Duets Blog : Creativity and the Law: DuetsBlog

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.

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With all the good that the Internet can bring for a company, a lot of bad is also lurking out there.  A company could join the social media revolution and capitalize on attracting new customers only to have their new customers' identities stolen in a cyber attack.  Or, a more likely scenario for most companies, the good intentioned company finds itself in a lawsuit for doing nothing more than starting a conversation and engaging its customers.

Well, have no fear for the Digital Millennium Copyright Act ("DMCA") is here.   The DMCA exempts on-line service providers that meet the criteria set forth in the safe harbor provisions from claims of copyright infringement made against them that result from the conduct of their customers. These safe harbor provisions are designed to shelter service providers from the infringing activities of their customers. If a service provider qualifies for the safe harbor exemption, only the individual infringing customer is liable for monetary damages; the service provider's network through which they engaged in the alleged activities is not liable.

It is important to note, though, that the DMCA does not protect against all types of infringement.  For example, it does not protect against trademark infringement.  Therefore, it is important to have well drafted Terms and Conditions of Use Agreements that govern the use of your Web site. 

So jump on the bandwagon and start those social media Web sites.

There are laws and ways to limited your liability for the acts of others using your Web site.  As for the organized cyber attacks, it's probably best to leave that to Google and the U.S. government for the time being.

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Social media has become the must-have tool for every marketer and this tool is gaining popularity with every industry. For example, the insurance industry is typically known for more low-key advertising and marketing channels. However, companies like HCC Medical Services, LLC and Blue Cross Blue Shield have jumped on the social media band wagon. HCC Medical Services has redesigned its Web site to include a social media tool and a blog, and Blue Cross Blue Shield actively appears on Twitter and Facebook.

Social media allows nontraditional marketing innovators to get in front of an entirely new set of customers as well as a younger demographic. It can be difficult to measure the results of social media, but the fact that companies can attract followers on Twitter or fans on Facebook is impressive. On the other hand, sometimes the impact of social media is more clear. Some followers or fans will comment that the social media was a factor in their decision to purchase services or goods from the company. Additionally, some posts will comment on what the company is doing well and what it can improve.

However, to succeed with social media, companies need to have a plan for their social media tool. It is not enough to just be visible. Companies need to actively engage their followers and fans rather than use social media as a means to issue press releases.

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Friendster, the pioneer of social networking, was recently acquired by the Malaysian company MOL Global Pte, which is an affiliate of MOL AccessPortal Berhad, a company that operates and develops payment systems in Asia, for $1.8 billion. I assume at this price the return on investment was pretty nice for the founders of Friendster, but the price for Friendster reveals much more. The use of social networking as a marketing tool continues to grow and so does its importance.

More and more companies are developing or using social networking Web sites to connect with their customers to create brand loyalty and otherwise connect with their customers. For example, Kodak published Social Media Tips to help any business integrate social networking into their marketing plans. Some companies have created social networking Web sites for specific products. And it’s important for companies to consider developing social networking Web sites because it has become the norm for consumers to consult some form of social media before purchasing any product or service. 

But why should a company develop its own social networking Web site? For starters, control. As the owner of the Web site, you control the content and overall image the Web site conveys to consumers. A company does not want to exercise too much control over the content because it is important to create a space where consumers are free to speak, but some control is necessary to comply with certain legal protections afforded to Web site owners like the Digital Millennium Copyright Act and the Communications Decency Act. 

Additionally, the development and maintenance of a Web site can be inexpensive. However, do net let the low price tag trick you into believing development of a Web site is simple. There are a host of legal issues that can trip up even the most sophisticated business. And because there are many companies that provide marketing automation software products and services, it is important to be aware of the legal issues facing both the software developer and end users so that the two can form the most productive relationship.

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My job sometimes is rescuing attorneys, often from themselves. Perhaps the quintessential illustration is a comment made by a corporate general counsel recently, whose organization was responsible for a number of victims, including fatalities. Her opening line to me was, “We’re not the empathy department in this company.” However, the reason she was talking to me was that the organization was about to be inundated with lawsuits from survivors, additional victims not yet known, and the unintended negative visibility that generally accompanies these situations, especially when your organization is considered a perpetrator.

