parentheticals go far enough to support the quoted  "should have known" standard; instead, both speak only of actual knowledge.

As it turns out, however, there is some prior WIPO panel support for the "should have known" standard in finding "bad faith" sufficient for reverse domain name hijacking. Nevertheless, in each of these decisions, the panels made findings on all three UDRP elements before finding "bad faith" and ruling in favor of a claim for reverse domain name hijacking, see here, here, and here.

So, what do you think? Is the "should have known" standard defensible in reverse domain name hijacking decisions? If not, what about gross negligence? How about reckless disregard? What is the appropriate level of culpability? Does it even matter, or is a hijacking finding "of little import" to most complainants?

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Schering-Plough Healthcare, owner of the MiraLAX brand -- the top-selling OTC oral laxative ($360 Million in OTC sales since launching in February 2007) -- has pulled out all of the available stops and then some, in a pre-Thanksgiving Day federal district court action brought in the District of Delaware, asserting a variety of intellectual property and unfair competition claims under both federal and state law. Bloomberg.com's report on the case from yesterday is here. In addition, here is a link to the Complaint, with Exhibits A, B, and C.

As is typical when the manufacturer of a national brand wants to stop what it perceives as unfair retail store brand competition, Schering-Plough brought suit not against either of its retail customers Kroger or CVS -- despite both being mentioned in the complaint -- instead, it sued Perrigo the private label manufacturer who provided the competitive products bearing those retailers' well-known, if not famous store brand names.

Perrigo says it is "the world's largest manufacturer of OTC pharmaceutical products for the store brand market." Here is how Perrigo describes its business model:

The Perrigo Company manufactures products that compare to national brand products such as Tylenol^®, Advil^® or ONE-A-DAY^®. For example, Tylenol^® has acetaminophen as an active ingredient and is available in a store's analgesic (pain relief) section. Store brand acetaminophen is located right next to the national brand acetaminophen, offering the same active ingredient (acetaminophen) and the same relief.

Store brands and national brand products are both manufactured to meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand products are sold by retail stores under their own labels and compete with nationally advertised brands. All Perrigo products meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand OTC and nutritional products have saved consumers many millions of dollars in health-care costs over the past six years.

Although the national brand owner's strategy of not suing its retail customer directly may be attractive from a business relations perspective, unless the case is promptly resolved on an amicable basis, it will be hard to avoid having representatives of Kroger, CVS, and other retail customers of Schering-Plough, put on the "hot seat" in discovery depositions to determine who created, controlled, and/or approved the "look and feel" of the store brand packaging. It remains to be seen how this strategy will play out here for Schering-Plough.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

There is a time and a place for the use of double negatives. The Rolling Stones made the double negative "I Can't Get No" lyrics famous in the legendary hit Satisfaction (#2 on Rolling Stone Magazine's List of the Top Songs of All Time). Pink Floyd made the double negative lyrical phrase "We Don't Need No" famous in the song Another Brick in The Wall, Part 2. With respect to song titles, what about Diana Ross' recording of the double negative Ain't No Mountain High Enough?

Despite these widely popular uses, we are all taught (at an early age, my children have confirmed) not to use no double negatives, never, ever, as they are grammatically incorrect, inappropriate, and most likely to be avoided at all cost in writing and speech. Indeed, to fix the double negative problem, we also are taught that a double negative should be removed and resolve to a single positive. So, we're told that a double negative carries the same meaning as a single positive.

Does that mean Mick Jagger and Keith Richards really meant to say, "I Can Get Satisfaction"? What about the "We Don't Need No" lyrics? Did Roger Waters really intend to communicate that "We Need Both Education and Thought Control? Did Diana Ross really mean, "There is a Mountain High Enough"? Maybe, but I don't think so. Those "positive" versions of the double negative lyrics create entirely different meanings, in my opinion, and if used, they would have put us into a collective slumber.

So, clearly, there is a creative role for double negatives in music, but how about in branding?

My question was inspired driving into work a couple of weeks ago, as I was passed by a Sara Lee delivery truck prominently displaying a double negative tag line ("Nobody Doesn't Like Sara Lee"), confirming that the guardians of the Sara Lee brand continue to believe there is a time and place for the use of double negatives in branding.

In fact, Sara Lee owns several federal trademark registrations for the "Nobody Doesn't Like Sara Lee" tag line covering a wide range of food items, including "rolls, pies, cakes, cheesecake, muffins, ice cream," "flavored mustards, sauces and mayonaises," "cheese," "bread, bagels and buns," "bakery goods," "processed meats," and "frozen prepared meat lasagna entrees."

Perhaps not surprisingly, I couldn't find any other trademark on the entire USPTO database that included both of the terms "nobody" and "doesn't." Given how unique and inherently awkward the phrase is, one might wonder whether substituting any term or other brand name for Sara Lee might avoid a likelihood of confusion with the original.

• Email This
• Print
• Comments (11)
• Trackbacks
• Share Link

Can you name the owner of this exclamation mark branding signal?

You may be surprised to learn it is federally-registered in the U.S. as a stand-alone non-verbal trademark.

You may be even more surprised to learn, it was federally-registered without a showing of secondary meaning or acquired distinctiveness, because it was viewed as an inherently distinctive non-verbal trademark.

This is no ordinary exclamation mark, however, the trademark owner claims it in a 3D appearance, does that help?

Here's another clue: In Latin American countries, the brand name associated with this particular punctuation mark is Pepitos!

Last clue: Would it help to know the goods associated with this registered trademark are chocolate chip cookies?

Answer below the jump.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

I have never participated in early morning Black Friday sales.  For me, those hours each year are most often spent peacefully enjoying the last fruits of a tryptophan-induced slumber.  It is not just a lack of interest, either.  There is a bit of loathing mixed in.  For instance, my goal for the last two year's shopping seasons was not to go to the largest mall in the area.  Increasingly, when I shop, as I stand in lines, fight traffic, and not find what I'm looking for, I repeatedly arrive at a conclusion I need to recall before I step out the door:  shop online. 

The interesting thing about shopping online, though, is the overwhelming number of options.  Comparison shopping conventional retailers' online stores can sometimes be as time consuming as physically running from store to store.  On the other hand, online clearinghouses don't always inspire confidence.  It seems that many retailers are a bit slow at comprehending where some of the future value lies on the Internet, but not all.  Toys 'R Us has figured it out:  it owns toys.com and etoys.com. 

Here's a brief survey of websites residing at some "generic" domain addresses pertinent to the season, roughly in order (as of this writing) of least developed to most developed:

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Today is Thanksgiving, and that means turkey, stuffing, cranberry sauce, football, family and friends.  It also means that tomorrow is the official start of the Christmas season – although some jumped the gun (“a wag of my finger” to any business who has had their Christmas decorations up and holiday music playing for the last few weeks).  It also marks the annual return of what I believe to be effective nostalgic advertising  -- whether it's the ever-present Coca-Cola Polar Bears (more here, here, here, here), the rash of "Home for the Holidays" commercials, or the idyllic carriage rides (one more). 

Now, the question is, what do these commercials really do?  None of them have much to do with the products being sold, but for whatever reason, those darn polar bears make me want to drink a Coca-Cola (which I do about twice a year).  I think the answer is the mental associations that these types of advertisements create.  To me, branding and trademarks are all about generating positive associations.  We can't help but draw a positive association with each of these particular brands because of positive associations we already have with the images in these commercials.  They make us think of, and almost yearn for, this particular time of year when everyone and everything seems to be better.  There's no more fitting example than the last Coca-Cola commercial above.  When a seal pokes its head above the water, the polar bears give it a Coke, rather than (warning -- Thanksgiving pun coming) gobbling it up for a tasty snack. 

While some people may have a problem with these commercial giants wedging their way into our holidays by tugging on our "ahhhhhhhh" strings, I don't necessarily.  I see these particular advertisements as a polite addition to the merriment of the season.  They're not force-feeding us.  They're simply saying, "We know you're enjoying the holidays, but while you're at it, why not think of us."  This brings me back to those who got a wag of my finger in paragraph one.  I guess I can understand the thought process: people spend more around the holidays; if you bring the holidays sooner, people start spending sooner.  But, when I hear Christmas music in a department store the day after Halloween, it has two effects on me.  First, it gives me a strong negative association with that particular retailer.  And second, it begins to dilute the positive association that I have with the holidays and advertisers generally.  Rather than envisioning the retailers and businesses as polar bears wanting to share a Coke because it's the giving time of year, I see retailers wanting to share a Coke to lure me in and finish off the kill.

The holidays are almost like The Goose That Lays the Golden Egg.  They can provide much needed boost, but I think it needs to be approached cautiously.  The "holiday spirit" isn't something to be created.  Rather, it's something to be harnessed.  Happy Thanksgiving! 

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

There was a very interesting article in the New York Times this weekend worth reading - Best Soup Ever?  Suits Over Ads Now Seek Proof.

The article addresses several recent issues raised by companies against competitors over statements or claims being made in advertisements.  Specifically, companies are challenging the truth or implied truth in competitive ads in an attempt to get the ad withdrawn or changed.

Apparently, the number of complaints over advertisements with the National Advertising Division, as well as the number of false advertising lawsuits (under Section 43(a) of the Lanham Act) are up significantly.  Some interesting disputes from the article include:  

• AT&T sued Verizon Wireless over an ad chart, claiming it falsely implied that AT&T had no cell phone coverage in the white area (rather than no 3G coverage):

The lawsuit attacks use of the chart in several commercials.  One great example, is Verizon's Island of Misfit Toys commercial.  In this holiday commercial, out-of-date toys have been banished to an island where Verizon sends one of AT&T’s new phones, due to its allegedly inadequate coverage.  On a related note, the National Advertising Division recently recommended that Sprint discontinue its use of the claim "Most Dependable 3G Network" due to a lack of sufficient support for the claim. 

• Pantene attacked Dove’s claims that its conditioner repairs hair better.  According to the Times, Dove defended its claims with a market study and an expert to defend its use of “wet combing” versus “dry combing” technique.   Based upon a quick review of a few blogs, these two companies are in direct competition over solving the frizzies (for examples, see here and here). 

The Times article suggested defending such claims sometimes requires “delving into the minutiae” and raises the question of whether most consumers actually believe and/or rely on statements such as “no other dog food stacks up” or a hair care product that can really “repair hair better.”  Regardless, it is a great article for anyone interesting in marketing. 

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

It’s the last quarter of the year, and if you haven’t done your planning for 2010, I’ve got two things to say to you: 1) you’re late (you undoubtedly know that), and 2) you’re not alone.

But whether you’re in the middle of developing your 2010 plans, directing planning input from multiple sources, or reviewing plans for clarity and consistency, this blog’s for you.

Working with many different clients over the years, I have worked with many who have been given responsibility for planning who are not themselves trained strategic planners. This means that many of them have a limited understanding of the basics of strategic planning. Oh, they know their stuff and are often brilliant marketers, but some come from the technical side, some come from sales, some from communications – you get the picture. I will see the words “Objective”, “Goal”, “Strategy”, and “Tactic” used interchangeably. A stated “Mission” will have the hallmarks of “Vision”; a “Threat” is labeled a “Weakness”, etc. This makes me crazy, as these are all very different things, and they have very different meanings and functions.

In response I have prepared a primer of sorts that covers the basics of strategic planning terms and explanations for the many who are not trained strategic planners. I share its essence here, knowing that some of you will find this a tad didactic and below your level of operation. I would suggest that you can view this as a refresher. Overall I have the belief and fervent hope that others will certainly benefit from it.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

For the record, I love music, lots of different artists and musical styles: Bob Dylan to Aerosmith, Otis Redding to Elvis, Montgomery Gentry to Santana, Climax Blues Band to Bill Withers, Jack Johnson to Jamey Johnson, Michael Jackson to Alan Jackson, James Taylor to Taylor Swift, Pink Floyd to Wallflowers, Pat Benatar to Pat Green, Glen Campbell to Stevie Wonder, Beatles to Terri Clark, Cat Stevens to B52's, Cranberries to Trace Adkins, Eagles to Nickelback, Supertramp to Troggs, Dido to Donovan, Huey Lewis to Heidi Newfield, Madonna to Boz Scaggs, The Who to Keith Urban, Kellie Pickler to U2, War to Bangles, Lorie Line to Bob Seger, Frank Sinatra to Spyro Gyra, Men at Work to Fourplay, Rolling Stones to Tracy Chapman, Enya to Ray Charles, Police to Queen, Bee Gees to Kenny G, Sade to Steely Dan, Sugarland to Sugarloaf, Barry White to Howard Jones, George Michael to Counting Crows, among many, many, many others, and even Johann Pachelbel's Canon in D Major, by almost any orchestra.

