Duets Blog : Creativity and the Law: DuetsBlog

Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin's trademark advice, however, I'm not feeling it, sorry (that wasn't an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I'm not a lawyer. I don't even play one on TV. If you rely on my legal advice, you're getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one's legal rights.

I'll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson's defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client 'owns'. News flash: trademark law is designed to make it clear who makes a good or a service. It's a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don't consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I'm not saying Seth Godin's opinions about trademarks are Out of Bounds, I'm simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I'll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.

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In reading news of the passing of Fred Morrison, inventor of the Frisbee ®, I was surprised to learn that the Frisbee wasn't always called "Frisbee."  Morrison sold his rights to Wham-O in 1957 ("sold" being used loosely -- he apparently earned more than $2M in royalties).  Morrison had dubbed earlier prototypes of the flying disc with the following names:  the Pluto Platter, the Whirlo-Way, and Flyin-Saucer.  Morrison's reaction to Wham-O's name of Frisbee?  "I thought the name was a horror."  He later recanted.   According to CNN, Wham-O's inspiration for the Frisbee name was the Frisbie Pie Company, whose pie tins were apparently used by college students as early flying discs. 

So, let the speculation begin:  how much is the success of the Frisbee due to the name, and how much is due to everything else (design, functionality, enjoyment, etc.)?  Although it is probably impossible to ever know the answer, I submit that a good name is probably worth at least 10% of sales.  (The above reports peg sales at 200 million units.)  Is there a rule of thumb in the marketing industry for this, or is anyone aware of any studies that have attempted to quantify this?  I also note that Frisbee is a solid, almost staccato two-syllable word, like iPod, Apple, Sony, Honda, Nike, Kindle, and many other popular brands that seem to have staying power.

By the way, you want horror?  How about the horror of this:  point your browser to frisbee.com.  Go ahead, try it.  As of this writing, it redirects to this page--a big pay-per-click page of flying disc ads, none of which mention "Frisbee."  The page is titled, FLYINGDISCS.ORG, with the subtitle, "Ashes fly back into the face of him who throws them."  Sounds like there may be some bad blood there!

I should also point out the "horror" of the name "Frisbee Golf," both from a trademark standpoint and as an avid player in the game of disc golf.  While I am generally a fan of Wham-O products, I think Wham-O was a little late to the modern incarnation of disc golf and the specialized discs used in the sport, which are substantially smaller and flatter than a traditional Frisbee disc (think Ultimate Frisbee) with a heavy, hard rim.  I daresay Wham-O would not take kindly to the Professional Disc Golf Association changing its name to the Professional Frisbee Golf Association.  (FYI, two of the more popular brands in the disc golf biz are Innova and Discraft.)

And the real geeks can see Morrison's original design patent here, and the later utility patent for the distinctive grooves that appear on the shoulder of Frisbee discs here.  (Distinctive?  Yes.  Trademarkable?  No, because the grooves are functional.  I'll spare you the calculus that explains the aerodynamics . . . for now.)

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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?

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A couple of months ago I blogged about Branding Exclamations!

Before that I blogged about Increasingly Intense Ellipsis Branding . . . .

Now, it appears I must revisit the subject of punctuation mark branding given Cadbury Adams' new Mega Mystery Stride brand gum, prominently featuring a question mark logo on the packaging where the S logo normally appears.

The mystery apparently surrounds the presently undisclosed flavor of the gum. The unknown flavor appears to be part of Stride's claimed Ridiculously Long Lasting Gum, not to be confused, of course, with Wrigley's Curiously Strong mints and gum (Altoids).

Anyway, my daughter brought a pack of the ? gum home and said, "Daddy, you should blog about this," so now you know the inspiration for my curiously strong or ridiculously long attention to this subject.

I fully expected to find a pending trademark application filed by Cadbury Adams for the "?" symbol, given its ridiculously flavorful interest in single letter chewing gum brands. To my surprise, however, I found none, at least yet.

As you might have imagined, I did find some "?" trademarks of others, as shown below. Do you recognize any of them? Each "?" image is linked to the corresponding trademark record at the U.S. Trademark Office.

Turns out, there is a ? trademark battle heating up too. Not in the world of confections, but rather in the world of fashion. Just days ago, Guess IP Holder L.P., owner of the famous Guess brand, filed a Trademark Opposition against one of the above Question Mark logos, guess which one?

It asserted ownership of these federally-registered trademarks:

But not any of these, for some reason:

To find out, click here for a link to a copy of the Notice of Opposition.

Any more questions?

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A few weeks ago, the Federal Circuit Court of Appeals issued its decision in The University of South Carolina v. the University of Southern California in South Carolina’s appeal from the Trademark Trial and Appeal Board (“TTAB”).  The Federal Circuit affirmed the TTAB’s finding that consumers are likely to be confused by South Carolina’s use of this design on clothing:



And Southern California’s use of this design on clothing:



I’ve written before about the lucrative field of collegiate sports merchandising.  Given the millions of dollars at stake, it’s therefore no surprise that these universities have spent thousands upon thousands of dollars taking this case to the Court of Appeals; it’s also no surprise that South Carolina is considering an appeal to the Supreme Court.  

In reaching its decision, the Federal Circuit considered many of the usual arguments – such as the parties respective channels of trade (found to be similar), the conditions under which consumers would purchase the parties’ respective merchandise (found to be similar), and the parties’ simultaneous use of their marks in commerce without confusion (found to be insignificant).  In fleshing out this argument, the Court noted a number points that would seem to work against a finding of likely confusion: the schools are located on opposite sides of the country, many collegiate sports fans are sophisticated when it comes to recognizing their teams, and no instance of actual confusion has been reported.  Moreover, South Carolina presented evidence that at least sixteen other universities and colleges represent themselves as SC, indicating that college students and sports fans are sufficiently knowledgeable to recognize their desired school.  (Notably, the parties were able to come to an agreement regarding concurrent use of the mark USC in connection with education services, with Southern California taking Washington, Oregon, California, Nevada, Idaho, Arizona, Utah, Colorado, Wyoming, Montana, New Mexico, Texas, North Dakota, South Dakota, Nebraska, Kansas, Oklahoma, Minnesota, Iowa, Missouri, Massachusetts, Illinois, and Hawaii and South Carolina taking Wisconsin, Mississippi, Indiana, Kentucky, Tennessee, Alabama, Georgia, South Carolina, North Carolina, Virginia, West Virginia, Ohio, Pennsylvania, Maryland, New York, Arkansas, Louisiana, Connecticut, Maine, Vermont, New Hampshire, New Jersey, Florida, Rhode Island, Delaware, the District of Columbia and, interestingly, Alaska).