Clearly, the adversarial system works in the courtroom—a rigorously controlled process and environment. Outside the courtroom, the adversarial attitude quickly brands one as cold, arrogant, callous, and anti-victim.

One of my clients is among the largest losers in an intellectual property lawsuit involving copyright infringement. For some 25 years, this firm distributed (via the most convenient mechanism available) copies of a small, highly focused financial advisory newsletter to all of its agents, associates, and franchises. At the end of 25 years, the author of the newsletter decided to sue for infringement. When I heard about the case, my first question to the client’s legal department was, “What’s your plan to settle this case?”

I received two immediate responses: “We’re not interested in settling” and “We have a good defense.” “What,” I asked, “could possibly be a defense that passes the straight face test?” The lawyers’ response was that the individuals involved, “waited too long to file a lawsuit.” “They knew all along what this client was doing with the materials.” My response was, “Even as a non-attorney, my guess is they have you dead to rights. Try to get them paid today. It’s only going to get worse if you wait.” The answer was something along the lines of a trial being inevitable.

The lawyer was prophetic and, of course, the trial was worse and sillier than one can possibly imagine. The jury threw the book at my client. The verdict was never appealed even though there was some bluster at the time that, obviously, such a huge jury award would be appealed.

The lesson for all attorneys is getting clearer by the day: Even though our system is adversarial at its root, as the number of cases getting to trial decreases, more and more forces are pushing for settlement. Increasingly, the answer is to find and hire lawyers who are comfortable being empathetic. Being empathetic is the opposite of being adversarial. Empathy means doing things that matter, where actions speak far louder than words. The concept of empathy is often described as “putting yourself in someone’s shoes.” If that other person is a victim, you’ll be causing yourself and your argument, as well as your attempts to settle, extraordinary damage. Better to step back and look at what the “victim” needs that you can provide, promptly, as a means of settlement and resolution.

Ninety-nine cases out of 100 filed will be settled, arbitrated, negotiated, dropped, or dismissed. Having your day in court is getting to be a pretty rare event.

Oh, and did I mention learning how to apologize? We’ll save that for another blog post.

-- James E. Lukaszewski, The Lukaszewski Group Inc.
 

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Yesterday, Under Consideration's Brand New Blog discussed the redesign of the Nickelodeon trademark. Nickelodeon has decided to drop the well known splat design that encapsulated the NICKELODEON term. As reported by Under Consideration, Nickelodeon’s “splat” has existed in one form or another for over 15 years. Although the orange “splat” has evolved over the years, it was a recognizable symbol of a Nickelodeon product. 

This leads to an important issue, designs are important branding tools. Trademark law argues that the words are the most dominant portion of a trademark because it is the element that consumers use to ask for the goods or services. However, this is not always true. Often times, the word portion of a mark is subordinate to the design component and consumers rely on the design or other matter to identify the source of the goods or services. Good examples include the Nike swoosh or the Under Armour “UA” design. But a design or non-traditional trademark does not need to reach the status of Nike of Under Armour to have a significant market affect. A good example is Christian Louboutin women's shoes. Most people do not know the brand of any women’s shoe at first blush, but most people recognize the red sole. Well, Christian Louboutin has federally registered the red sole of these shoes. Therefore, it is important not to overlook or discount the branding power a design can have and it is worth considering the highest level of protection for this element of a trademark.

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Trademark types: As promised, here are some of my more detailed thoughts and perspectives (at least for the time being) on the most significant trademark case of the year: In re Bose.

Thanks to Thomson Reuters for asking me to share them with their readers. I look forward to some great dialogue on the likely implications resulting from this long-anticipated trademark fraud decision.

Marketing types: An adversary's ability to cancel your company's trademark registration for fraud just got much more difficult with this important Bose decision. Basically, fraud means fraud again.