OK, for any armchair musical psychiatrists out there, keep your thoughts to yourself, to the extent you can discern any common thread through each and every one of the above artists (besides my personal appreciation for each). Recognizing musical taste is a rather personal thing, I simply like to think "I know it when I hear it," it's kind of like my auditory version of former U.S. Supreme Court Justice Potter Stewart's famous visual test of obscenity, where he asserted "I know it when I see it."

Anyway, several years ago no country singers would have made the list above. In fact, I used to say that country was the only kind of music I couldn't enjoy, and I grew up in Iowa City, Iowa, smack dab in the middle of the heartland, of all places. Nowadays, rap and hip hop are probably the musical genres I can't seem to appreciate, unless the tune has a little twang or some y'all to it, e.g., Colt Ford style. One of the things that has drawn me to enjoying country music in recent years is the richness of multiple relevant brand mentions by so many different artists within the genre. Obviously, there is more too it than that for me, since I haven't been able to embrace hip hop, a genre with clearly way over-the-top brand references.

Now, being a trademark type, it didn't go unnoticed by me that much earlier artists in other genres have included brand mentions in their music lyrics from time to time (e.g., Elton John's "Chevy" reference in "Crocodile Rock"; Don Henly's "Wayfarers" reference in "Boys of Summer"; The Beatles' "Coca-Cola" reference in "Come Together"; The Beach Boys' "T-Bird" reference in "Fun, Fun, Fun"; and Jim Croce's "Continental" and "El Dorado" references in "Bad Bad Leroy Brown"), so the idea of including brands within music lyrics is not new and may not even have originated in the country music genre, but it seems to me that the writers and artists in Nashville have cranked the brand mentions up a couple of notches in recent years, to my great pleasure and enjoyment (assuming these brand mentions aren't paid placements).

Take, for example, the lyrics for Eric Church's "Love Your Love the Most," with a total of six brand references: three in one verse, and two in one line (Faulkner, Redman, Nascar, George Strait, Jack D, and Coke). By the way, do you think it is safe to assume that Mr. Church's "Jack D" reference is to Jack Daniels, and not some other lesser known "Jack D" whiskey like Jack Davis, or perhaps some obscure reference to Jack'd Up Java?

Seriously, examples of other country music artists employing multiple brand mentions in song lyrics include Jason Michael Carroll's three brand mentions in "Where I'm From" (Armani, Ford, and indirectly John Deere (green tractor reference), Craig Morgan's three brand mentions in "International Harvester" (International Harvester, 4-H, and FFA), Rodney Atkins' three brand mentions in "Watching You" (Happy Meal, Scooby-Doo, and Superman), and Craig Morgan's six brand mentions in "Redneck Yacht Club" (Johnson, Mercury, Evinrude, Astroturf, Bass Tracker, and Bayliner).

What does all this mean for trademark types, marketers, and brand owners? You'll have to stay tuned for Part II in this series on Brand Mentions in Music Lyrics.

In the meantime, any thoughts on what song contains the most different brand references, can you top six? 

• Email This
• Print
• Comments (6)
• Trackbacks
• Share Link

This reminder is a bit late for new Christmas-season consumer products, but it bears repeating year round, as companies contemplate new products:  buy domain names associated with a new product before announcing the new product.  This seems like an obvious thing to do, but I regularly read stories where companies fail to perform this step of a new product launch, then have to go and spend thousands of dollars to secure related domain names that could have been purchased for perhaps $10 per year prior to launch. 

The latest lesson comes from the otherwise savvy Apple Inc., who just won an uncontested UDRP arbitration on the domain name "ipodnano.com."  As flagged by Domain Name Wire, Fusion Media Ltd. registered ipodnano.com two days before Apple announced the product.  In order to win a UDRP arbitration, the complainant must show that the respondent both registered and used the domain name in bad faith.  Having registered this particular domain name a mere two days before the product launch suggests that Fusion Media either (1) made a fortuitous guess, or (2) heard advanced news about the new product.  Even if Fusion Media's guess on the "nano" part of the name was completely in good faith, the "ipod" part of the name was not.  Fusion Media did not respond to the UDRP arbitration complaint, so we may never know, but it is interesting to note that Apple apparently only asserted its trademark rights in IPOD in the arbitration.  (And, as I think of it, maybe Apple isn't so savvy . . .)

To borrow a phrase from Steve Baird, other examples of this sort of thing can be found here, here, and here. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

If you've been paying attention to the trademark front, you've probably heard that Oprah and Mutual of Omaha recently settled a small skirmish over the use of "aha moment."  The skirmish was apparently ignited by Mutual of Omaha's attempt to register "Official Sponsor of the Aha Moment."  According to Oprah, she made the phrase famous when using it on her show to describe "flashes of understanding" she has with the guests on her show.

My first question, directed to Ms. Winfrey:  Are you kidding me?  While I'm no etymologist, I'm willing to bet that "aha moment" originated before Oprah let it slip during one of her shows, which didn't start airing until 1986.  As we all know (or should know), Aha was already pretty popular by no later than 1985.  (FYI - That last hyperlink was tongue-in-cheek.) 

My second, more serious question is directed to both:  How did you value your decision to commit resources to this mark which you are both using in an admittedly descriptive sense?  (For you non-trademark attorneys out there, "descriptive" marks cannot function as trademarks unless and until they acquire something called "secondary meaning," which generally requires five years of exclusive use).    Given that this dispute was relatively short-lived, as far as lawsuits go, I'm guessing both sides felt it better to walk away from this before it got out of hand.

In any event, if I had to pick  a side in this dispute, I'd go with Mutual of Omaha.  When compared to Oprah, their use of "Aha moment" seemed much more like a legitimate branding strategy and much less like a haphazard effort to stockpile words and phrases.  "Official Sponsor of the Aha Moment" is cleverly suggestive of them being there to help when you reach a pivotal point in your life.  They also apparently went on a promotional tour with the phrase.  God forbid I draw the ire of the Oprah machine, but it looks like all she did was lazily tag some interview snippets. 

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

Today, the U.S. Supreme Court declined to hear the requested appeal of Harjo v. Pro-Football, Inc., the nearly two-decade old trademark case seeking cancellation of the U.S. Trademark Registrations owned by the NFL franchise in the Nation's Capitol. In doing so, the highest Court in the land, has permitted the laches ruling to stand. Basically, permitting dismissal of the action given a perceived "unreasonable delay" by the Native American Petitioners in bringing the trademark challenge, despite clear language in the Trademark Act permitting such challenges outside the typical five year statute of limitations, and specifically indicating they can be filed "at any time."

My prior involvement in filing the case back in 1992, the victory we all enjoyed in 1999, and my admittedly rather critical coverage of the dismissal of this historic and ground-breaking case may be found here (9/17/09) and here (May 21, 2009).

Although many ironies may be highlighted from this odd conclusion to the Harjo case, certainly one of the most striking ironies is that it took far longer for this case to wind its way through our legal system than the accused delay by Mateo Romero, the youngest of the original Native American Petitioners, led by Suzan Shown Harjo.

Be that as it may, the torch has been passed to a brand new generation of Native American Petitioners, eager to have the case decided on the merits. The "new" case filed by Amanda Blackhorse and others, more than three years ago, was promptly suspended, pending the final outcome in the Harjo case. Now that the Harjo case has concluded, the Blackhorse case will proceed before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the same admininstrative body that found in favor of Harjo's disparagement claim in 1999.

Moreover, the TTAB appears to have read the news accounts and just today issued an order, indicating that if the parties to the Blackhorse proceeding don't advise it of the status of the Harjo case within thirty days, it will automatically resume the Blackhorse proceeding and issue a new scheduling order to move the case forward, so stay tuned.

OK, here is my prediction. Some day, I don't know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars' apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan's post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you're wondering, I couldn't find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it's not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won't cut it).

So, to satisfy a court's hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review.

What about functionality, you ask? Yes, if the depiction of the cross-section is determined to be functional, then it can never serve or be protected as a trademark. What do you think, is it functional? While the taste of the candy bar is clearly functional, the appearance of the cross-section is far less clearly functional. For example, presumably taste would remain unchanged so long as the ingredients remain constant, even with multiple variations on the internal configuration and layering of those ingredients.

There are actually some on-line quizzes you can take to test your visual sweet tooth skills, on Slashfood, here, and The Science Museum of Minnesota's Thinking Fountain, here. Some are easier than others. Now, to the extent consumers are able to "name" the candy bar associated with the shown cross-section, does that help satisfy all three trademark elements or only the first two? And, to avoid the leading nature of the question (as criticized in a U.K. trademark opposition brought against Mars involving candy bar appearance) would it make sense to first ask respondents whether they are able to determine who put out the candy bar in question by only seeing its cross-section?

On a related note, Mars is currently soliciting video content "starring" Snickers, so perhaps some creative type will accept the assignment, and in the process, author some powerful "look-for" advertising to help Mars acquire and build non-traditional trademark rights in the Snickers cross-section. If I were to accept the assignment, my submission would be to depict nothing but the cross-section of a Snickers candy bar within the non-traditional federally-registered parallelogram shape, but then, I'm a trademark type with only limited creative abilities.

So, can you identify a Snickers bar and distinguish it from others by the cross-section alone?

Do you believe consumers perceive the cross-section as a trademark pointing uniquely to one single brand?

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

[Spoiler alert – this post is about the season finale of Mad Men. If you haven’t watched it, please skip this post (never fear, you can revisit it in the archives once you’ve watched the episode)]. 

In the season finale of Mad Men, the best show on television, the executives of the fictional Sterling Cooper advertising agency stage a mutiny upon learning that Putnam Powell and Lowe, the British agency that purchased Sterling Cooper only a year ago, is now selling Sterling Cooper to McCann-Ericson. Taking the proverbial bull by the horns, the team works all weekend to secure clients, ensure the confidence and loyalty of the top creative and account management talent, and a hotel room at The Pierre from which to launch their new empire.

The name of their new agency? Sterling Cooper Draper Price. Short, crisp, to the point and accurate, as it reflects the names of the main players in the new partnership forged in the dark of night – Sterling Cooper founders Burt Cooper and, by way of inheritance, Roger Sterling, creative director Don Draper, and CFO Lane Price. 

But is it legal? Probably not.

The reason, simply put, is that Powell Putnam and Lowe, the current owner of Sterling Cooper, likely assumed ownership of the rights of the STERLING COOPER trademark when it purchased the company. Similarly, as McCann-Erickson has purchased the entirety of Powell Putman and Lowe, it likely assumed ownership of those rights as well. 

But what about the fact that Sterling Cooper Draper Price is made up of Msgrs. Sterling, Cooper, Draper and Price? Can’t they use their own names to identify their own agency?  The answer is no, not unless Sterling Cooper Draper Price purchases back the rights to STERLING COOPER, or McCann-Erickson abandons the mark altogether by subsuming the old Sterling Cooper under the banner of McCann-Erickson, which, notably, Powell Putnam and Lowe did not do, in large part because of its sterling reputation (pun intended!).

Will McCann-Erikson sue Sterling Cooper Draper Price for trademark infringement?  Stay tuned over the long haul – we have nine months until Season 4 begins.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

I must admit, I was quite intrigued by Dan Kelly’s Duets blog entry “I See Blue Ovals” (August 28, 2009). It got me thinking about some of the trends occurring in logo design today. My 20+ years in the world of branding has witnessed a few notable changes. Perhaps the most significant is the application of 3D effects to identity design. Many logos which were originally two-dimensional (circles), have recently morphed into spheres.

Take AT&T’s 3D sphere which replaced a 2D circle logo.

Minolta’s 3D design form also replaced its old 2D form.

XBOX has adopted a 3D design. 

Similarly, Xerox now uses a 3D sphere—a dramatic departure from their old logo (some would say that their new design borrowed heavily from XBOX).

This proliferation of 3D spheres also includes Firefox, BT, Sony Ericsson, and Wikipedia, to cite a few.

Part of the explanation for this transformation is pure evolution and advance in the field of design itself. CAD programs are now common in the design community, enabling and encouraging the application of three-dimensional drawing for corporate identities.

3D logo design isn’t limited to the development of spheres. GM, ABC, Apple, Ford (yes, the blue oval), Dell, VW, and Chevron (as well as countless others), have all been redesigned to bring dimensionality as well as a more modern, contemporary look and feel to their visual identities. As this trend continues, look for more logos of all shapes and sizes to take on 3D effects.