Nevertheless, the Court upheld the TTAB’s finding that, as the disputed marks are “legally identical,” there is a likelihood of consumer confusion among them.  As a result, South Carolina’s application to register its design mark has been refused.  While this decision does not prevent South Carolina from using its design mark in connection with merchandise, it does deprive South Carolina of the benefits of registration – including the ability to enforce infringing use of its own mark nationwide.  

In a nice article on this matter, the Los Angeles Times has queried, “Would a reasonable person confuse a USC logo on a garnet-and-black ball cap in Columbia, S.C., with the same letters on cardinal-and-gold sportswear worn by a Trojans fan at the Coliseum?”

What do you think?

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A lot can be learned from the easily searched trademark registrations existing on the United States Patent and Trademark Office's online database. For example, Examining Attorneys at the USPTO will refuse registration based on prior confusingly similar registered marks, so responsible trademark owners will conduct the necessary searching and due diligence prior to adoption and first use. In addition, because searching the USPTO's database can yield readily available evidence on a number of substantive issues important to trademark types and brand owners, third-party trademark registrations are a very tempting tool to use to try to prove a point.

As frustrating as it can be to trademark types and the brand owners they represent, third-party registrations cannot be used as legal precedent to try and compel a certain result. Such attempts easily are rebuffed at the USPTO since each application must be decided on its own merits and one Examining Attorney is not bound by the "mistakes" that may have been made by other Examining Attorneys at the USPTO. As a result, although consistency is a goal at the USPTO, it can be rather elusive at times. Having said that, third-party trademark registration evidence can have evidentiary value, if used properly, and the valid and acceptable use of third-party registration evidence has grown over time.

Third-party registrations have been considered relevant and probative in establishing a number of different and important trademark issues, including at least:

1. The likely meaning of a mark to consumers. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915 (CCPA 1976). 
2. That goods or services are of a type that consumers may believe emanate from a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
3. The likely meaning of a mark to consumers, i.e., whether it is merely descriptive or suggestive. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541 (TTAB 1983).
4. That a mark is relatively weak and that consumers will rely on other matter to distinguish between marks. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (CAFC 2005).
5. The existence of a relevant industry practice. Stuart Spector Designs, Ltd. et al. v. Fender Musical Instrument Corporation, 2009 WL 804142 (TTAB March 25, 2009) (finding the third-party registrations for guitar body designs supported the applicant's position that the USPTO recognizes guitar body designs as capable of indicating source and the industry's practice of registering guitar body designs); In re The Black & Decker Corp., 81 USPQ2d 1841 (TTAB 2006) (finding industry practice to use key head design as source indicator).

A couple of days ago I posted about a trademark specimen case, one where I was hoping the TTAB would expand the valid use of third-party registration evidence, but unfortunately, the TTAB did not acknowledge or address the third-party trademark registration evidence that was submitted (along with the specimens of use supporting those standard character word-only trademark registrations). Perhaps someone else can benefit from these thoughts in arguing for additional expanded use of third-party registrations in their trademark registration cases.

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As reported by the Star Tribune, the first B. Dalton Bookseller bookstore will be among the last to close:  the B. Dalton bookstore at Southdale Center in Edina, Minnesota closes tomorrow after a 44 year run. 

Even if a bit sad for the sentimentalists among us (and I am one) to watch another relatively longstanding brand go down in chains, so to speak, this was not altogether unpredictable given modern book retailing.  The B. Dalton brand has virtually no online presence whatsoever.  The domain names bdalton.com, bdaltons.com, bdaltonbooks.com, bdaltonbookseller.com, and bdaltonbooksellers.com, all appear to be parked with pay-per-click pages.  Of the thirty or so trademark registrations in which B. Dalton had an interest at one point or another, twenty-six of them have lapsed or been canceled.  Parent company Barnes & Noble has openly discussed the "controlled descent" of B. Dalton stores in recent annual reports.  The store closing at Southdale is not even the original store that opened there--it moved to a more remote locale within the mall years ago.

Karen's recent posts on the death of the Tavern on the Green have raised some of the same issues at play here:  whither the B. Dalton brand?  One thing that distinguishes the two cases, in my mind, is that the Tavern on the Green brand is reportedly valued at $19 million.  (Query:  how does a company with one business location and a $19 million asset go bankrupt?)  At its height, the B. Dalton brand might have been worth millions, but now it is probably synonymous with "mall-based bookstore with slow sales."  Perhaps it might appraise at a few hundred thousand dollars, but an estimate is not worth very much if there is no buyer.  So long B. Dalton!

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Among the most ingrained Christmas traditions I recall from my youth was watching the Charlie Brown Christmas Special every year.  For many, many years, that Special was "brought to you by Dolly Madison."  (And it was always preceded by this intro--a classic!) 

Dolly Madison is but one of many brands owned by Hostess Brands, Inc., f/k/a Interstate Bakeries.  Hostess Brands has a number of well-known brands related to breads and cakes, including Hostess, Wonder, Holsum, and Beefsteak, among many others.  I would place HOSTESS and WONDER in the category of famous trademarks, and several of the company's other brands are probably regionally famous. 

So I was really surprised to learn that Hostess Brands does not own hostess.com.  In fact, just last month, Hostess Brands lost a UDRP arbitration to obtain that domain name from Domain Capital. (Opinion here.)  Steve Levy has an excellent analysis over at The FairWinds Blog.  I don't know if it is a deliberate association, but FairWinds also has a sidebar poll asking who among a company's legal, marketing, and IT departments should take the lead in managing domain name resources?  (Poll results here.)  I think there is no universally correct answer, except that the job should be done and be done well.  A company like Hostess Brands should not have been the last one to the party in securing the hostess.com domain name, and when it comes to domain name rights, last place is usually any place other than first place. 

Tip of the hat to the ESQwire.com law firm, which represented Domain Capital, and best of luck to Hostess Brands.

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Reuters reported last week that Conagra Foods, maker of Swiss Miss hot cocoa, has sued Dean Foods over its use of the term “Swiss” in connection with teas. Specifically, the suit takes issue with Dean Foods’ new design mark for its Swiss Premium Teas, which incorporates a white font for the term “SWISS” and  a picture of snow-capped mountains on a blue background, which Conagra argues are similar to its SWISS MISS marks, which also incorporate the same features.