Instead of your adversary only needing to prove that you should have known that a material statement made to the Trademark Office actually was false at the time you made it (as was the law applied by the U.S. Trademark Office for the last six years), now, simple negligence is no longer enough to establish trademark fraud, instead, an actual intent-to-deceive the Trademark Office must be proven.

Having said that, despite this revived more difficult-to-prove fraud standard, it is as important as ever to treat the statements or representations you make to the Trademark Office as seriously as ever, and with the utmost solemnity, making sure you truly understand what you are signing so you can actually affirm the truth of those statements and representations.

It probably goes without saying that the apparent simplicity of the electronic trademark forms can be quite deceiving. So, there are no stupid questions when it comes to your understanding before signing electronic form documents that are submitted to the Trademark Office.

UPDATE: ExecSense Webinar on the Bose Decision, now available for purchase. Just so you know, all royalties due to me are being donated to The Ronald McDonald House Charity.

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Yellow Book USA, Inc. has embarked on a marketing campaign telling consumers to “Yellowbook  It” when they need to search for something.  Although Yellow Book USA, Inc. does not own a federal registration for YELLOWBOOK, its does use the ™ symbol behind the term on its Web site to signal to consumers that it is a trademark.  From a marketing perspective, having consumers use your trademark as the term to signify searching a directory certainly increases the visibility of the brand.  On the other hand, from a trademark perspective, when consumers start using a trademark to identify to a specific thing or action, it signals the end of all trademark rights.

The function of a mark is to identify and distinguish the goods or services of one seller from those sold by another seller.  A “generic” term does not identify and distinguish goods or services.  A mark may be generic for one product but not for another.  For example, APPLE is generic for the fruit of the apple tree, but not for computers, and CATERPILLAR is generic for the larva of a butterfly, but not for earth moving equipment.  Furthermore, a mark may become generic if the owner fails to properly enforce its rights in the mark or educate the public on the proper way to use its mark.  This occurrence is known as genericide and DuetsBlog has discussed this phenomenon before.  Therefore, because generic matter does not identify and distinguish goods or services, it possesses no distinctiveness and falls on the unprotectable side of the spectrum of distinctiveness.

Yellow Book USA, Inc.’s strategy is reminiscent of the issue Google faced.  However, Google did not embrace consumers referring to searching the Internet as “Google it.”  Rather, Google aggressively went the other way educating consumers on the proper use of its trademark.  Today, Google has included trademark use guidelines on its Web site, which include the following rule: “Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.”

Therefore, while Google and other companies are trying to avoid genericide, Yellow Book USA, Inc. seems content with running full speed towards it.  I assume they are aware of the risk they are taking, at least I hope so.

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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.

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Recently, I stopped in a neighborhood coffee shop for an iced coffee. It was a fabulous little coffee shop in a neighborhood I don’t frequent and whose name I won’t mention. Anyway, while perusing the menu, I noticed they offered a blended coffee drink under the name Frappuccino.  Noting the teenager behind the counter, I did not feel it would be beneficial to provide a trademark tutorial or a warning as to how Starbucks would react to this use of its arguably famous trademark for identical goods. 

Sipping my delicious frozen beverage, I could not help thinking it would be a good blog topic to discuss the importance of trademark policing and enforcement.   Obviously, this is not always an easy task and these types of uses are especially difficult to detect.  In fact, Starbucks has been very active in protecting its trademark rights, even against small, mom-and-pop coffee shops which it discovers are using a similar name or logo mark such as Conga Coffee & Tea (similarly shaped green logo mark).  However, identifying an infringing name of a shop is one thing, but identifying an infringing menu item is a far more difficult task. 

Companies spend a lot of time and money developing brand names for products and services and many companies have hundreds of branded products in their portfolios.   An important part of branding is protecting those brands and companies need to determine how to best monitor their marks.  Employing a watch service is always a good idea for major brands and/or a company name.  However, the cost of a watch service is by the mark and can quickly add up if a company has numerous brands to protect.  Thus, a few suggestions as to steps a company can take to protect its marks include:

1. Apply for federal trademark registration whenever possible;
2. Proper and consistent use of the ® ™ symbols in connection with each and every brand;
3. Undertake periodic Internet searches for potentially infringing uses;
4. Create champions for your brand - highly loyal customers, distributors, retailers, and other partners, who will bring potential infringements to your attention;
5. Internal education for employees to keep their eyes open and listen with an open ear when others bring potential infringements to light; and
6. If you become aware of a potential infringement, take action sooner rather than later by sending a formal letter.  You may want to consider hiring a trademark attorney to send the letter; investing in a well written cease and desist letter will often pay off by putting an end to the infringement. 