--Alan Bergstrom, Brand Insights

• Email This
• Print
• Comments
• Trackbacks
• Share Link

As you may recall, last month, we had some fun trying to solve the mystery of a non-traditional and non-verbal trademark owned by Amazon.com, here.

This time the non-traditional and non-verbal mystery mark shown above is described in trademark filings as consisting of "four circles that increase in size from left to right." I call it an "increasingly intense ellipsis." What would you call it, if you had to give it a name?

More importantly, have you seen it before? Do you recognize it? Are you surprised to know it is registered and protected as a trademark? Do you know what goods and services are associated with it? Do you know who owns it?

OK, need more information?

You don't need the products bearing this "increasingly intense ellipsis" mark or the services associated with it to shop online at Amazon.com or any other online retailer. Did that help?

No? Here's another hint: It is used in close association with this service mark: Tap & Go.

Still not enough? Alright, enough suspense?

The visual answer and more discussion is below the jump.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

A couple of hours ago Kare 11 News in Minneapolis reported "Lions Tap wins settlement with McDonalds."

Absolutely no details about the settlement were provided, so it's hard to understand how Kare 11 is able to pronounce this as a "win" for Lion's Tap over McDonalds, although it certainly plays into the seductive David and Goliath theme of the case. The attorney for Lion's Tap apparently is quoted as saying the parties reached a "mutually beneficial amicable resolution," and Kare 11 further reports that McDonalds did not "immediately return a phone message seeking a comment" today.

Perhaps even more troubling than the unsupported "win" characterization, is the repeated failure of the traditional media covering this story to get the facts straight -- facts easily discernible by reading the federal court complaint that is so often recited in the stories, but apparently very few actually have undertaken to read it. In case you're interested, here is another link to the actual complaint.

As we have documented before on DuetsBlog, Lion's Tap did not register the "Who's Your Patty" slogan until after McDonalds began use and only days before filing suit against McDonalds, and it did not register -- even in Minnesota -- four years ago, as repeatedly and incorrectly reported ad nauseam by the media.

In fairness, although local CBS affiliate WCCO also republished the significant error on the timing of Lion's Tap's Minnesota registration of the "Who's Your Patty" slogan, at least it didn't assume the settlement to be a "win" for the Tap: "Lion's Tap Settles With McD's Over Catchphrase."

Our coverage of this case is here (9/3/09), here (9/8/09), here (9/21/09), and here (10/17/09).

In case we have not heard the last word on this case, stay tuned, and we'll let you know more as we know more about this Lion's Tap "win" and "mutually beneficial" resolution.

UPDATE: Is the Star Tribune reading DuetsBlog? It appears so. A Google search shows the Star Tribune's original story title on the settlement was: "Lion's Tap wins trademark suit against McDonald's," but now the story is titled: "Lion's Tap settles trademark suit against McDonald's," with no mention of the Minnesota State registration.

Now we just need to get USAToday, NPR, Newstin, Daylife, and NewsSpider, on the bandwagon.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

The October/November issue of Brand Packaging magazine just hit the streets and I'm deeply honored to say that my piece entitled "A Trademark Touch: Strategies for Owning and Protecting Touchmarks" is this issue's "cover story" (minus the skull and crossbones).

The digital version can be read here. I hope you find it eye-opening in a tactile kind of way.

By the way, I'd love some feedback on it.

What is your favorite touchmark anyway?

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

In just 96 hours, John Sullivan could be hawking your products. That’s right, John Sullivan. Signed. Sealed. Delivered. No muss, no legal fuss. 

Wait a minute. Who’s John Sullivan? Well, for those living under a rock, he’s the first-year starter at center for the Minnesota Vikings, and a California company named Brand Affinity Technologies has figured out how to make him, and a handful of other mostly B-list NFL players, the newest wave in sports marketing.

Impossible! Can’t be done! John Sullivan hawking my products in just 96 hours? Yup, 96 hours. According to a recent article in the New York Times, Brand Affinity has streamlined the process of celebrity endorsements to something Henry Ford would be proud of. Contracts are standard. And so are the ad treatments, which are shot generically before you attach your brand to complete the campaign. Says a Brand Affinity spokesperson quoted in the article: “A company can contact a player, come to an agreement and the next day the ads could be up.” And it can all be done online.

Well, what fun is that?

Those of us who have toiled in the trenches of marketing recognize that the process of hammering out endorsement contracts and creating first-rate marketing with that newly minted spokesperson usually takes, shall we say, a bit more than four days. 

A well-thought-out contract should explore what’s possible, rather than close the door on the big idea. I’ll let you J.D.s list out all the other reasons why this cookie-cutter approach is flawed from a legal standpoint. From a marketer’s perspective, I view this as the equivalent of propping a brand next to a celebrity cardboard cutout. Sure, it’s good for a chuckle, but does anyone really believe you’re hanging out with that bikini-clad supermodel?

Effective marketing takes integration, collaboration and creativity. And those take time. With all due respect to John Sullivan, that can’t be accomplished by speed-dating your way through a bunch of B-list NFL players.

-Jorg Pierach, Fast Horse

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M's permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M's trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

  

Do you suppose Dial has any regrets in letting the clock logo go?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Millimeters apart on the label, miles apart in meaning. Yes, a few extra millimeters of blank space can make all the difference in the world for some brands. Especially when the brand name consists of two words, and the typical visual treatment has all letters appearing in identical size and style (all caps), and when compressing the words yields an unintended, unfavorable meaning. Take the above luxury skin care brand owned by La Mer Technology, one of the Estee Lauder companies.

Honestly, I'm not sure how, but a few weeks ago, I came across Felicia Sullivan's blog post "Covet Fall's Top 10 Beauty Indulgences" on The Huffington Post, featuring the above product image. I took a double take at the brand name, laughed out loud (initially thinking it was a spoof product), and after realizing it wasn't, I knew I couldn't resist writing about it.

Part of my due diligence involved questioning my wife about it, she being far more experienced in these kinds of matters. I was "kindly" informed that "anybody who is anyone" knows La Mer is a coveted luxury skin care brand. Since being educated, I now introduce my wife as anyone, and myself as no one. Ironically, you might say I fit at least one slang definition of "lamer" -- "a person who is out of touch with modern fads or trends, esp. one who is unsophisticated." There are other meanings too, that I suspect don't implicate the target market for $130 an ounce skin care products, or value-priced 16.5 ounce containers at $1,390. Just so you know, I also have come to know that anyone who knows anything about the French language knows La Mer means "the sea".

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Every now and then, I come across branding campaigns which make me ask "What were they thinking?"  Although the question may sound condescending, I often ask it in a literal sense, trying to figure out why advertisers made certain decisions.  

One particular advertising campaign that I can't figure out is the "Land of Beef."

It appears that the goal of this campaign is to show various "beefscapes" which I suppose are intended to make beef more appealing (see other examples here and here).  However, I don't get how they could accomplish this goal.   As another blogger has asked:  "How is that appetizing."  Frankly, I want my steak tender; not rock hard like a canyon wall. 

Another advertisement that I can't quite figure out accosts me on my way to the office every morning.  It's an advertisement for Manny's Steakhouse, which arguably serves some of the finest steaks in Minneapolis (and elsewhere).  The advertisement depicts a giant bull in all its anatomically correct glory with the tag line, "Manny's:  One Helluva Sac Lunch."   (Dan Kelly previously referenced this photo in his "Tasty Humor" post.)  I can see how it might be funny, but again, how is it appetizing.

Now, I'm a big steak fan.  I love red meat.  (Is there any other kind?)  But, these advertisements absolutely do not make me want to eat beef.  In fact, they make me want to steer clear until the image disappears from my mind.  Who wants the last thing going through their mind before taking a bite into a delicious steak to be bull testicles?  Objectively viewing these campaigns, who is the target market and what is the goal?  I can't come up with a satisfactory answer for either. 

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it's time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you're wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another's advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn't Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M's Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M's trademark or strenghten the brand? I'm thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another's non-traditional trademark in advertising: Levi's Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M's permission for this billboard advertisement?

• Email This
• Print
• Comments (10)
• Trackbacks
• Share Link

The Minneapolis Star Tribune finally reported on the Who's Your Patty? trademark infringement lawsuit filed in August by self-proclaimed "David" (Lion's Tap) against "Goliath" (McDonald's), here. Our previous coverage is here, here, and here.

The Star Tribune reports that McDonald's has not yet answered the complaint filed by Lion's Tap. That's true, but all that means is that Lion's Tap filed, but has not yet formally served the complaint on McDonald's. Had the complaint been formally served on McDonald's, as the rules require before an obligation to answer arises, then McDonald's would have twenty days in which to respond. So, the parties continue to negotiate for an amicable settlement. 

No doubt, "David" would prefer not to have to formally serve the complaint because that is when the federal court's machinery starts to turn and more significant money begins to be spent in pursuing the case. Of course, Lion's Tap will need to formally serve the complaint on McDonald's within 120 days of filing the complaint or risk the suit being dismissed, so, just before year end. We previously have discussed the strategy of filing, but not immediately serving federal court complaints, here.

The Star Tribune story also reports: "The Lion's Tap says it has been using the phrase for at least four years and has had it trademarked in Minnesota. It also has a federal trademark application submitted." The use of past tense "had" appears to repeat the same incorrect fact that most of the media ran with when the story originally broke, namely, that Lion's Tap had registered Who's Your Patty? as a trademark slogan before McDonald's began use of the same slogan, implying McDonald's knowingly "stole" something of Lion's Tap.

As you may recall, we already pointed out how nearly all the media outlets got this critical fact wrong, as Lion's Tap did not register until ten days before it filed suit against McDonald's, and well after McDonald's posted billboards bearing the slogan. All the Hamburglar references don't stick to McDonald's if it knew nothing about Lion's Tap's discrete prior use of the Who's Your Patty? slogan, an entirely plausible scenario, as we have already discussed, here.

Most interesting, at least to me, are the scores of reader comments to the Star Tribune story, here.

For the time being, they reveal that, for just about every enthusiastic Lion's Tap fan who loves to support the small fry and is cheering on "David" there is a pretty harsh critic of Lion's Tap, some even taking pot shots at the quality of its food. Indeed, it appears a substantial number would endorse Jason Voiovich's caution: "Here's the problem, instead of coming off as the victim (which you could argue Lion's Tap is), they come off as another coffee-in-the-crotch, show-me-the-money, lawsuit-happy opportunist." So, you might say that PR can cut both ways.

The comments also understandably reveal more confusion between Lion's Tap and Lyon's Pub than between David's and Goliath's respective uses of Who's Your Patty?

Also, I learned from the comments about another reportedly great burger joint that appears to be worth the extra drive: Hopper's Bar in Waconia. I'll make sure to let you know how that goes. So, beware, PR efforts can unintentionally inform even loyal patrons of competitive alternatives too!

More on the legal claims, after the jump, in case you're interested.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Trademark Infringement is a sticky subject online. Our first blog talked about Twitter and trademark infringement and today I want to address trademark infringement in relation to affiliate marketing. 

Affiliate Marketing is a process that rewards a blog or website for every customer that is brought to the company (the affiliate) that blog or website is promoting. The goal of the affiliate marketer is to bring visitors to the affiliate’s website in efforts to sell the affiliate’s products or services. Affiliate marketers will try numerous things in efforts to market these products or services in efforts to make money. In the past there have been lawsuits brought against marketers like this due to improper claims they were making about a product or service, who endorsed it, and if it worked. 

In August, a complaint like this was filed against not only the affiliate marketers but the affiliate as well. The claim is that the affiliate should be monitoring any and every marketing vehicle and message that is used in relation to its product.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

The single-letter branding and trademark truncation trend continues.

Can you name the retailer selling online gift cards sent by e-mail, using no other identification besides the li'l "a" shown here?

Does this li'l "a" logo with a radish inside help?

How about these, do they help?  

Well, just so you know, it's not this retailer: 

• Email This
• Print
• Comments (29)
• Trackbacks
• Share Link

Professors at the University of Pennsylvania and at UC Berkeley School of Law released a study this week conclusively titled "Americans Reject Tailored Advertising," suggesting that there is high resistance among individuals to tailored advertising on the Internet.  (Press release from Penn here, NYT coverage here.)  Although I have been unable to download a copy of the study, it apparently suggests that there is a desire for legislation in this area.  From the Penn press release:

The Berkeley-Annenberg team found that 92 percent of those polled agree there should be a law that requires websites and advertising companies to delete all stored information about an individual, if requested to do so.  Sixty-three percent believe advertisers should be legally required to delete information about their internet activity immediately, whether requested or not.