Here are the marks on their product packaging:   

                                                                               

Dean Foods could try to argue that its use of snow-capped mountains is descriptive for SWISS – after all, what small child isn’t aware after her first trip to the Magic Kingdom that the snow-capped Matterhorn is one of the natural jewels of the Swiss Alps? As for the lettering, however, Dean Foods may have to get more creative to argue that its font style and background are commonly used to evoke Swiss-themed products.   My extremely unscientific search of Google Images revealed that the term “Swiss,” as used in connection with food products, is most often used in white and red, no doubt evoking the country’s recognizable coat of arms:

Further, as courts are directed to evaluate composite trademarks for infringement as unitary marks – that is, fonts, pictures, words, and other elements together, as they are seen by the consumer – Dean may not get much mileage out of its use of the arguably descriptive snow-capped mountains.

What do you think?

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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?

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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. 

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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.

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What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int'l Class 12:

And, as you may recall from Dan's I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

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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? 

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As we hit the ides of November, we are nearing the proverbial calm before the storm of the holidays. What you probably do not know is that we are but two, short days away from a little-known holiday before the Holidays, one that celebrates the preparation for the Holidays. This, of course, could only be National Bundt Day.

The first National Bundt Day was declared in 2006, the 60^th Anniversary of the founding of the company that is the source of the Bundt® pan: Nordic Ware. This family-owned company, legally incorporated as Northland Aluminum Products, Inc., is located on the outskirts of our own Minneapolis, Minnesota, and specializes in aluminum and other cookware. Nordic Ware has sold more than 60 million Bundt® pans, estimated to be enough to be in two out of three U.S. households. According to Nordic Ware, the word BUNDT, a coined term and registered trademark for cake pans, is derived from the German word “bund,” which means “a gathering of people.” Adding to the uniqueness of Nordic Ware, the company still manufactures in the United States (in Minneapolis), and openly states, "in the marketplace struggle between price and quality, quality wins every time."  Amen. 

Although Nordic Ware makes Bundt® pans in numerous shapes and sizes, and has even registered the shape of one of its unique pans as a trademark, it doesn’t appear that Nordic Ware has sought to register its “original” shape Bundt® pan as a trademark, but it probably could:

Indeed, the Bundt is iconic and enjoyed by peoples of all cultures and ethnicities.

For a brief third-party history of the Bundt® pan and a review of Bundt buying and baking, click here.

Happy baking!

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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

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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.

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The makers of Red Bull have taken on companies who are importing and distributing unauthorized gray market Red Bull Energy Drink products across the United States.  

The company brought a suit recently in New York alleging that the bootleg Red Bull Energy Drinks that were only authorized to be sold in other countries were also being diverted into the United States. Red Bull claims that the distribution of such products causes or is likely to cause purchaser or consumer confusion, mistake and/or deception to the detriment of Red Bull and consumers. As I discussed last week in “Should ‘Bootleg’ Toys Be Shut Down?,” trademark owners can obtain relief from the courts if the “gray market” goods are “materially different” than those sold by the trademark owner.  

Red Bull alleges that the “material differences” between its products and those being distributed by the New York company include:  unfamiliar spelling or language on the cans, different local distributor contact information, a lack of required United States federal and state nutritional information, unfamiliar ingredients identified on the cans, lack of deposit information, different units of measurement, lack of batch coding, lack of expiration dates, and lack of rigorous quality control standards. 

This is not the first time that Red Bull has taken action against distributors of gray market goods. In 2006, Red Bull sued a Georgia company for its bootleg distribution of Red Bull products. In April of this year, Red Bull obtained a verdict for twenty-one million dollars against the company and also obtained a permanent injunction against the company prohibiting it from further trademark infringement and trademark dilution. Red Bull is likely hoping for a similar resolution in the New York case.

To say that the Red Bull brand is valuable is an understatement. Red Bull is currently the leader in the energy drink category. In 2008, over 1.3 billion units of the Red Bull Energy Drink were sold in the United States. Red Bull promotes the U.S. Red Bull Energy Drinks featuring its valuable trademarks in connection with numerous athletic events, music festivals, sponsorships, and sports competition (including motor sport) in the United States and around the world. 

The courts are not the only venue that Red Bull has sought to police its trademarks. In May of this year, Red Bull filed a 337 Complaint with the International Trade Commission (“ITC”) requesting that it commence an investigation of entities that are selling and distributing imported gray market energy drink products in the United States which are materially different than Red Bull’s energy drinks. The ITC agreed to start an investigation into the matter. Accordingly, Red Bull may obtain government assistance in policing and protecting its Red Bull brand and trademark. The ITC may be bombarded with similar complaints because gray market bootlegging occurs across numerous markets for many types of products, not just energy drinks and toys.

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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)?

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Last week, a group calling themselves The Yes Men apparently perpetrated an elaborate hoax to usurp the corporate persona of the United States Chamber of Commerce, to the point of publishing a fake website and holding a press conference at the National Press Club, posing as the Chamber itself.   (Image of genuine website here.)

As reported at Betanews (and elsewhere), representatives of the real U.S. Chamber of Commerce became aware of the hoax in time to actually interrupt the faux press conference, under the auspicies of which the pranksters were announcing an about-face in the Chamber's previously-stated positions on climate policy.  As of this writing, the Betanews article has a six minute video of the press conference as it is interrupted by a genuine representative of the Chamber.  It is interesting to see how close the hoax came to actually duping real members of the press.  (Of those in attendance, apparently four actual reporters were naive to the hoax, and they reported for the Washington Post, Reuters, and Greenwire.  Some of those attending were allegedly plants.)

On Monday, the U.S. Chamber of Commerce sued The Yes Men for a host of trademark-related torts, including trademark infringement, unfair competition, trademark dilution, false advertising, and cyberpiracy.  (PDF of complaint here.)  They even worked in an allegation of counterfeiting.  (Had I drafted the complaint, I would have used the word "counterfeit" as often as possible.)  While I reserve judgment as facts develop, the information publicly available now suggests that the Chamber has a strong case.  The Yes Men seem to be leaning towards some sort of a free speech defense.  The complaint suggests that The Yes Men perpetrated the hoax in an effort to publicize their new movie.  Whether this is the case, or whether this was an actual effort to deceive people, I don't see much traction for a free speech defense, which requires at a minimum that the speech in question not be misleading.  This should be a fun case to watch!