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The importance of logos in branding has been discussed in detail. Although words are generally thought of as the most dominant portion of a trademark because they are spoken by consumers, the logos themselves convey equally powerful and important messages. Which is why this element in the overall branding strategy should be cleared by trademark counsel prior to investing significant sums of money in promoting the trademark.

Recently, Under Consideration’s Brand New Blog featured the rebrand of Suramericana, an insurance company. Suramericana’s old logo was a recognizable picture of a bird and its new logo is a very modern depiction of a bird. One commentator said about the new logo “[a]m I the only one seeing the Sprint logo in the ‘wing’?” Sprint Communication Company L.P. is the owner of a federal registration for a design that the United States Patent and Trademark Office classifies as “wings, birds’.” The Suramericana new logo does look an awful lot like an upside down version of the Sprint logo.

While Suramericana probably does not have to worry about receiving a nasty letter from Sprint over its logo because insurance and telecommunication services are unrelated, this situation presents and important point.  A trademark clearance search should be done on all elements of the trademark even those elements that do not immediately stand out as something that deserves a search. Assuming the services were related, Suramericana could have found itself in a position where it would have to repeat its rebranding effort. The upfront investment in trademark searches is generally worth the money given the peace of mind a search can provide.

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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.

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In April the FDA sent formal letters to a number of pharma companies warning them of their misleading paid search ads in Google. Essentially the FDA wants pharma brands to put their full name of their product and associated risks in the ad. The problem as stated by pharma companies is that these paid search ads in search engines are only 95 characters in length and there isn’t enough space to include the name and the risks, not to mention the benefits.

If you’ve been following the subsequent online discussion about these FDA letters, you’ll see that much of the debate is centered around the idea that the FDA suggestions may be making things more confusing for the consumer rather than helping them. Although there is the potential for the FDA to drive some unintended, consequences, it seems to me that there is some common sense interpretations of the FDA suggestions that are the right thing to do for all parties.

The unintended consequence most mentioned, is that forcing further requirements on pharma companies has reduced participation from them and thus opened the door for Canadian online pharmacies and natural supplements. If you do a drug search today, you’ll see this is already happening. (Side note: Google has a fairly responsive protocol for a brand to file trademark paperwork to stop other brands from using their trademark.)

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We have had somewhat of an unplanned blue jeans theme here at DuetsBlog, with Karen blogging about the upside down triangle logo associated with Guess designer jeans from the 1980s, here, and Tiffany blogging about Levi Strauss and Abercrombie & Fitch butting heads, here. My turn now to talk about a blue jean brand, along with airbrushing, non-traditional trademarks, and nominative fair use.

Some time ago I came across an advertiser's reward-type promotion, inviting customers to refer a friend and "pocket the cash" -- basically, a free cash reward for the successful referral. What interested me about the promotion was the prominent depiction of a Levi's back pocket complete with the Levi Strauss Double Arcuate Design on the denim pocket. After realizing this was no co-branding exercise and that a pair of Levi's jeans was not part of the reward, only cash, and this depiction was merely the advertiser's play on words or an attempt to reinforce the words in the promotion, it led me to wonder whether the advertiser even realized that it had used one of Levi Strauss' non-traditional trademarks, most likely without permission.

Here are a few examples of federally-registered non-traditional trademarks owned by Levi Strauss:

The one I encountered in the reward promotion was the center image minus the tab, so it's possible the well-known tab element was airbrushed to remove it as a trademark issue. The broader-scope registered mark on the right, however, indicates that simply removing the tab may not be sufficient to avoid all possible trademark issues.