Apparently, these findings are not without controversy.  In March, a company called TRUSTe, a self-proclaimed "leading internet privacy services provider," released survey results suggesting that people are increasingly comfortable with being tracked on the Internet, and that they are really more annoyed by advertising that is irrelevant to their needs and wants. 

I have not had the chance to wade through both studies, each of which is based upon its own survey of about 1,000 individuals, but it seems to me simply from reading the press releases related to each that both studies suffer from problems of bias.  In addition, I ran across a headline this week that sales of Internet advertising are outpacing sales of TV advertising in the U.K.  I understand that this statistic is not directly on point:  it is U.K. data, not U.S. data, and it does not distinguish targeted ads from non-targeted ads.  Even so, it seems to me that whatever the studies and surveys supposedly say, or are designed to convey, there seems to be a rather robust market for advertising on the Internet.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Have you ever experienced or observed marketing styles that might be fairly described as high-octane, fast-paced, or perhaps, so hopped-up on Red Bull® or some other energy drink, there is simply no time for meaningful collaboration, much less careful, proactive, strategic thinking or planning? Perhaps a fun, exhilarating experience, but what are the consequences?

If you have, as you might know first hand (or at least imagine), this style can seriously compromise valuable intellectual property rights and protection. You know when the trademark attorney gets the call if this style controls, right? Immediately upon encountering a serious and unfair competitive threat. But in many instances, this will be long after a coherent strategy might have been created, well after packaging is designed and introduced, well after marketing materials are finalized and distributed, long after websites have been launched, and well after all the unknowing, but self-inflicted damage is done. In some cases the resulting damage is manageable and can be repaired, other times it is not, and legal claims that might have been strong and viable suddenly have turned dead-on-arrival.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

This sponsored banner ad is currently appearing in AdAge's Daily News on-line newsletter:

How many boxes of tissue do you suppose this ad is responsible for selling?

If the answer is none, that is probably fine with Kimberly-Clark since the return on investment for this ad is measured quite differently, I'm sure, given how the frequently misused Kleenex® brand is currently enjoying the lofty status as one of The 100 Best Global Brands. No doubt, Kimberly-Clark would like to keep not only this annointed status, but even more basically, it would like to keep the status as a brand and protectable trademark intact too.

In all likelihood, trademark types are behind this kind of advertisement, or perhaps more properly termed, "public service announcement," and they also are probably behind the "brand tissue" phrase, closely following each use of the brand name Kleenex®. Both measures help emphasize to consumers that Kleenex® is a brand of tissue coming from a single unique source, not a type or category of tissue coming from a variety of different competing sources.

These kinds of precautions are important educational steps a trademark owner can take when a meaningful portion of the public may misuse the brand name as a generic term. They are designed to shape the public's proper use of the trademark, and, hopefully, prevent the trademark owner's ultimate fear: Genericide. Indeed, we previously noted Kimberly-Clark's success to date on this very subject:

[W]hen the public misuses a famous trademark as a generic term and the brand owner risks losing exclusive rights through changes in the common meaning of the term. Avoiding the risk of this happening is something Kimberly-Clark® knows more than a little about, I suspect. No doubt, the legal team at Kimberly-Clark® has done an impressive job of preventing the KLEENEX® brand from following former brands like ESCALATOR, TRAMPOLINE, and ZIPPER, to name a few, into the unpleasant graveyard of genericide.

In the end, however, trademark owner's efforts aside, the public will decide the issue of genericide, as we have discussed before:

Unlike the kind of trademark abandonment that automatically results from the single act of non-use of a trademark coupled with no intention at that time to resume use of the trademark, the kind of trademark abandonment that is also known as genericide, in contrast, results from a gradual change in the meaning of a trademark or brand to an unprotectable generic term. A change that shifts the meaning -- understood by a majority of the relevant consuming public -- from identifying, distinguishing and indicating a single source for a particular product or service to a designation that connotes no single source at all, but instead, an entire product or service category with multiple unrelated sources.

So long as the "majority of the relevant consuming public" (more than half) continue to understand Kleenex® as a brand, the exclusive trademark rights will remain intact.

If you read AdAge, congratulations, apparently we are part of the "relevant consuming public," or perhaps you are viewed as someone who has influence on how the "relevant consuming public" perceives the Kleenex® brand.

I hope I did my part here, now it's your turn.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Time for me to play dumb consumer and ask an honest question.  What is the conventional wisdom in relaunching or revitalizing a brand:  do you tell consumers that you're doing it, or not? 

I suspect that there is no universal answer, but Holiday Inn's "relaunch" has admittedly caught my attention.  (It caught Steve's attention here.)  Every morning on the way to work for the past several months, I have passed a billboard for Holiday Inn stating, "We're making big changes."  Since my first viewing of the billboard, my brain has always followed with a thought along the lines of, "Well, you must have needed it."  Why would a company mess with success? 

More commentary after the jump . . .

• Email This
• Print
• Comments (4)
• Trackbacks
• Share Link

A few years ago, the world was introduced to arguably the creepiest fast food mascot of all time: The King.  For many of us, this introduction came courtesy of a frightening commercial suggesting that we "Wake Up With The King."  Over the following years, TK expanded his popularity.  He went from our bedrooms to our football fields (other examples here and here).  Eventually, TK became less about burgers, and more about celebrity.  He became more than a mascot, inviting (fake) controversy and spawning imitators.  As a matter of fact, he has become immensely popular with 114,000 My Space friends.

So, the moral of the story is that Burger King has done an incredible job of product promotion here and companies should do whatever they can to establish their symbol as a pop-culture icon, right? 

Maybe.  Consider the following:  what if TK eventually becomes such a pop culture icon that he no longer represents Burger King.  Stated differently, what if the public appropriates TK for its own uses such that he can no longer be considered an indicator of source for Burger King's goods and services?  Could we be looking at the first case of trademark regicide, as opposed to trademark genercide?  I would say that we have a ways to go at this point.  Nonetheless, I think it's a realistic possibility given today's viral marketing environment.    

• Email This
• Print
• Comments
• Trackbacks
• Share Link

As promised, here are some additional thoughts (beyond the very frank and practical non-legal advice already shared by Jason Voiovich) about Lion's Tap's trademark infringement case against McDonald's over the "Who's Your Patty?" slogan.

Here's the multi-million dollar question: What did McDonald's know and when did they know it? Those are questions likely to get a lot of attention in this case.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline from a drive by the single restaurant location? Not according to the exterior signage shown above.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by checking for state or federal trademark registrations? No, Lion's Tap didn't register in Minnesota or attempt to federally-register the tagline until a week before filing suit, well after McDonald's had launched its "Who's Your Patty?" campaign.

Could McDonald's have known about Lion's Tap's prior use of the "Who's Your Patty?" tagline by conducting appropriate internet searches? Recognizing that most comprehensive trademark searches will examine the internet, here is where it might get interesting.

Just for you, I did a little poking around, and despite the fact that the current Lion's Tap website prominently displays the "Who's Your Patty?" tagline, The Wayback Machine (having archived updated content on Lion's Tap's website for these dates: November 5, 2005, December 27, 2005, June 26, 2006, January 26, 2007, January 27, 2007, December 1, 2007, and February 1, 2008), does not appear to show or document any use of the "Who's Your Patty?" tagline as late as February 1, 2008, the last time the site apparently was crawled by The Wayback Machine. Interestingly, those archived pages show other Lion's Tap taglines in use, such as: "Any Fresher and it Might Get Slapped," "Sponsoring the Napkin Industry Since 1977," "Yes, They Really Do Exist. Come See One for Yourself," and "Lions and Burgers and Fries, Oh My! "

So, where was the "Who's Your Patty?" tagline being used by Lion's Tap prior to McDonald's adoption and use of the "Who's Your Patty?" slogan? Was it being used in a way that McDonald's could have found it, using reasonable precaution and diligence?

You might be interested to know that my most recent visit to the Tap -- after the complaint was filed -- revealed surprisingly minimal use of the "Who's Your Patty? tagline within the restaurant interior (and none on the exterior of the restaurant). It wasn't on wall-board menus or the on-table menus, nor on any interior signage, at least that I saw. It did appear on one wall-mounted t-shirt with a price tag on it, and one of the servers was wearing a t-shirt bearing the "Who's Your Patty?" tagline.

Let's not forget that Lion's Tap is also claiming a "famous" mark in the "Who's Your Patty?" tagline, at least "famous" in Minnesota. What do you think, does this amount of use qualify for fame?

Stay tuned, as we continue to follow this very interesting case.

As a tangentially-related side note, ironically, Patty Wood, a real estate agent from Deer Park, Texas, appears to have beaten both Lion's Tap and McDonald's to the punch in registering the internet domain whosyourpatty.com.

UPDATE: Here.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Back in May, I wrote a piece entitled "Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins," discussing the trademark cancellation action that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), and calling for the football team to "hire a branding guru to engage in some serious and successful re-branding."

Well, the 2009 football season is now upon us, and it appears my re-branding call has fallen on deaf ears, at least for now.

Yesterday the Washington Post "reported" the case may be heard by the U.S. Supreme Court.

What I found most interesting about the brief 197 word story in the Washington Post is that the "reporter" used the word "activist" three times and "group" twice, to describe the distinguished Native American leaders I know, without referring to them as individuals or even as being Native American (without the "activist" pejorative), leading me to wonder what yard-line his seats might be located at in FedEx Field.

For what it's worth, at least the Associated Press, ABC News, NBC Sports, ESPN, Yahoo News, WTOP.com, WUSA9.com, New York Times, New York Post, Miami Herald, San Francisco Chronicle, Seattle Times, Sports Illustrated, The Washington Times, and CBS News, have all managed to report the story without employing the highly-charged and politically-loaded term "activist," instead neutrally referring to the petitioners as "Native Americans" and "American Indians," who are offended by the team name.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Heiress Paris Hilton starred in the “reality” television show The Simple Life with her BFF Nicole Richie from 2003 to 2007. In connection with the hit show, Paris Hilton delivered her famous catch phrase “That’s Hot.” Always the entrepreneur, Ms. Hilton trademarked her famous catch phrase in connection with beverages fit for an heiress—champagne and prosecco.  She has not yet obtained a trademark for "That's Hot" in connection with buffalo chicken wing sauce or potato chips, as Steve Baird noted in his blog post about the saucy trademark chip fight.

Catch phrases are expressions that are usually popularized through repeated use by a real person or fictional character. It is a hotbed for trademark registrations. Donald Trump tried to register as a trademark his famous “You’re Fired” catch phrase from his hit show The Apprentice. But, he later abandoned the registration applications.

Ms. Hilton sued America’s largest greeting card company Hallmark Cards over the use of her name and photo along with her registered trademark, “That’s Hot,” in connection with a parody card, “Paris’s First Day as a Waitress.” The Ninth Circuit recently refused to dismiss Ms. Hilton’s claim. The Ninth Circuit rejected Hallmark Cards’ argument that its depiction of the heiress was protected speech as a matter of law. Hallmark Cards defended its Paris Hilton card stating that a number of its new humor greeting cards are parodies of popular celebrities and politicians.

Hallmark Cards may want to go back in time and design cards with characters from certain old television shows that would be appreciated by those who grew up before iPods and Facebook. Although Flo from Alice’s famous catch phrase “Kiss My Grits” used to be trademarked in connection with aprons and potato chips, these trademarks have since been abandoned. Similarly, Hallmark Cards could design a card with JJ from the television show Good Times and his famous catch phrase “Dy-no-mite” to describe a person celebrating a birthday. Alternatively, Hallmark Cards could look to the movies and construct a card picturing the Governor of California Arnold Schwarzenegger with his famous catch phrase “Hasta La Vista Baby” from the Terminator 2: Judgment Day movie that is currently not trademarked.

Catch phrases often emblazon t-shirts, mugs, and other products—already having consumer recognition. But, businesses should beware that many famous catch phrases (and even not so famous ones) are trademarked and using them could open them up to a trademark infringement lawsuit.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

A brief study in how the Lion's Tap could have had its burger and eaten it too.

I have to say, in the interest of full disclosure, I have an irrational love for the Lion's Tap.