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It depends. “Gray market” goods are those goods that are sold outside of the brand owner’s authorized distribution channels. Although a trademark owner may consider them “bootleg,” “gray market” goods are actually legally acquired abroad and then imported into the United States without the trademark owner’s consent. These actions do not legally infringe the trademark under the Lanham Act unless the “gray goods” undermine the owner’s goodwill or leave the consumer in a state of “legal confusion.”   If the "gray market" goods are "materially different" from the trademark owner's goods, then courts have found "legal confusion." 

The Cabbage Patch Kids dolls were at the heart of a dispute in the case entitled, Original Appalachian Artworks v. Granada Electronics, 816 F.2d 68 (2d Cir. 1987). A Spanish importer/distributor sold Spanish Kids dolls in the United States.  The Second Circuit found that the Spanish-language birth certificates, adoption papers and instructions for the Spanish Kids dolls were “materially different” from those same English-language documents for the Cabbage Patch Kids dolls.  It was likely that the consumer would be confused. Accordingly, the Cabbage Patch Kids trademark owner obtained a permanent injunction prohibiting the Spanish importer/distributor from selling the Spanish Kids dolls in the United States.

With the increasing global nature of our economy, “gray market” infringement claims will likely increase in the years to come. Courts have found “material differences” in products based on labels, packaging, structural strength of parts, product composition and storage of material. If a product fails to contain English warning labels or English operator owners’ manuals, courts will likely find these to be “material differences” warranting protection. 

“Material differences” do not have to be physical. Services provided with product and warranties (or lack thereof) can be found to be a “material difference” from the trademark owner’s product. Further, a trademark owner’s superior internal quality control procedures can be a “material difference.” There are many ways that a trademark owner can assert that there is a “material difference” in its product so that it can obtain protection from “gray goods” being dumped into the United States to unfairly compete with the trademark owner’s products.

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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?

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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.

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The inquiring minds at TechDirt have unearthed a spat between Apple and Woolworths (the supermarket chain in New Zealand and Australia) due to the latter’s adoption of a curly-cue-letter-W-shaped mark, shown below:

Putting aside dilution issues, the central question would appear to be whether confusion is possible, let alone likely, given that Woolworths is a grocery store where people purchase…groceries, including apples (both green and red!) and Apple sells computers, phones and addictive little music devices. Many of the folks leaving comments to the article answered this question in the negative.

But there’s a larger issue lurking beneath the surface of this spat—specifically, the fact that Woolworths is seeking registration of its mark in connection with electronics and other goods that are related and may in fact compete with Apple’s electronic devices. New Zealand and Australia, like the United States, are “first to use” countries, meaning that purveyors of goods and services may assert rights in their trademarks and service marks upon first use and accrue common law rights from that time, which in this case may well provide Apple with priority and victory over Woolworths in New Zealand and Australia (provided, of course, that consumers are likely to confuse the two marks for electronics and related goods and services). 

In contrast, if New Zealand or Australia were “first to file” countries, Apple would be facing a tougher battle. “First to file” countries—including much of the European Union, China, Japan and India—allow the earliest filer to obtain a registration of a given mark. These countries likewise often allow registrants to claim the entirety of goods and services in any given class, making challenges for U.S. companies even more time-consuming and costly.

Regardless of the filing system at issue, it is important for U.S. companies to consider foreign businesses and their trademarks in their overall strategy in investing in and protecting their brands.

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As you'll see, I'm no equestrian (nor equine expert for that matter), but given the non-verbal logos shown above, are you able to tell what company operates a fleet of these semi tractor-trailers?

Does the color of the horse help? Horse breed? The direction it is facing? How about its pose?

Some possible considerations and the answer below the jump.

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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.

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This summer has seen popular icons pass away such as Michael Jackson and Farrah Fawcett as we have discussed in earlier blog posts. With the recent passing of “Dirty Dancing” star Patrick Swayze last week, I am reminded of his famous saying “Nobody Puts Baby in a Corner” :

Two years ago this famous saying was embroiled in a trademark suit. Lions Gate Entertainment Inc. owned a trademark for the famous saying in connection with its merchandising surrounding the iconic film. It sued fifteen clothing companies, including a Denver company called Real Baby for selling baby clothes with the trademark, including onesies. The parties settled the case before the merits were reached.  

Other movie quotes, or adaptations of quotes, have been registered as trademarks. One of the best known movie quotes was uttered by Clark Gable in the Oscar winning “Gone With the Wind.” The trademark “Simply Scarlett Frankly My Dear You Look Divan” was registered in connection with clothing, likely in an effort to capitalize on the success of the movie. However, this trademark was ultimately cancelled because the registrant failed to file appropriate documentation (in legal jargon Declaration of Continued Use under Section 8).  

Other famous Patrick Swayze movie lines have not been registered for trademarks yet; such as his “ditto” response to Demi Moore’s “I love you” in the movie “Ghost” or “Pain don’t hurt” that he uttered in “Roadhouse.”   Who knows if these lines will ever become registered trademarks.

As discussed above, movie studios such as Lions Gate Entertainment Inc. sometimes register trademarks for famous movie lines. But, if you can beat the studio to the punch and register a famous movie quote (or adaptation of a quote such as the above one for “Gone With The Wind”) in connection with a product, you might hit the marketing jack pot.   

Unfortunately, there will be no more such iconic phrases from Patrick Swayze.

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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.

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I think Steve once remarked something to the effect that the Internet is employment security for trademark attorneys.  Road tripping is too.  On one such recent occasion, my wife remarked on the similarity of Culver's blue oval signage to Ford's famous blue oval. 

Obviously, there is no issue here from a trademark infringement standpoint.  Culver's is clearly in the fast food business, and Ford is an automotive company.  No, the intrigue for me was how I started seeing blue ovals everywhere!  First was Carrier:

Then I noticed the Nasonex logo on a note on my desk from a promotional notepad:

Then the one that put me over the edge, the one that has now made me believe that there is a proverbial vast right-wing marketing conspiracy to toy subliminally with my latent positive associations with blue ovals:  Malt-o-Meal.

As if this were not enough, Brad, reading over my shoulder, suggested I take a look at American Idol:

Yikes!  What's more, Brad pointed out that Ford is a major sponsor of American Idol!

Joking aside, isn't it kind of interesting that of these examples, several use a light line to help outline the oval?  From a design standpoint, it seems to enhance the overall shape and clarity of the designs that use it.  I have a secret hope that there is some James Burke-esque "Connections" link in the depths of humanity's art history that might explain the blue oval phenomenon.  I wonder how many marketing surveys exist that show positive associations with blue ovals?  Is this just a case of sensitivity on my part to the phenomenon, or could I find similar phenomena with, say, green triangles?