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

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

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

Happy Tweeting

—Ted Risdall, Risdall Marketing

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

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

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

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

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

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application -- to see how the product does -- before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well "see how the product does" with another name.

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

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

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

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

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

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

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

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

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

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

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

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

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Earlier this week, Guest Blogger Burt Alper from Catchword Branding, provided a marketer's perspective on the pros and cons of naming styles, here.

With that introduction, now seems like a good time to revisit the critically important line -- in terms of legal protection -- between descriptive and suggestive names, and also provide a handy graphic to illustrate the Trademark Spectrum of Distinctiveness: 

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Which is better: a descriptive brand name like Rollerblade, an abstract/emotional brand name like Virgin, or a suggestive brand name that hints at either the function or the benefit like Energizer? The lawyers will tell you to go abstract (they like wildly differentiated names because they’re easier to protect). But marketers need more than just protectability. They need to promote their wares too.

Of course, each of these naming styles has advantages and disadvantages, and each can be used effectively. The two drivers that should dictate your preference are projected ad budget (and likely marketing channel), and how variable your business model is. The more abstract your brand name is, the more you will likely spend on advertising. The more descriptive your name is, the less flexibility you have to adjust your business model under that brand.

Consider three examples from the online job posting arena: Monster.com, TheLadders.com, and CareerBuilder.com. Three different styles of names, all for pretty much the same business.

Monster.com is the most abstract of the names. It doesn’t say anything about employment or personal development (the functional side of the business) nor does it say anything about efficiency or multiplicity of listings (the benefit side of the business). The upside of being so abstract is the company can adjust its business model over time: The brand “Monster” could offer relocation services just as easily as it could offer job hunting services. Furthermore, the name really stands out from the crowd. The downside? Names like this require a more substantial ad budget to make them stick. This company has bought television ad time during the Superbowl, and they constantly have to remind people what service they provide.

TheLadders.com is a more suggestive brand name. Still says nothing about job listings, but the key benefit of the service (climbing up the corporate ladder) is clearly communicated. While this name doesn’t afford quite as much flexibility for the business, it still gives a lot of room to maneuver. And the name stands out without being so abstract that they need to spend a gazillion dollars promoting it.

CareerBuilder.com is the most descriptive name of the three. This name clearly communicates its function: helping you build your career. Easy to promote in any channel (radio, tv, print, online) and easily understood by a wide audience. What this name lacks is charisma; it’s kind of boring (a common affliction of more descriptive names). Perhaps because these guys are competing with the likes of Monster and TheLadders, they too have spent quite a bit on their ad campaigns (including one of my favorite Superbowl commercials of all time).

One final question for readers: is it more important for a name to stand out (a la Monster) or for a name to be intuitive (a la CareerBuilder)?

—Burt Alper, Catchword Branding

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Tough times call for tough decisions. Brand managers know this as well as anyone, and they are certainly facing some very tough decisions during these challenging economic times.

Sometimes shrinking the workforce is considered to be in the best interest of the brand. For example, last week, Carter's, the parent company of OshKosh B'Gosh, announced that it would be trimming the workforce in order to improve the efficiency and profitability of the iconic -- and more than century old -- brand.

Brand managers also may be asked to re-evaluate their brand protection strategies in order to cut costs. Given a recent competing brand that appears to have gone unchallenged by OshKosh B'Gosh®, one has to wonder if there is a willingness to shrink the B'Gosh® brand in addition to the workforce.

Returning from a trip to Washington, D.C., for a pair of oral arguments at the Trademark Trial and Appeal Board (TTAB), I did some speed-shopping for my daughter at a neat little boutique in Bethesda, Maryland, called The Blue House (I highly recommend it). Without paying attention to brand at all, or even looking at the hangtag or label (okay, I had to catch a plane), I picked up a really cute outfit I thought she'd just love. I was actually right, this time. In fact, she is so taken by it and some other items sold under this brand online, she not very happy that I am writing this post right now. Oh well, duty calls.