Ever since I worked in Eden Prairie back in the 1990s, I've been hooked. Fast forward the better part of a decade, put our family a cool 35 miles away in Shoreview, and we still find ourselves driving nearly an hour on special occasions to grab a burger.

That's part of what made me so damn mad when I saw McDonald's latest billboards. Who's your patty? For Angus burgers? You've got to be kidding. Lion's Tap is "my" patty, thank you very much! They've had the slogan on their tastefully tacky t-shirts for over four years.

I thought about it though. I know Lion's Tap. But my guess is that only a small smattering of people do (perhaps 3-4% of the Twin Cities population if you were to survey). Who are they going to think came up with the slogan? And if they walked into Lion's Tap tomorrow, who would you think was ripping off whom? That's right. You guessed it.

It bugged me. I was a bit upset. I was ready to come to my restaurant's defense.

Until they sued.

You can read more here, but the fact of the matter is that Lion's Tap decided to run to the courts to remedy what is calls a trademark infringement case.

Here's the problem, instead of coming off as the victim (which you could argue Lion's Tap is), they come off as another coffee-in-the-crotch, show-me-the-money, lawsuit-happy opportunist. Just read some of the news stories and read some of the comments to see what I mean, here, here, and here.

Ick.

Let's explore what Lion's Tap "could have" done differently, and how it might have panned out.

• Email This
• Print
• Comments (5)
• Trackbacks
• Share Link

In giving advice in the field of intellectual property, one hackneyed phrase repeatedly crosses my lips:  an ounce of prevention is worth a pound of cure. 

When it comes to protecting a brand or trademark on the Internet, I may start saying, "an ounce of prevention is worth a ton of cure."  A couple of weeks ago, the Corporation Service Company released the results of a study that found, among other things, that brand owners had spent more than $220 million to obtain domain names from third parties through the UDRP dedicated arbitration process.  The study found that if the brand owners had registered the disputed domain names privately (prior to the third party doing so), the costs to obtain the domain names would have been approximately $1.1 million.  An ounce of prevention, indeed.  That is a 200:1 ratio. 

As I noted previously, the going rate for a domain name registration for one year is somewhere around seven to ten dollars (retail, not wholesale).  At the National Arbitration Forum, the cheapest filing fee to initiate an arbitration on a single domain name is $1,300.  Attorney's fees to prepare a UDRP complaint will typically run anywhere from a couple to several thousand dollars.  Given the cost disparity, I think that a brand owner is well advised to sit down and contemplate this question:  "What domain names would I spend several thousand dollars to obtain if a third party came along and started using them to advertise confusingly similar goods or services?"  The domain names that answer that question are the domain names that the company should go out to register proactively.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Taglines and advertising slogans can be wonderful branding and marketing tools, but I'm thinking (not Arby's, by the way) that McDonald's is probably not thinkin' that its (likely) famous I'm lovin' it tagline accurately describes its taste for the federal trademark infringement lawsuit that Twin Cities-based Lion's Tap recently slapped on McDonald's for its whopper of an advertising campaign -- promoting its new Angus Third Pounders -- served up with the clever and simple play-on-words advertising slogan and question: Who's Your Patty?

No doubt, McDonald's likely will not make a run for the border, instead, it likely will instruct its team of lawyers to think outside the bun in designing a successful legal defense and response strategy, in the hope of not hearing the court say to Lion's Tap in the end, have it your way. 

For your reading pleasure, here is a pdf copy of the complaint filed last Friday in Minnesota federal district court. As you will see from the Minnesota State Who's Your Patty? Certificate of Registration (attached to the filed complaint), Lion's Tap waited to register its claimed mark in Minnesota until August 18, 2009, ten days before filing suit. As a result, Lion's Tap clearly did not register the tagline "four years ago," or back in 2005 (the year it claims to have commenced use), as incorrectly reported ad nauseam, here, here, here, here, here, here, here, here, and here. Well, at least a couple of the media outlets covering the story avoided the mistake, and got the registration date right.

So, why is the date of registration significant? If McDonald's didn't know about Lion's Tap's use before rolling out its own use of "Who's Your Patty?" -- an entirely plausible scenario, since the mark was not registered, even in Minnesota, until well after and apparently in response to McDonald's already commenced use -- it starts to look like a much different case for Lion's Tap (more un-Hamburglar-like), for reasons I'll explain later.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

The title of this film sounds so simple.  As we all know, the world of advertising and branding is anything but.  The very fact that this film found distribution indicates that the American public is more tuned-in to advertising than ever before.  

I haven't seen this film yet, but it's definitely on my must-see list.  Check out a trailer here.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

With less than 6 months to go until the 21st Winter Olympic Games in Vancouver, trade mark enforcement activities are beginning to heat up.

In January, People for the Ethical Treatment of Animals (PETA) launched its global campaign against the Canadian seal hunt with a version of the Vancouver 2010 Inukshuk logo clubbing a seal in a pool of blood above blood-soaked Olympic rings. PETA is also selling t-shirts, mugs, buttons and stickers displaying this logo, thus capitalizing on its use of the Olympic marks.

The Vancouver Organizing Committee for the 2010 Olympic and Paralympic Winter Games (VANOC), has publicly stated that it has no jurisdiction in this matter on the grounds that with PETA based in the United States, it is the US Olympic Committee's (USOC) responsibility to enforce the International Olympic Committee's rights in its trade marks.

The USOC duly complained about PETA's use of the phrase "Vancouver 2010" and the image of the Olympic rings on its products. In response, PETA publicly took the position that its use was protected as fair use, being an obvious parody. "Absent ... confusion, and in the context of a critical and parodic use of the images, there is no trade mark infringement." And there the matter appears to have ended, for now.

In June, 2009, PETA pushed the matter further with the launch of its website www.OlympicShame2010.com, which portrays the Vancouver Olympic mascots Miga, Quatchi and Sumi as bloodthirsty seal killers. 

PETA is clearly targeting the Vancouver Olympics in an attempt to put pressure on the Canadian government to end the Canadian seal hunt. Thus far, VANOC has declined to attempt to enforce its rights under Canadian intellectual property law, and the question remains, could it?

Intended to combat ambush marketing, the Olympic and Paralympic Marks Act (the OPMA) prohibits any person from adopting or using in connection with a business, as a trade mark or otherwise, an Olympic or Paralympic mark as set out in the Act. The OPMA provides for certain exceptions, including use for the purposes of criticism or parody. The Olympic rings, Inukshuk composite design, and the phrase "Vancouver 2010" are all Olympic marks for the purposes of the OPMA.

The Canadian Trade-marks Act also provides a mechanism to protect "official marks", which are uniquely Canadian. Entities that are "public authorities" such as VANOC and the Canadian Olympic Committee have the ability to request that public notice be given of their use and adoption. Once published in the Canadian Trade-marks Journal, official marks cannot be adopted by others in connection with a business, as trade marks or otherwise. Official marks, unlike regular trade marks, need not be associated with specific wares and services to be published and subsequently enforced. Once an official mark is published it does not need to be renewed and is virtually unexpungeable. Official marks accordingly possess far greater protection than any other kind of trade mark. The Inukshuk design, Olympic rings design, and Olympic mascot designs are all official marks owned by VANOC. 

With this statutory firepower at their disposal, could VANOC stop PETA's display of the Olympic marks?

PETA's "parody" defence could possibly be successful against any cause of action based on the OPMA, since the OPMA provides that use of an Olympic mark for the purposes of criticism or parody relating to Olympic Games is not a "use in connection with a business" (although one questions whether their "parody" qualifies as "parody relating to the Olympic or Paralympic Games"). 

Unlike the OPMA, there is no parody defence under the Canadian Trade-marks Act. However, to be successful, VANOC would have to prove that PETA's activities constitute adoption of the marks "in connection with a business" and that there is a sufficient Canadian nexus to PETA's activities for Canadian law to even apply. These are significant hurdles, and thus far, it appears that VANOC is reluctant to give PETA the publicity that a lawsuit would generate - no action has been commenced. 

An additional cause of action for VANOC could be copyright infringement based on PETA's use of the mascot designs. While PETA may view its use as fair use due to parody, there are a number of court cases holding that parody is not a defense to an infringement of intellectual property rights in Canada.

—Megan Langley Grainger, Bereskin & Parr LLP

• Email This
• Print
• Comments
• Trackbacks
• Share Link

v.              

                        (Medline Sterillium Rub)                                          (3M Avagard Surgical Scrub)

In a very recent false advertising lawsuit, Medline Industries is all lathered up, alleging that 3M Company is playing dirty in the surgical hand antiseptic marketplace by making false and misleading statements in advertising about 3M's Avagard brand surgical scrub and Medline's competing Sterillium Rub brand surgical hand antiseptic.

Here is a copy of the complaint filed in U.S. District Court for the Northern District of Ohio. As you will see, Medline alleges that 3M has made the following false and/or misleading statements of fact in advertising, in violation of Section 43(a)(1)(B) of the Lanham Act:

1. Sterillium Rub lacks approvals and/or benefits that it should have;
2. Sterillium Rub is of a lesser standard, quality, or grade than what it is;
3. Sterillium Rub does not meet FDA scrub test criteria;
4. Sterillium Rub does not meet AORN recommendations;
5. Sterillium Rub does not meet persistency requirements of the FDA;
6. Sterillium Rub cannot meet FDA criteria for persistency or cumulative activity; and
7. Avagard is the only waterless, brushless hand antiseptic that meets FDA persistency requirements. 

Paragraph 31 of Medline's false advertising complaint appears to be the most personally and potentially infectious:

During deposition testimony given in the related litigation styled GoJo Industries, Inc. v. 3M Company, United States District Court for the Northern District of Ohio, Eastern Division, Case No. 5:09-cv-1251-DDD, [the] Regulatory Affairs Manager in the Infection Prevention Division of 3M, admitted that statements contained in the marketing literature disseminated by 3M in which 3M compares Avagard to other surgical antiseptic hand scrub products, including Sterillium Rub, misrepresented the FDA scrub test criteria for surgical antiseptic hand scrubs. [She] confirmed this deposition testimony in her testimony before the Court at the preliminary injunction hearing during which the Court characterized her efforts to explain this testimony away as not at all persuasive (citations omitted).

Not only has Medline sued 3M for this alleged unlawful conduct, but it also has taken its claims directly to health care professionals and the surgical hand antiseptic marketplace, commencing a comparative advertising campaign of its own. Presumably, 3M will be closely scrubbing each of the literal and implied claims set forth in this advertising brochure distributed by Medline and BODE Chemie GmbH & Co.

So, stay tuned for developments concerning this interesting federal false advertising case.

Hopefully, we'll eventually be able to learn who comes to court with clean hands. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Let's talk turf today, two kinds. OK, maybe three.

First, with Target Field looking more and more like the long-anticipated brand new outdoor home ballpark for the Minnesota Twins, all Twins fans and the local media can think or talk about this week is the new real bluegrass blend turf being installed now (as I type this blog post, in fact, see live webcam here), as it was just transported from Graff's Turf Farms in Fort Morgan, Colorado.

Second, most are looking forward to saying goodbye to the artificial turf of the 27-year old Hubert H. Humphrey Metrodome, and have been counting down the final days for some time.

Last, and most importantly for the purposes of this blog, let's talk about the importance of legal turf.

Selecting the legal turf or forum where a trademark dispute or battle is fought in federal court is often a very strategic decision. Litigants not infrequently end up battling over where the dispute will be decided, long before even getting to the substance of their dispute. Certain aspects of the federal trademark laws are interpreted differently around the country, which can lead to what lawyers call "forum shopping," basically, making forum selections based on where the plaintiff believes his or her case will most likely receive a favorable judgment. Indeed, most companies who file trademark lawsuits would prefer to file them close to home (unless forum shopping benefits dictate otherwise), in their own backyard, for that perceived home field advantage, and, because the out-of-state defendant typically ends up needing to hire two sets of lawyers to defend, their usual trademark counsel and local counsel too.

The general legal rule is that the first to file a trademark lawsuit is the one who gets to select the turf where the battle will be decided. There are exceptions to this general rule, perhaps we'll explore those another time. For now, however, suffice it to say, being the first to file, often creates some helpful advantage or at least some leverage to bring the matter to a more favorable amicable resolution. The first-to-file plaintiff is able to make his or her settlement demand, with the comfort of knowing that -- if it is not accepted -- he or she already has secured the place for the dispute to go forward. If it happens to be a place where the defendant does not want to litigate, for one reason or another, this can facilitate perhaps better settlement terms for the first-to-file plaintiff.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

So what is viral marketing? The simple answer is: a marketing strategy that encourages people to pass along a marketing message. Some will argue it’s a fancy word for word-of-mouth marketing. Others insist it has to take place online—through blogs, Twitter and such. But no matter how you define it, the beauty of a well thought out and executed viral marketing campaign can help make a mountain out of a molehill. Or a beloved local icon out of a fiberglass sculpture—as was the case when the Lake Creature arrived in Minneapolis.