While you lose sleep (or not) over these questions, feel free to pass the time running Internet searches for the words "blue oval" to see which of these blue ovals might claim to be the blue oval.  (Hints here here here here here and here.)

UPDATE:  The hits keep coming:

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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.

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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.

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= or ?

In March, I commented on the possibility that Victorinox and Wenger, long-time makers of Swiss Army knives, were stretching the Swiss Army brand too far, to the detriment of the overall quality of the goods and the goodwill in the Swiss Army trademarks.  A recent development seems to support my hypothesis. 

Victorinox, which owns Wenger, recently celebrated its 125th anniversary.  While this is a respectable accomplishment for any business, one of the press reports included the following:

In 2005 Victorinox took over its last Swiss rival, Wenger, which was sliding into financial trouble. The brands still trade independently.

"We felt it was important because we wanted to prevent a foreign company taking over Wenger and producing the Swiss Army knife in the Far East or produce other products that could hurt our brand image," explained [Carl] Elsener[, Victorinox president].

Well, it appears that Mr. Elsener's fears may be coming true.  On August 3, Swiss customs officials seized 116 boxes of Victorinox goods (none of them knives) made in China and Taiwan for violating Swiss law governing trademarks and emblems.  (Story here.)  Specifically, the individual who filed a complaint that led to the seizure has argued that Victorinox benefits from using a trademark (see the shield design above) that closely resembles the Swiss flag (above), when the goods are not, in fact, made in Switzerland. 

While Victorinox and its seized goods may yet be vindicated under Swiss law, this is a good "designation of origin" compliance reminder, regardless of where your company is located.

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              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.

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What has a head but no neck, feet but no legs, a perfectly tipped hat but no arms, is 7’10” tall, and induces glee and cavities in people of all ages? The world’s largest dispenser of Pez, of course! A creation of the founders of the Burlingame Museum of Pez Memorabilia (the “Museum”) in Northern California, the enormous snowman-headed Pez dispenser likely appears to most consumers as no more than the ultimate homage to this legendary candy and dispenser and the place they have achieved in the popular consciousness. 

The makers of Pez, however, beg to differ. In late June, Patrafico AG and Pez Candy, Inc., owners of the PEZ trademarks, trade dress and brand, sued the founders of the Museum for trademark infringement and related causes action stemming not only from the founders’ creation and promotion of the Snowman dispenser, but also from the founders’ alleged unauthorized manufacture and sale of unapproved Pez dispensers and related merchandise at the Museum. A copy of the complaint can be viewed here. 

The plaintiff’s filing of this suit raises some crucial questions about the nature of well-known trademarks and trademark owners’ desire to see their brands protected through litigation. First, it is possible that the defendants will raise the defense of nominative fair use, which I’ve blogged about before here. In a nutshell, nominative fair use allows Party A to use Party B’s trademark provided that Party A’s use of the trademark is necessary to identify Party B or its goods and services and Party A doesn’t use the mark to suggest that it is endorsed by Party B. Here, the Museum, which has not only operated for over 14 years, but did so for many years under agreement and with the blessing of the plaintiffs, appears to use the PEZ trademarks and trade dress to refer to Pez candy and Pez dispensers only – not to refer to other types of candy, such as Hershey’s Kisses or Laffy Taffy. Though I’ve never visited the Museum, the Museum’s web site includes a disclaimer of affiliation with the plaintiffs and a note that PEZ is a registered trademark of the plaintiffs. All in all, such use would appear at first blush to pass the nominative fair use sniff test.

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I don't recall what I was doing in January of 2007, but I apparently missed the news that Cisco had sued Apple over Apple's then-newly announced iPhone product.  I actually stumbled upon this accidentally when I recently searched for federal trademark registrations for IPHONE and found only one, and it belongs to Cisco.  (PDF here.)  Your eyes are not deceiving you:  since 1999, IPHONE has been a federally registered trademark for use in connection with "computer hardware and software for providing integrated telephone communication with computerized global information networks," and Cisco is the current owner of this registration.  No joke.  Look here. 

This raises dozens of questions in my mind, of which I will present only a few. 

Q1.  Did Apple conduct a trademark search prior to rolling out the iPhone?

Q2.  If so, what was the legal and business thought at Apple about Cisco's IPHONE trademark registration?

Q3.  What should a company like Cisco do when a junior user adops an identical trademark for use on identical goods, and the junior user's product is wildly successful?

My suggested answers are after the jump.

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In light of the news of Michael Jackson's passing (may he rest in peace), and as we ready for the likely months-long parade of tributes, allow me to make mine early, and then be done.

Despite the corpus of undeniably catchy pop music, standard-setting music videos, and well-recognized dance moves, I submit that Michael Jackson's glove stands out as his most recognizable trademark.  Gossip columnists have called Michael Jackson "The Gloved One," and several of today's news reports are leading with references to his glove and featuring photos of it.  Although it appears that the glove was never a federally registered trademark -- and it easily could have been -- it was undoubtedly a highly distinctive common law non-traditional trademark.  In non-legalese:  If you saw the glove, you knew the entertainer to be Michael Jackson. 

Here is a slightly humorous jab at "the glove" being, like performer that wore it, larger than life:

This is but one of many videos made as a result of the White Glove Tracking Project -- a fascinating endeavor by a bunch of people with way too much time on their hands. 

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With Independence Day just around the corner, perhaps it is time to reflect on some of the freedoms that we enjoy by residing in the land of purple mountains majesty. Freedom of speech? Check. Freedom of assembly? Check. Freedom to use other people’s trademarks, the very basis from which their brands spring, in descriptive and/or non-source identifying ways? Check.

The doctrine of fair use in trademark law can be a great freedom (or a great bane) depending on which side of the doctrine one falls – user or trademark owner. Although there are two branches of fair use – descriptive and nominative – for all intents and purposes, the non-owner user of a trademark may successfully meet the criteria for fair use of a mark provided that he shows he’s not using the mark to identify his source of goods and services.

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On Monday, Karen blogged about her favorite 80’s trademark, the Guess Jeans logo. Many of you will also remember the famous Brooke Shields Ad where she uttered “Do you know what comes between me and my Calvins? Nothing.”  Jeans are big money in the United States with a market of approximately $51.75 billion in 2008 (according to the 3B Bharat Book Bureau website). Popular Jeans are often distinguished by their back pocket and such designs are often trademarked. 