Anyway, when I got home and unpacked the outfit I noticed the hangtag for the first time, and honestly, my first thought was, is this a modern rendition of the B'Gosh® brand? After a closer look, I began to wonder whether it is an extension or somehow related to the B'Gosh® brand? It wasn't until visiting the brand's website and conducting some searches on the Trademark Office database that I was able to satisfy myself, no apparent connection. In case you're wondering, no image of the outfit, but I did scan an image of the hangtag and it is viewable after the jump. 

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Recently, UnderConsideration's Brand New blog commented on the new logo adopted by Much Music. After 10 years of using MUCHMOREMUSIC, the logo was changed to MUCHMORE. The new logo is aesthetically more pleasing, but the change raises an important issue. Modernizing old logos can result in abandonment of the old mark, which means a loss of all trademark rights in the old logo.

In order to retain the trademark rights from the old version of the mark, the modified mark must contain what is the essence of the original mark and the new form must create the impression of being essentially the same mark. In other words, the new mark must retain the same overall commercial impression of the old mark. Generally, modernizing a mark will retain the same overall commercial impression of the old mark. However, the risk of creating a different commercial impression looms when elements are added to or deleted from the old mark.

In Much Music’s case, they deleted the term MUSIC, added color, and stylized the terms in a different way. The different stylization of the terms probably does not create a different commercial impression. However, the addition of color when the old logo did not have color and deletion of the term MUSIC could cause the new logo to create a commercial impression that is different from the old logo. The potential loss of 10 years of use could have a significant impact on the brand going forward. Therefore, it is important to keep this issue in mind when modernizing marks especially marks that have been used for many years.

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If someone is trying to interfere with your intellectual property, you need to preserve the evidence—or pay the price. It is likely that RealNetworks Inc. wishes that it had done so.   RealNetworks Inc. sued asking for a declaratory judgment that its product does not infringe the digital copyright law. In turn, Paramount and Other Hollywood movie studios also sued RealNetworks over the issue. In connection with these lawsuits, Paramount is accusing RealNetworks of not preserving evidence and seeking sanctions. It is important to save evidence relating to your intellectual property, including electronic evidence, when there is a possibility of litigation. Just remember preserving evidence is an important way to protect your intellectual property rights.

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The Brand New blog featured the new Lay's packaging that shows the term BAKED! prominently appearing above the product’s brand.  A few comments on the Brand New blog made astute observations of the new packaging; namely, the term BAKED! seems to take precedence over the product’s brand. It is interesting that Lay’s chose to place such emphasis on something it can’t legally protect.

When selecting a mark, it is important to consider whether the subject matter can be legally protected. A federal trademark registration provides the owner with nationwide rights. And nationwide rights allow the trademark owner to prevent others from adopting and using confusingly similar marks, after the registration of its mark, in geographic areas where the trademark owner may not be actually using its mark. The fewer similar marks that co-exist in the marketplace, the stronger an owner’s trademark will be.

Lay’s use of BAKED! is not immediately protectable for a couple reasons. First, the term BAKED! may be generic for a type of snack chip. Generic terms answer the question “What am I?” and describe the category of goods or services. Generic terms can never receive legal protection no matter how much the generic term is promoted. Lay’s use of BAKED! likely describes the category of snack chip.

Second, if not generic, the term BAKED! is merely descriptive because it immediately conveys some information to consumers about the nature, quality, or characteristic of the good or service. In Lay’s case, the term BAKED! immediately tells consumers how the snack chip is made. Additionally, the use of the exclamation point appears to show that the term is laudatory. “Laudatory” can be defined as containing or expressing praise. Lay’s use of the exclamation point expresses praise that its snack chip is baked, not fried.

Descriptive and generic terms can and should be used in connection with a product’s brand to help convey information about the good or service. But these terms should play a supporting role and not dominate the brand of the product because the product’s brand is what conveys information about the quality of the product. It is the quality of the product that consumers are drawn to and where goodwill is created. As the comments suggest, Lay’s would likely benefit more from a marketing and legal perspective if the brand is featured more prominently than the generic or descriptive term BAKED!

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