When the Lake Creature appeared in the waters of Lake Harriet, we knew it would cause a ripple among folks in the area. But it was the strategic viral marketing campaign that turned it from a ripple to a tidal wave among greater Minneapolis residents and area visitors.   As visitors to Lake Harriet took in the creature’s beauty, their imaginations ran wild: Who brought it here? And what it was doing in the community? For the first week, the only clue was a sign at the lake with the address to a non-branded micro site where, upon logging in, residents could continue the fun by helping build the mystical creature’s lore.

That same week, the chatter on Twitter proved people were taking their conversations about the creature from the shoreline to online. “There’s a creature in Minneapolis,” they said. “Lake Harriet has its very own Nessy.” Some passed along the microsite address, others just speculated as to what the creature was doing in the Cities and why. Within minutes of posting their tweets, the powerful influencers would receive a message from the Lake Creature inviting them to follow her on Twitter and help direct people to the microsite to submit photos and stories. 

So when the Minneapolis Parks Foundation stepped forward in mid-July to announce it was behind the project and hoped the creature’s presence would help enhance the lives of residents and bring awareness to Minneapolis’ beautiful parks, most would say “mission accomplished.” In the first week alone the Lake Creature gained more than 150 followers on Twitter; nearly 7,000 people visited her site and the effort generated more than 3 million media impressions. She even has her own Facebook fan page. Some would say that’s a viral marketing fairy tale—and we won’t disagree.

—Allison Checco, Fast Horse

• Email This
• Print
• Comments
• Trackbacks
• Share Link

My recent family road trip through the heartland had me spending more time than usual pumping gas and shopping in convenience stores, so a few chewing gum brands "gone single letter" caught my eye. As you may recall, I already have reported on Single Letter Envy in Hotel Branding. Well, it appears that the quest for single or one-letter brands is not limited to the hospitality industry (let alone others I'm sure to write about in the future), but has "stretched" to the confectionery industry too.

Turns out, both single letter gum brands that caught my eye are owned by the same company, Cadbury-Adams, part of "Cadbury plc – a leading global confectionery business with the number one or number two position in over 20 of the world's 50 largest confectionery markets."  

Yes, Cadbury Adams has migrated from its long-lasting Bubblicious brand name (having equal style for each letter) to a differently styled beginning B in Bubblicious, and most recently, to the letter B, standing alone, front and center on packaging; fully-truncated to B, as shown above. So, in our ever-abbreviated and truncated branding world, where G now means Gatorade (among other things, as a previously blogged about here), B now apparently means Bubblicious, and S now means Stride (another Cadbury Adams chewing gum brand). Might care be in order to avoid having these two brands appear side by side on store shelves -- at least in the order appearing above -- to avoid some unintended combined meaning of the brands? Perhaps one of the "sticky" consequences of single letter brands is the temptation others may have to spell alternate and unfavorable words and acronyms with them.

As you might imagine, confronting these single letter brands raises a number of questions in need of some answers. For example, are single or one-letter brands for chewing and bubble gum, just the latest flavor trend, or are they here to stay? Why are they currently so appealing, at least to Cadbury Adams? Are there other single letter gum brands in the marketplace, or just B S? Lastly, what are some of the legal ramifications of branding single letters for confectioners?

I'll leave the first two questions for others to chew on -- especially marketers, but I'll take a crack at the second two.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

I should confess, if I haven't already, that I do not watch much television.  I'm not sure if T.V. viewing would have helped me to be more knowledgeable on what follows, but I was surprised on a recent road trip when my wife and I saw a semi trailer splashed with pictures of Taylor Swift and prominent displays of trademarks for L.e.i. jeans.  The first question I put to my wife was, "Are L.e.i. jeans affiliated with Lee jeans?"  My wife did not know, and I vowed to find out.  (Also, not being Hawaiian, it did not occur to me immediately that "lei" as a stand-alone word is pronounced "lay" and identifies the garland of flowers so frequently associated with Hawaii.)

As it turns out, it appears that the LEE and L.E.I. brands not only have no affiliation, but the two coexist.  Lee jeans have been around for a long time (the company tagline suggests "since 1889," but the oldest claimed use of a registered LEE trademark by the H.D. Lee Company dates only to 1916).  In contrast, it appears that the L.e.i. brand started in 1989.  Despite being relatively active at the U.S. Trademark Trial and Appeal Board, I can find no record that the H.D. Lee Company ever challenged the L.e.i. marks.  This surprises me, given that the two marks are only one letter off.

I am not certain what linguistic instinct made me think to pronounce "L.e.i." as "lee," but L.e.i. apparently advocates for the pronunciation "el-ee-aye," articulating each letter separately.  It also promotes the brand as an acronym standing for "Life-energy-intelligence."  Further, it is possible that the company that intrduced the L.E.I. brand secured the consent of the H.D. Lee Company prior to rolling out the brand.  We may never know. 

The lesson here, I think, is that even when your trademark attorney winces because a new mark is "only one letter off" of an existing mark, a closer analysis may counsel for coexistence.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

As promised earlier this week, in my post entitled "Without Words, But Not Speechless: More On Non-Verbal Logos That Can Stand Alone," here is my effort to identify, from a legal perspective, some of the pros and cons of non-verbal logos and other trademark styles. 

But, before addressing the legal implications, it is worth noting that a number of our insightful readers and commenters already have helped articulate a variety of pros and cons from a business and marketing perspective, here. By my count, there appears to be consensus on at least two important points: (1) Having an iconic stand-alone non-verbal logo or wordless trademark symbol is highly desirable, especially for truly international brands; but (2) be prepared to spend a lot of time, effort, and significant resources to achieve one.

In addition, at least one designer has written that having a logo without words "can be a big branding pain," for a variety of reasons. She identifies three basic logo styles: (1) Text logos; (2) symbol logos; and (3) combination logos. Examples of text logos would be the Coca-Cola script, the Yahoo! stylized word, and the Google stylized word, all three illustrated in my earlier post. The highly stylized Ebay logo is another good example of a text logo. On the other hand, the Shell logo, McDonald's Golden Arches, and the Nike Swoosh, are all good examples of symbol logos. In addition, here is a message board collecting a number of other possible candidates for symbol logos that are capable of standing lone -- without words -- yet, they still have a lot to say to consumers. Many of them, in fact, were mentioned by commenters to my prior post.  

Anyway, the designer referenced above contends that for a variety of reasons, combination logos often make the most sense. According to her, a combination logo "combines both a symbol and the company name. The symbol and text can be integrated together, side by side, or with one located above the other."

Generally, from a trademark owner and legal perspective, I prefer the combination logo too, but not the "integrated" type, instead the "side by side" type or the "one above the other" type. The Mercedes-Benz combination logo shown below nicely illustrates the "one above the other" type of combination logo:

Why do I generally prefer this type of trademark logo format and style?

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Last Sunday was an exciting day for me, as it marked the return of my favorite TV show, Mad Men.

For the uninitiated, Mad Men details the personal and professional drama of everyone from the top executive to the switchboard operator of the Sterling Cooper Agency, a Madison Avenue advertising agency working with some of the best-known brands during the so-called “golden age” of advertising, in the late 1950’s, early 1960’s. On its surface, Mad Men is about advertising and the prosperous, post-war American life that embraced the consumerism that gave the ad men of Madison Avenue a green light to create the images of products, many of which are still in commerce today. At its core, however, Mad Men is (among other things) about the creation and maintenance of identity – a personal brand, if you will – that may encompass truth, deceit, dreams and reality simultaneously.

One of the many things I love about this show is how each episode manages to intertwine its surface and core concepts, often showing how successful advertising and branding often taps into consumers’ emotional responses, a concept beautifully encapsulated in this clip (which unfortunately we were unable to embed here).

Notably, Kodak’s registrations for CAROUSEL – nearly 40 and 50 years old, respectively – are still alive today.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

RadioShack recently introduced a new name, rebranding its stores "The Shack", which now adorns their retail environment and marketing efforts.

The change was prompted by a desire to update the 88-year-old brand as they transition to mobile phone and wireless products without losing brand equity and mind-share, according to RadioShack. As Dan Neil of the Los Angeles Times mused, "For a company that wants to talk up its expertise in mobile phones, no one seems to have noticed that mobile phones are radios!"

To officially roll out the new, shortened, and supposedly hipper moniker, RadioShack staged "The Shack Summer Netogether" in NY and SF August 6 - 8, broadcasting the event live via "massive laptops" located in Times Square and Justin Herman Plaza, respectively. Video was streamed live on their Facebook page and their redesigned web site.

The current trend to truncate brand names is puzzling. Is this an attempt to beguile the text-message obsessed youth market, where everything is "abrv8d"? Or drive up sales through brand-brevity because we lack long attention spans?

I understand distilling a brand to its essence. Coke and FedEx are good examples, but Pizza Hut and Circuit City are not.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

My family vacation and road trip through the heartland this past week has yielded a few photos for discussion. For example, here is a captured pair of non-verbal logos that can stand alone, without the need for any words.

As you may recall, one of my previous blog posts (April 9, 2009) discussed non-verbal logos that can stand alone, and one that can't. There, I asked the question: "Don't brand owners need to 'name' their non-verbal logos, especially those that 'stand alone,' otherwise how can anyone spread the word, so to speak?" Like, Nike's "Swoosh," and McDonald's "Golden Arches." Well, a couple of weeks later, the LogoBlog asked a similar question, "Do Logos Need Words to Market Themselves?"

What do you think? How important are names and words when it comes to brands?

You might say the photographed logos shown above are without words, but the famous brands they represent certainly are not speechless. They stand for, represent and say a lot, in fact, without any text or words.

Having said that, logos with text and words can stand for, represent and say a lot too:

So, it got me thinking, which format is better from a marketing perspective? Your thoughts? 

Just so you know, later this week, I'll take a crack at the pros and cons from a legal perspective.

• Email This
• Print
• Comments (14)
• Trackbacks
• Share Link

This unsolicited e-mail communication from the Caribbean Island of Nevis got trapped in our spam filter, but I thought I'd remove the link and bring it out under a short leash for some legal training and discussion:

Trademark fair use, you ask?

• Email This
• Print
• Comments (6)
• Trackbacks
• Share Link

Full disclosure…I own Google stock. I like their products and their potential. However, I am more than a bit concerned about how they use their names and trademarks.

Microsoft® names its products in a traditional fashion. Microsoft is the company; names like Windows, Silverlight, Bing are clearly the products. A very logical naming architecture that makes it clear where the company ends and the product begins.

Google is a company and a trademark for several goods and services. The Google trademark is perhaps best known for “Search engine services” (International Class 042) but Google can also be “Dissemination of advertising for others via the Internet” (IC 035) or “Telecommunication services” (IC 038) or “Financial services” (IC 036) or any of a number of different product or service ideas that carry the name Google.

Add other words to Google and you get more products and services…things like Google Checkout; Google Talk; Google Wave; the list goes on and on. And a trip through Google Labs made me wonder if there really is an overriding naming architecture for the Google Brand.  

I think the heart of the issue is Google’s youth…let’s not forget that their IPO was only 5 years ago (August 19, 2004 if you are planning a celebration). Google appears to follow a primary rule of the Internet as stated on the Google website: “At Google, we believe in launching early and often.” Obviously the “put something out there and see if it works” strategy has been working for them. But to apply a similar philosophy to names is potentially a recipe for disaster.

Look at Microsoft and the fiasco known as Vista. The product was launched as Windows Vista, and quickly unraveled to the point where Microsoft had to get Windows 7 out the door quickly as a replacement. What failure did consumers have in their minds? Vista. Vista was known as a dog to be avoided at all costs. Not “Microsoft” or even “Microsoft Vista”. Vista.

What if Google had launched Vista? OK, it probably never would have happened but work with me here. Following their most obvious naming architecture, they probably would have called it Google Vista. And as it failed, the black eye would have extended to the Google Brand, which might have resulted in a lower Google stock price in the short term until people had a better experience with the Google name. Microsoft had collateral damage with Vista…Google Vista would have hit an artery.