Levi Strauss & Co. (“Levi”) often sues competitors for infringing their famous trademark of the back pocket design that they have been using for over one hundred and thirty years.

Unfortunately for Levi Strauss & Co., a California jury did not find the back pocket of Abercrombie & Fitch’s Ruehl brand jeans to infringe on Levi’s trademark. The jury did not find the two back pockets to be confusingly similar. District Court Judge White apparently agreed and denied Levi’s motion for a judgment as a matter of law that would overturn the jury’s verdict. This defeat will likely not stop Levi from aggressively suing other jean manufacturers to protect its trademark as it has in the past (filing lawsuits against Polo Ralph Lauren, Japanese companies Sugarcane, Samurai and Studio D’Artisian to name a few).

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Three guesses as to who just filed a federal trademark infringement action in Minnesota -- one that also alleges "dilution" of a "famous" mark beginning with the word LIBERTY.

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It appeared Polaroid had a new owner as of last Thursday, but not Patriarch Partners who we posted about before here, so it now appears, it's not over until its over. The latest is here.

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Most of us trademark and marketing types are used to extolling the virtues of a strong brand to our clients – "invest, protect, and build goodwill," we tell them, "and you’ll be on the way to a valuable brand." This philosophy used to hold true even when times were tough – K-mart, Chrysler, and just about any airline you can think of (save Southwest) has gone from bull market to bankruptcy or bailout with their reputations and brands at least intact, if not sparkling.

Will we see well-known, perhaps even famous brands bounce back the same way this time around?

On April 2, a financial subsidiary of American International Group Inc. (aka AIG, the belle of the bailout ball), survived a preliminary injunction hearing regarding its use of the name and mark "SagePoint." The Indiana court found that the plaintiff, Sagemark Consulting, has only a "modest" likelihood of success on its claim. See Lincoln Financial Advisors Corp. d/b/a Sagemark Consulting v. SagePoint Financial Inc. f/k/a AIG Financial Advisors Inc., N.D. Ind., No. 1:09-CV-15RM, 4/2/09.

Putting the facts of the case aside, it remains to be seen just how many entities – whether they receive a lifeline through bailout funds or declare bankruptcy and die to be reborn as something new – will watch their old glory fade and jettison their now scandal-ridden brands for new corporate identities. Equally unknown is whether consumers will view such rebranding as a nod to a new way of doing business or whether they will see only wolves in sheep’s clothing.

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Advertising Age reports of the brand new false advertising lawsuit: Gatorade v. Powerade.

Daily Bread reports on the lawsuit too, here.

For those of you who have been looking for a copy of the complaint, it is finally available, here (pages 1-7), here (pages 8-14), here (pages 15-18), and here (pages 19-22).

More later, but for now the complaint has six counts, including: (1) Federal false and misleading advertising; (2) Federal trademark dilution; (3) Unfair competition under NY State Law; (4) Trademark Dilution under NY State Law; (5) Deceptive Acts & Practices under NY State Law; and (6) Common Law Unfair Competition.

Probably the most interesting claim will be the trademark dilution claims that allege tarnishment, disparagement, and a denigration of the famous GATORADE trademark and trade dress. These claims are reminiscent of the claims brought in the successful John Deere v. Yardman lawsuit from 1994, where the court enjoined an advertisement that put into motion and cast the famous running stag logo in an unfavorable light.

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Even young children understand the power of brands and trademark symbols before they can read.

Years ago, when my children were at the ripe young age of wondering (and maybe caring) what my job was, I'd try to explain the kinds of things a trademark attorney might do. Of course, I didn't tell them some view trademark types as "the most basic figure." 

It took a while to find a message that stuck with them. What finally got through was when I posed a hypothetical question, asking whether they liked eating at the Golden Arches, and what they would think if they couldn't get a Happy Meal there because it wasn't McDonalds after all, but some other restaurant using the Golden Arches too. They were outraged this could ever happen.

So, the Golden Arches can probably stand alone.  

Here is another non-verbal logo that can truly stand alone:

Yes, it functions as an exceedingly strong and probably famous brand and trademark with no further explanation or word mark to support it (and to not undermine my point, I’ll refrain from uttering the four letter brand name firmly linked to it in our minds).

What do you think about this one?

(As you may recall, Dan previously posted on a different topic related to this logo here).

I’d respectfully suggest that when the hang-tag attached to the luggage item bearing this logo is closely supported by a lot of words like SWISSGEAR, WENGER, and FROM THE MAKER OF THE GENUINE SWISS ARMY KNIFE, the logo is having a tough time standing alone and probably needs a trademark support group.

By the way, anyone notice the resemblance to the flag of Switzerland?

How about the International or American Red Cross?

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If you’ve been tuning in to any television programming over the past months, it’s more likely than not that you have encountered a Coke vs. Coke Zero commercial. These commercials cleverly pit representatives of Coca-Cola against Coke Zero because Coke Zero has “misappropriated” Coca-Cola’s flavor in a low-cal drink. The commercials provide entertaining theories from taste infringement to ninja-guided espionage.

For those of you that are of a certain vintage and maturity level, this may have caused flashbacks to the Spy vs. Spy comics routinely found in Mad® Magazine.  For those of you that are unfamiliar, Spy vs. Spy pitted two characters that were identical, aside from clothing color, in short strips that inevitably ended with one character besting the other. Depending on your opinions about the literary value of comic strips, these could either be viewed as mindless cartoons or a subtle commentary on mutually assured destruction.

From an advertising standpoint, I wonder whether Coke fully considered the deeper implications of pitting its products against each other. Is this going to result in undesirable consumer confusion? Is it going to cannibalize sales of regular Coke? Wouldn’t they want to be more clearly marketing this to the “diet” soda crowd? The commercials could just be seen as an entertaining way to create name recognition, but does Coke really need that? Maybe it just seemed like a good idea at the time.

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Mars Candies is not the only company rebranding by including their logo with catchy phrases. Pepsi has jumped on the band wagon, too. Pepsi has gone a step further by also trying to uplift spirits during the difficult economic times. Pepsi’s logo is now turned on its head to become a smile.  This new campaign is also designed to expand Pepsi’s market with the new generation of high school and college students who blog, text and Facebook. In doing so, these young students have a new vocabulary with smiles— :) —and abbreviations such as “LOL” (laugh out loud). Time will tell if this rebranding will capture these new technically savvy students.

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I have now been reminded several times, in several places, that "FedEx Kinko's is now FedEx Office."  Does anyone else think that this is a huge mistake?  I understand that FedEx is a strong, national brand -- even a strong international brand at this point -- but Kinko's is arguably stronger.