The recent announcement that Google was going to begin advertising its Google Apps as a better alternative to Microsoft Office pushed me over the edge. DuetsBlog has had several recent postings about “Verbing” brand names and the risks that are inherent in that effort. Google has “benefitted” by “Verbing” over the years in search (“Let’s Google It”). With their new ad campaign, Google found a way to weaken the trademarks of its company and products all in one swoop by telling people what “Going Google” means.

As a marketer, I love the idea of “Going Google” as much as I love owning “Let’s Google It.” However, I fear that from a naming and trademark perspective, this is not going to make any of the Google trademarks stronger and in fact runs the risk of weakening them. When you add in the blatant implication of monopoly (I suppose when you “Go Google” there is no turning back), I am worried even more.  Remember, the Department of Justice investigated Google as a potential monopoly earlier this year.

I am not trying to bring down the Empire…far from it (again, remember I am a shareholder). But I would love to understand what Google is trying to do with its many names and trademarks. Is there a plan? Or is the Google Brand a victim of the “launch early and often” practice? That has clearly worked to date in building a big business. Is it Best Practice in naming? Will it continue to work in the future?

—Mark Prus, NameFlash^SM

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

              VS.         

Almost four months ago now, I blogged about the filing of the Gatorade v. Powerade false advertising and trademark dilution lawsuit, here. At the time, some called Gatorade's false advertising claims "dubious" and others chided Gatorade for biting Powerade's bait to file suit.

Advertising Age has now reported about the recent court ruling addressing Gatorade's request for an emergency preliminary injunction, here. For those of you who have been looking for a copy of the court's interesting 54-page decision, it is available, here.

As you will see, the Court's opening paragraph telegraphed its critical view of Gatorade's claims:

This is a case about an advertising battle between two major consumer products companies over one company's comparison of its beverage to human sweat. That company advertises its beverage by promoting its inclusion of certain electrolytes contained in sweat, and its competitor wants it to stop.

In short, G got an F in the courtroom. First, G failed to prove that any of the challenged statements were false or establish it was entitled to the requested emergency injunctive relief while the case works its way toward trial. Second, U.S. District Judge John G. Koeltl also found "frivolous" certain of G's arguments relating to alleged irreparable harm. Last, G appeared to frustrate the Court by ignoring it made similar advertising statements about its own Gatorade Endurance Formula product, as late as a week before filing suit against Powerade. The "pot calling the kettle black" never plays well in the courtroom. I wonder who is doing the sweating now.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Learning at least a few new things each day is a good thing. One of the many things the special women in my life (wife and daughter) taught me today is the meaning of the apparently ubiquitous acronym BFFL: "Best Friends for Life." So, the special men in my life learned something along with me today. I'm not sure what that says about me and my boys?

Anyway, this acronym got me thinking about all the billboard advertising promoting Friends reruns I have encountered over the last several months. It's everywhere. What has struck me about this advertising (besides the sheer volume) is how different it is from the advertising that used to run while the television series was still being filmed and before the syndication of Friends, at least, as I recall. The website for KSTC-TV Channel 45 (based in the Twin Cities) depicts the kind of promotional photograph I recall seeing reguarly while the series was running and pre-syndication:

All six Friends cast members were promoted together as a united group or ensemble of, well, friends, apparently subscribing to the belief that the whole (the program) was greater than the sum of its parts (the cast members). This marketing approach (apparently required by Warner Brothers in the early days of the program) also was consistent with and reminiscent of the solidarity the Friends cast demonstrated during their multiple contract re-negotiations with NBC and Warner Brothers over the years. It is reported that each of the six received $1 Million per episode during the last two seasons, despite the likelihood that each of their relative values most likely was not commercially equivalent.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Under Consideration's Brand New Blog has on two recent occasions commented about the trend in using white as the color for product packaging of consumable goods. Wal-Mart was the first to use this color packaging for its private label brand and the European community appears to be following suit. Using a white background has its marketing appeal, but consumers are unlikely to rely on the color white to distinguish between two different consumable goods. Additionally, it is unlikely that the user of a white background will be able to obtain a federal trademark registration for this color. However, product packaging backgrounds can be another way for companies to distinguish their products from their competitors, and it is possible to obtain a federal trademark registration for the product packaging background.

Background designs can be registered as trademarks even if they are to an extent ornamental and aesthetically pleasing. The key is whether a background design creates a commercial impression separate and apart from the other elements that appear on the product packaging. If the background design creates a separate commercial impression, it can be registered as a trademark. In fact, a background design can be inherently distinctive. In other words, consumers can immediately rely on the background design to distinguish between two sources of goods.

Unless business reasons dictate using an ordinary background, why waste an opportunity to connect with your consumer. Therefore, keep in mind that the background design of your product packaging can function as a trademark and help you further distinguish your goods from those of your competitors.

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Sometimes the world hands you lemons, and sometimes it hands you lemonade . . . or free beer . . . or even free advertising.  What serendipity for the Bud Light, Red Stripe, and Blue Moon brands that the media's most recent tempest in a teapot has culminated in a "Beer Summit," and that it is being widely reported that the principals will quaff these three brews while finally solving the nation's proverbial race relations problems.  (The last clause of that sentence is hyperbole.)

While this occasionally happens--a commercial product being in the right place at the right time in a news cycle--the Internet adds a whole new dimension to the import of appellations like "Beer Summit."  (And, by the way, it is high time for some new hackneyed appellations in political reporting.  "___ Summit" or "___-gate" are quite tired for being applied to every controversy / scandal / kerfuffle / etc. that touches D.C. politics.)  So, imagine all the Internet searches occurring today for the "beer summit," and how that may impact an event like Beer Summit or a company like Summit Brewing Company, which, after news results, are generally the first and second hits in Yahoo, Google, and Bing search results for the string "beer summit."  Interestingly, Summit Brewing's website is generally the top hit for the search string "summit beer," so word order is relevant in search strategy.

Cheers!

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Although intellectual property lawyers of the Dr. No variety may not like to admit it -- I submit that, not all slippery slopes are created equal. While some slippery slope cautions might prevent a few bumps and bruises in traveling along a particular path (e.g., the one on the left below), I suspect far fewer slippery slope cautions actually prevent life-ending falls from perilous cliffs (e.g., the one on the right below), yet other man-made slippery slopes specifically are designed for fun and enjoyment -- not danger -- and have generated enormous sales over the years (e.g., WHAM-O's SLIP'N SLIDE brand products).

So, putting aside Professor Douglas Walton's teaching that the slippery slope argument is "often treated as a fallacy," it is worth asking what brand of slippery slope most accurately represents the risk associated with marketers using their brands and trademarks as verbs?

As discussed in Part I of my Just Verb It? series, many marketers love the idea of having their brands embraced as verbs, but many trademark lawyers totally forbid any "brandverbing," i.e., "mis-using" brands (adjectives) as verbs: "Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors."

No doubt, genericide -- the ultimate fear of using brands as verbs -- equals certain trademark death, a horrible result from both marketing and legal perspectives; but, I submit it doesn't necessarily follow that brandverbing activities automatically result in trademark death or genericide. To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?

• Email This
• Print
• Comments (13)
• Trackbacks
• Share Link

Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Hot on the heels of Dan Kelly's prediction of the eventual fall of social networking sites, it seems that Facebook has embroiled itself in another controversy.  The upshot of the most recent story is that Facebook is essentially using its power of cyber eminent domain to sieze and use photos posted by users for advertisements unless they change their privacy settings.

For me, this raises two questions:  The first is, whether or not Facebook users might have an action under right of publicity laws.  Generally, a right of publicity claim requires the plaintiff prove that somebody (1) appropriated plaintiff’s name and likeness to their advantage, (2) without plaintiff's consent; and (3) resulting injury to the plaintiff.  Typically, these claims are limited to celebrities because non-famous people usually don't have value in their name and likeness that the misappropriation injures.  However, its not unthinkable to believe that there is a conceivable theory of injury for Facebook users to pursue these claims.  (On a side note, I'm sure Facebook's terms of use give them some level of authorization to use photos, so that would be a likely hurdle as well.)  

The second question is, does Facebook really need this revenue?  It seems like the outcry from users would be pretty predictable.  Although the public expects and accepts a certain level of encroachment by advertisement, there's a line.  If you cross that line, you risk alienating a substantial portion of your audience.  The stakes are even higher when the people you are alienating are responsible for the content on the site.  If Facebook really has to go this far, it would seem that social networking sites are doomed to fail.

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

I recently traveled to Omaha and noticed the following billboard:

For those not familiar with these companies, Qwest Communications is a telecommunications company that services many western states.  Cox Communications is another relatively large telecommunications company.  Both serve the Omaha area.  The billboard is an example of nominative fair use, which Steve explained here. 

While this is largely unremarkable, the billboard's value derives from the three most important things in business:  location, location, location.  You see, Omaha is home to the Qwest Center, which is a convention center and arena.  Upon exiting this door of the Qwest Center, patrons are looking due West -- directly at this Cox billboard about two blocks away.  The billboard employs a double meaning to make a pun and suggestion to patrons leaving the Qwest Center -- something that this billboard can only achieve in this location (or outside of Qwest Field in Seattle or Qwest Arena in Boise, but I'm not sure Cox provides services in these areas).  A clever one-upping in the "arena" of naming rights!

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).

For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie's cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!

My early and initial observations of the Geek Squad trademark Complaint are below the jump.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Tommy has a lot to offer in advancing the recognition of certain kinds of non-traditional trademarks, especially touch marks. Yes, The Who's tune from the Tommy Soundtrack "See Me, Feel Me / Listening to You" repeats these lyrics over and over: "See me, feel me, touch me, heal me."

• Email This
• Print
• Comments (8)
• Trackbacks
• Share Link

• Email This
• Print
• Comments
• Trackbacks
• Share Link

It’s a dilemma: the economy is in the toilet, panic sets in, and long–range planning gives way to short-term thinking. It’s completely rational and logical, of course, and that just makes it worse. Now managers who should really know better are merely looking to the end of the quarter – or next quarter at best – and holding their breath instead of keeping their eyes on the big picture. Truth is no one upstairs wants them to look at the big picture right now – they just want company in their crowded Chicken Little suites.

Despite the vagaries of economic conditions new brands will always require sturdy foundations of rigorous, disciplined construction, and that takes time and money. To develop and launch a healthy, connective and authentic brand considerable groundwork must be done in advance; what any branding expert worth their salt considers due diligence. I call it Forebranding™ - all the work that is done before that brand’s identity is manifested in visual and verbal identity.

A brand can be dumped into the marketplace with a casually developed visual and verbal identity wrapped around it. But if that identity isn’t based upon a relevant, authentic personality and truly reflective of the corporate culture behind it, consumers will ultimately smell a phony and not connect or remain connected.

WHY FOCUS ON CULTURE?

• Email This
• Print
• Comments (10)
• Trackbacks
• Share Link

Let's revisit the topic of non-traditional "touch" trademarks today.

Of all the traditional five human senses (sight, hearing, taste, smell, and touch) and trademarks that can be perceived by one or more of those senses, touch, a/k/a tactile, a/k/a texture trademarks are just about as uncommon as any (taste, perhaps, being the least common). Indeed, back in 2006, Marty Schwimmer from The Trademark Blog correctly noted the dearth of recognized tactile marks. Moreover, despite a 2006 INTA Board of Directors' Resolution supporting the protection of touch marks, few appear to have reached for or grabbed any such protection (putting aside Kimberly-Clark, already blogged about here).

As arguably one of the most intimate of the senses: 'Touch is the first sense developed in the womb and the last sense used before death." Given that and given other unique characteristics of "touch" among the senses, it is a bit surprising that touch marks haven't been pursued more by marketers looking to create intimate, emotional connections with a brand: "Another distinction of the sense of touch is that it is identified with the real. You can't believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof." By the way, since touch/tactile/texture marks are so uncommon, why can't we agree on what to call them? For what its worth, my vote is to call them "touch" marks since that is the term that names the underlying basic human sense.

Anyway, with that background, as far as I can tell, the one industry that seems to show the most promise or, at least, interest in touch trademarks, is the alcoholic beverages industry, most particularly those companies that focus on selling distilled spirits or wine.

• Email This
• Print
• Comments (5)
• Trackbacks
• Share Link

 While salivating over the most recent installment to the Tiger Woods Video Game Franchise, Tiger Woods PGA Tour 10, my mind began to wander towards product placement. I suppose it is a natural extension that a game which allows players to play “real” courses would logically allow players to purchase “real” apparel and equipment with tournament winnings.

Now, product placement, generally, and product placement in video games, specifically, are not new concepts. However, the way in which companies are able to target and control their message through placement is becoming increasingly sophisticated. For example, we have already evolved from movie placement and early video game placement, where the interaction between the consumer and the brand was largely just a passive viewing, to highly interactive placement, such as an the Tiger Woods’ series, where the player is able to interact with the brand by playing with the branded equipment.

This type of product placement represents yet another example of how virtual worlds can affect real world brands. (I blogged earlier on virtual infringement here.) The case with Tiger Woods Golf is particularly compelling because not only are the products “placed” in the game, they also have distinct performance characteristics which could color the players perception of the actual brand. Players could be developing opinions about the effectiveness of gloves, shafts, grips, irons, wedges, drivers, putters, balls, shoes, etc. without ever having seen the real world item. This could be affecting their opinions of major brands such as Nike, Callaway, Taylor Made, Titleist, Cleveland, and Odyssey (among others).  Moreover, the stakes are rising with the fact that there is likely significant overlap between Tiger Woods golfers and real golfers.

I guess the moral, simply stated, is that virtual space = opportunity.
 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Four weeks ago, I blogged about FaceBook's ill-advised move to allow unique username URLs.  Some time between then and now, FaceBook removed the page where trademark owners could defensively register their marks to prevent others from choosing such marks as user names.  Now, a rights holder's only recourse is to submit this form to report an infringing user name. 

In the course of my research of FaceBook, I have found that actually using FaceBook for affirmatively useful business purposes, such as setting up a business account or creating an ad, can be a mind-numbingly difficult task.  FaceBook's shortcomings, I think, are neatly addressed in this frustrated FaceBook user's help question:  "does anyone know how to actually get help from facebook help?"

Two weeks ago, I read news reports of MySpace's woes.  (And by the way, has anyone ever remarked on the similarities of the MySpace and FaceBook landing pages?)  This week, I finally gave in and actually tried to follow some feeds on Twitter, much to my frustration--it is ridiculously clunky. 

So, much as this may paint me as a new "new media" luddite, I must ask:  What is the fascination with these so-called "social networking" web sites?  As far as I can tell, they are clunky, inefficient, inhospitable time-wasters.  Unless these sites become savvy (and quickly) to some simple principles of usability and customer service, I doubt that any one of them will really become viable and succeed over the long haul.  As illustrated by the likes of Amazon.com, Google, Craigslist, Drudge Report, and others, there are many, many ways to succeed on the Internet, but social networking may not be one of them.

• Email This
• Print
• Comments (6)
• Trackbacks
• Share Link

Our celebration at DuetsBlog earlier this month on passing the 10,000 unique visitor milestone in four-short months online got us thinking about Big Mac and about the iconic McDonald's Golden Arches signage, touting and counting how many McDonald's hamburgers have been sold or served at any given point in time. We began to wonder, ahem, should we start searching on Ebay, at garage sales, or elsewhere for some vintage McDonald's signage that might be adapted for our admittedly more modest purposes?

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Like most people, I look forward to summer with great anticipation. But amidst the sunny skies and good times there is one thing I dread: BBQ chitchat. I am no wallflower, I just know inevitably it will circle to the question I fear most, “So, what do you do?"

Stuttering, I produce the blandest description, jolting the conversation to a halt. I start with the simple truth, “Branding.” Which generally is met with a blank stare, so I go a little deeper, “I mean, Brand Consulting.” The raised eyebrow forces me to admit defeat: “… uh… marketing?” People politely nod at my conversation killer, turn to my fiancé, and squeal, “Tell me more about being a pilot!”

What I do is challenging, creative and, frankly, really cool. My inability to meaningfully describe it is shameful because I consider myself an expert at helping others succinctly express what they do. Although I’ll take some blame, ultimately I look to the entire branding industry as playing a large role. 

The industry has grown and become more recognized, and it’s also become simultaneously diluted and confusing. “Branding” clearly needs to take a dose of it’s own medicine and rebrand itself.

• Email This
• Print
• Comments (6)
• Trackbacks
• Share Link

Rapala, the world's largest manufacturer of fishing lures has pleasured us with some pretty clever and creative advertisements over the years, a lot of them award-winning ads too. For example, Carmichael Lynch created the above billboard ad that over time gradually "attracted cats" to the billboard featuring a super-sized Rapala minnow fishing lure. Lots of cats, in fact, many more than you can shake a stick at, you might say, if you fancy idioms and don't happen to be fond of those feline types. Carmichael Lynch notes: "With simplicity and humor, we've helped the [Rapala] brand connect with its enthusiast audience and grow to be the undisputed market leader for fishing lures." This is simply delicious creativity.

More recently, however, the undisputed market leader for fishing lures is now using the brand name of the undisputed market leader for Internet search engines in Rapala billboard advertising, apparently to continue growing Rapala's fishing lure business. Although there are Twitter tweets and other mentions on the web referring to this new Rapala billboard ad, I haven't been able to locate an online image yet, so I'll have to take a picture of the one I have seen myself and post it here when I can. In the meantime, just picture the above billboard minus the cats (and minnow lure) and with this slogan in large prominent black type above the red Rapala logo: "More Hits Than Google". Is this new Rapala billboard ad one of the award-winning variety?

• Email This
• Print
• Comments (5)
• Trackbacks
• Share Link

Hopefully you enjoy riddles. It is late Sunday afternoon, 4:30 pm to be exact. Too early for valet parking at Fogo de Chao, a wonderful Brazilian steakhouse, so you drive two blocks and enter a parking lot with the following sign:

You had a very nice dinner and now you're ready to leave the parking lot at 6:15 pm. Based on the above sign (and contract, by the way), how much do you owe the parking attendant? Instead of humming the Jeopardy thinking music theme song, might I suggest you consider humming the 1970 Five Man Electrical Band tune "Signs" during your calculation. And for any '70s challenged folk, I'll prime the pump for you: "Sign, sign, everywhere a sign, blocking out the scenery, breaking my mind, do this, don't do that, can't you read the sign?"

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

Dan blogged last Friday about obtaining a trademark for Michael Jackson’s famous glove. Another famous person who died that day was iconic Charlie’s Angel Farrah Fawcett. Should or could Farrah have trademarked her famous hairstyle? Women across the world rushed to their hairdressers to obtain the “Farrah Do” or “Farrah Hair.”

Twenty years after Farrah’s famous hairstyle, Jennifer Aniston, as Rachel on Friends, also had women rushing to their hairdressers to emulate her Rachel bob. 

• Email This
• Print
• Comments
• Trackbacks
• Share Link

Notice anything special about this pair of photographs featuring two different Holiday Inn front entrances? OK, putting aside that the one on the right -- with green lighting -- seems to have attracted, at least, a few cars, whereas the "blue light special" on the left appears to stage a full house with virtually every room light on, but ironically it reveals an empty parking lot.

Well, these aren't ordinary photographs, they are trademark specimens of use; Six Continents Hotels, owner of the Holiday Inn brand, claims that they depict a pair of non-traditional trademarks, having filed them with the U.S. Trademark Office in April 2009, and asserting that use of the "lighting" marks commenced back in January 2008. So, we aren't talking about the new H logo previously blogged about here or the old Holiday Inn word mark -- those are standard and traditional single-letter logo and word trademarks. In case you're wondering, no sign of any red or yellow lights for Holiday Inn, at least, on the Trademark Office database.

• Email This
• Print
• Comments (2)
• Trackbacks
• Share Link

Moore’s Law holds that the power of an integrated circuit will double every two years. That prediction, made in 1965 by Intel co-founder Gordon Moore, has proved remarkably durable.

The continued application of Moore’s Law has taken us in a few decades from crude transistor radios to handheld information devices packing more power than entire rooms of mainframe computers that sent the first spaceships to the moon.

And it’s unleashed an unprecedented burst of creativity, as the reach of the Internet allows people from around the globe to exchange information and build on each other’s ideas at dizzying speed.

• Email This
• Print
• Comments (1)
• Trackbacks
• Share Link

Hotel chains appear determined to own single-letter trademarks anymore. Yes, the lodging industry appears headed toward serving up a regular bowl of alphabet soup you might say. Do you recognize any of these single letter hotel marks?  

• Email This
• Print
• Comments (3)
• Trackbacks
• Share Link

It is probably fair to say from my initial Just Verb It? post, the many articles referenced in that post, the substantial panel of commentary to the post, and additional interest in the topic, that at least two truths about "brandverbing" are beyond much, if any, debate: (1) Lawyers (including the International Trademark Association's guidelines on proper trademark use) routinely advise brand owners not to use their brands as verbs; and (2) many marketers pursue brandverbs anyway, believing that any legal risks are outweighed by any marketing gains in solidifying the brand as a referent for the entire category.

Indeed, the marketers at Culver's Restaurants, a fast-growing regional fast-food chain in the Midwest, apparently are better arm-wrestlers than their lawyers, as evidenced by their "verbing" of the Culver's brand in the more than year old "Get Culverized" campaign: 

Part of this on-going "verbing" campaign introduces numerous "Culverisms" that appear not only in advertising, but on soft-drink cups and to-go bags. (Apparently Culver's has disregarded the memorable and humorous advice of "Ferris" in one of my favorite films, Ferris Bueller's Day Off: "-Ism's in my opinion are not good. A person should not believe in an -ism, he should believe in himself.")

At any rate, Culver's is not alone in embracing "brandverbs" as the marketers at Microsoft also appear to have convinced their legal team that "verbing" can't be all bad, at least, with respect to the new Bing search engine brand name, where Microsoft writes to consumers: "We sincerely hope that the next time you need to make an important decision, you'll Bing and decide." (My prior post on Bing is, here).

Even the Yahoo! Company Store is selling these promotional "brandverbed" bumper stickers:

So, what do these companies know or at least believe that others on the "straight and narrow" don't know or at least believe?

Stay tuned for Part III of the Just Verb It? series on DuetsBlog, coming soon.

• Email This
• Print
• Comments (5)
• Trackbacks
• Share Link

My business partner just finished building his deck. In addition to the bureaucratic ordeal, that is obtaining permitting, he decided to go the extra frustrating mile and install composite deck boards versus treated wood. Fair enough. There was just one little wrinkle: Normal deck screws will "mushroom" on you unless they are pre-drilled, or worse, split the board entirely. If you're not careful, you can go through a few boards before you figure it out. And the boards are (not surprisingly) much more expensive.

To solve the problem, builders are instructed to use special screws.SplitStop™ screws seem to be the preferred choice - they have the patents (5,516,248, 5199,839, if you're curious) - although others "claim" to work just as well. A simple Google search returns no less than 10 competing brands, all making a seemingly fair case that their screw is the right screw for the job. But none of them have the SplitStop patent, and numerous articles by independent reviewers bemoan the confusion in the marketplace.

In addition to the "patent" confusion, throw in a dose of "trademark" confusion, and you have a veritable IP mess. Titan Metal Werks (who owns the SplitStop name and patents) also markets the DeckEase™ product. Compare that to TrapEase™ (marketed by competitor FastenMaster).

And therein lies the question: What is Titan to do? Are the others infringing? Perhaps. Are they causing confusion in the market? Certainly. Is the confusion hurting the reputation of the Titan brands? Probably. Will Titan be able to get them to stop? Doubtful.

• Email This
• Print
• Comments (8)
• Trackbacks
• Share Link

There is a growing interest and, quite frankly, a dogged persistence among branding professionals to select brand names that have the ability and potential to be "verbed." This makes trademark attorney types nervous and those of the "Dr. No" variety actually become unglued.

So, why the emphasis or fascination with verbs anyway? The answer apparently can be found in the definition of a verb: "A verb is a doing word (helping, grabbing)." This feature is appealing to marketers. In addition, some argue that "verbing" a brand extends its reach through effective "word of mouth branding." Some feel so strongly about the marketing benefit they argue that "having the public utter your company name as a verb is like going to heaven without the inconvenience of dying. Getting 'verbed' is the ultimate accomplishment for any brand -- the marketer's Shangri-la."

As marketing maven Seth Godin argued as early as 2005: "Nouns just sit there, inanimate lumps. Verbs are about wants and desires and wishes." Given that limited binary choice, David Cameron's recent and thoughtful "Brandverbing Brands" post on his OnBrands Blog, asks a reasonable question: "Wouldn’t you rather have your brand in the latter category?"

I'm wondering and you might be wondering too, what happened to door number three? We'll get to that, patience.