This name change is no doubt the product of much study and corporate soul-searching, but as most marketing professionals know, there is an X factor of sorts in a name change that cannot be calculated through market studies and focus groups.  I'm sure I'm not the first to suggest something like this, but a good, strong, retail store brand should be run through something like the five second shouting-up-the-stairs, "Honey, I'm running to _______!" comprehension test.  "Honey, I'm running to Kinko's!" passes with flying colors.  "Honey, I'm running to FedEx Office!" doesn't--it doesn't roll off the tongue in quite the same way, and it is susceptible to an, "I thought you said you were going to the office," misunderstanding. 

Which brings up a trademark strength issue.  As applied to retail office service centers, "Kinko's" is arbitrary and therefore quite strong (according to Wikipedia, "Kinko" was the nickname of Kinko's founder Paul Orfalea).  In contrast, "Office" is largely descriptive as applied to those same services.  Moreover, FedEx is about to sacrifice a brand name with a longer history:  Kinko's dates to 1970, but FedEx started in 1984.  There is certainly an argument to be made that the FedEx brand can expand to occupy the space where Kinko's once stood, and I'm sure some accountant somewhere can show me a bunch of numbers explaining that killing off Kinko's is better for FedEx's bottom line, but it still seems like a marketing mis-step to me.

Here's an interesting sideline question for water cooler discussion:  Presuming that FedEx affirmatively abandons the Kinko's brand and trademark completely (and I do not know that it is doing so), at what point could a third party pick it up out of the virtual garbage can and start using it for competing services? 

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When are trademarks touchy? Ask the good people at Kimberly-Clark®.

 One example might be when they are risky to use because of the prior rights of another. This “touchy” example is not unique to Kimberly-Clark®, of course, it is known to anyone who has been through the naming process, and as Aaron Keller of Capsule has noted, “has the scars to prove it.”

Another “touchy” example might be when 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.

Yet another example of a “touchy” trademark is one that can be a challenge to register, own and protect. Maybe because it falls into the non-traditional category and doesn’t automatically function as a trademark upon first use. Perhaps because tricky “Look-For Ads” are an important key to success. Here, Kimberly-Clark® has experience, too. It won its recent legal effort to obtain a federal trademark registration for “the configuration of the container used to dispense” facial tissue, shown below:

Last, but certainly not least, it appears Kimberly-Clark® is currently working on registering a completely new brand of “touchy” trademark. Literally, a “sensory, touch mark” (a/k/a “tactile mark,” see The Trademark Blog) apparently for “disposable paper hand towels.” Just a couple of months ago, Kimberly-Clark® filed an intent-to-use trademark application for a mark that “consists of a distinctive arrangement of textured alternating dot pattern appearing on the surface of the carton of disposable paper hand-towels.” The claimed mark is shown below:

As I read it, the above tactile pattern is being claimed as a trademark applied to product packaging, not the hand-towels themselves, but we’ll see if that follows.

No doubt, the Trademark Office will offer-up some hurdles, but none that can’t be overcome with some more creative collaboration between the legal and marketing teams at Kimberly-Clark®. Stay tuned and keep all your senses focused on this one!

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They are all around us—skyscrapers, stadiums and event centers with corporate namesakes. Many of us spend the better part of the work week toiling inside of them. Or, we spend hours watching sporting events inside of them. Examples abound throughout most cities, and one only needs to open his or her eyes to be flooded with the examples. Our office building in downtown Minneapolis was recently dubbed Capella Tower, after the online university.

The ability to place a company tag on the most visible of structures raises some interesting questions, for both the owner of the name on the door and the owner of the building. For example, is there a measurable financial impact, either positive or negative, associated with building naming rights? How does attaching your name to a building affect the image or prestige of your company?

In large part, building naming rights require similar considerations as other marketing questions: (1) is it worth the price (ranging from free to millions of dollars)? and (2) does placing your name on a building provide the positive associations that you’re looking for?

I think the jury’s still out on the value aspect. 

The association aspect is also complicated. Sure, a building can be something that calls to mind strength and permanence. (I will admit that Capella Tower makes me think the online university may be a bit more enduring than I originally perceived.) But, I think negative associations are just as easy to imagine. 

For example, Chicago’s most famous building is no longer known as the Sears Tower; it’s the Willis Tower. One needs to question whether this may ultimately have a negative impact on the new namesake, Willis Group Holdings, Ltd., given the resentment of the public and other tenants. Similar, it’s difficult to imagine a positive association arising from banks ponying up cash for naming rights given the current state of our financial industry. 

In the end, I think the takeaway is that with building naming rights, as with all marketing, you need to consider both the positive and negative associations that you could be creating.

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How strong is your brand? The answer may depend on who you ask.

To a marketer, brand strength might be considered inversely proportional to the number and kinds of products it appears on, with the strongest of brands pointing to a single product.
Dan Kelly previously alluded to the marketing concern of “overbranding” here and here.

Al and Laura Ries raise the same concern; overbranding breaks several of their 22 Immutable Laws of Branding:

No. 1: “The Law of Expansion: The power of a brand is inversely proportional to its scope.”

No. 2: “The Law of Contraction: A brand becomes stronger when you narrow its focus.”

No. 10: “The Law of Extensions: The easiest way to destroy a brand is to put its name on everything.”

No. 22: “The Law of Singularity: The most important aspect of a brand is its single-mindedness.”

So, following this learned marketing guidance, a well-recognized pinnacle of brand strength might be the ROLEX® brand for watches; a world famous brand that appears to have resisted the temptation of straying beyond time-keeping devices.

Perhaps at the other extreme, embracing each and every brand extension temptation, in apparent conflict with those “immutable” laws of branding, is VIRGIN®, the brand conceived by Sir Richard Branson and applied to virtually every product and service known to man, from sound recordings to air transportation services, to comic books, to cell phones, to soft drinks, to banking services, to shampoo, to insurance services, to clothing, to playing cards, and on and on.

What might surprise even experienced marketing gurus is that the ROLEX® and VIRGIN® brands both can enjoy great legal strength, meaning each casts a long and wide shadow that may be useful in enforcement actions against a wide variety of diverse and non-competitive goods and services. The impressive legal strength of each may exist, however, for different reasons.

ROLEX® enjoys great legal strength because it consists of a truly famous coined mark that is not only inherently strong and distinctive, but commercially strong and distinctive too. This well-recognized fame protects ROLEX® from dilution and non-competitive uses, even when there is no likelihood of confusion. While the VIRGIN® brand doesn’t necessarily share the same inherent qualities, it nevertheless enjoys broad and strong legal rights too. Why? Because, contrary to the “immutable” branding “laws” identified above, trademark law actually rewards brand owners with broader and greater exclusive rights when the brand is applied on more and more goods and services, because likelihood of confusion is more easily shown.

Moral of the story: If you have a truly famous brand you can enjoy rights of great magnitude, and even prevent dilution of the distinctiveness of the brand, without regard to how many different goods or services are sold under your brand. Without fame, however, your best bet for broad and strong trademark rights is to use the brand on as many goods and services as possible.

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Do you recognize this logo?

Does it make you hungry?  Ok, maybe not.

Let’s try some word associations instead.  I’ll list some words, and you just shout out the first thing that comes to mind for each one:

CHEWNIVERSITY

CHOMPENSATION

SATISFLYING

ANTIHUNGERESTABLISHMENTARIANISM

How’d you do?  The answer to this mystery is after the jump . . .

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Ok, ok, I get it. My last blog post, The Paradox of Brand Protection, was way too long. Just so you know, I do recognize that we live in a sound bite world, but sometimes the educator and storyteller tangled in my DNA get the worst of me, at least when it comes to brevity.

Brevity is a gift. The federal Court of Appeals judge I worked for in Washington, D.C., years ago, had this gift, among many others. He used to describe those who “go on and on” as having no “terminal facilities.” Those of us who worked for him eagerly awaited the meaningful pearls of wisdom he gifted from time to time.

Brevity is memorable. Out of all the words strangers have uttered to me during my life, I have never lost one brief line from a man (a man I couldn’t pick out of a line-up today, by the way) at the public swimming pool some thirty-five years ago: “You’re going to have in-grown toe nails some day.” He was right, and I have never forgotten those exact words.

Brevity is effective. The GOOGLE® home page is a model of brevity. The ALTAVISTA® landing page has migrated in this direction too. Author and master-blogger Seth Godin makes “every word count” a new art form. His blog posts are models of brevity.

Brevity is hard work. It takes significant time, effort, and knowledge to properly distill complex thoughts and ideas into brief, digestible, and meaningful points. This hard work, however, pays dividends in giving the lasting and important gifts of being memorable and effective.

Brevity can have issues. Sometimes it misleads people into believing things are simple, when it is far from the truth. Other times it creates arguments much later about lacking notices or informed consent. So, while brevity is valuable in engaging attention, any further necessary information should be filled in later, as appropriate.

In the trademark world, brevity has issues too. Perhaps most importantly, brevity is more difficult to own, making it much more valuable when you can. Many different companies might vie to boil down their names to the very same acronym. The same is true for top level domains with a limited number of characters. If you haven’t heard before, there is extraordinary value associated with two character top level domains. Quite simply, the shorter the designation, the more interest and competition there is to use and own it.  

For all of these reasons, and probably more, it seems everyone these days wants to truncate their brand. American Express® is AMEX® (never mind that it isn’t the only one), Federal Express® is FEDEX®. Gatorade® is truncating to G (more about that controversial move later). Even law firms, frequently strangers to brevity, are on the bandwagon too. In case you hadn’t noticed, there is currently no shortage of law firms attempting to truncate their multiple alphabet soup names to a single surname. As you might imagine, this can and does lead to trademark fights, even between law firms.

Food for Thought: Will McDonald's® ever attempt to truncate its famous 71 letter mark? Click here to see their trademark registration.  Repeating it in this post clearly would violate my new quest for brevity.

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Thank you, Mr. Eastwood, for all that you continue to do.

Don’t worry, this isn’t the typical, mundane comparison between branding cattle and branding your next product. We can all agree; that metaphor has had its time. No, this is about the importance of the number three, the triad. Much of our scientific, mathematical, political and art world draws from the balance of three. There are many ways to apply three, and in this case, we are simply using three examples of brands in our world, one good, one bad, one ugly.

The Good: It’s hard not to mention Apple when talking about a brand. It may seem like Apple and their identity elements are clean and pristine, but Apple has made history by rebellious behavior and spitting in the face of convention. Is it larger than Steve Jobs? It can be challenging to take on an outlaw persona if it doesn’t come naturally. It isn’t something an organization enjoys, it is often something forced upon it. Just the word, “organization,” goes against the typical outlaw behaviors. Has this organization adopted Job’s rebellious attitude? Has Apple identified a person with the natural outlaw persona? In a recent conversation with a recent past employee of Apple, this individual indicated the team inside has taken on Job’s brand and will carry forward the anti-establishment approach that has brought admiration from both Wall Street and Main Street. We, at Capsule, hope so.

The Bad: From one outlaw to another, Harley-Davidson. Another of our world’s most coveted brands. If you don’t know the history (brink of bankruptcy, many bikes in disrepair and a few loyalists revitalizing it) buy the book. The word “bad,” as we know it, can mean something good, in this case something oh so good. This is a great example for Apple to consider when wondering if the legacy will continue. Who can we thank for such great work on this brand? The ad agency? The management team? The media? They all had a role, but the lead goes to the loyal Harley rider. This rider has the role of “Grand Brand Manager,” and they speak up when something is right and scream when wrong. The lesson for Apple—listen to those who covet you—they will make sure you’re staying in line by ignoring the conventional line altogether.

The Ugly: Those of you who abuse intellectual property, either by ignorance or by deliberate thievery. Consequences will be there, in time. We have actually had people come to our office and say, “yeah, I really liked the work you did for that client, so I copied it, or rather it was my inspiration.” Well, your inspiration was our perspiration. We work hard to design unique, memorable and valuable ideas for our clients. For those of you who hook your wagon onto our tractor, just be sure to know what laws you may be breaking, because it may be a bumpy ride behind the Capsule tractor.

This ugly example “watch for” is my inspiration for this post. It came across my e-mail just the other day, infringing on Harley-Davidson and not even doing it in an impressive manner. If you’re going to break the law, at least do it with style. Maybe, then, you can avoid the tattoo “stupid and ugly” and just get “ugly.”

—Aaron Keller, Capsule

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French customs agents seized 10 tons of counterfeit chocolate bonbons. According to the French customs office, the chocolates were low-quality copycats of the Italian-made Ferrero Rochers. Popular in the U.S. as well as Europe, Ferrero Rochers candies are known for nestling in elegant, individual gold foil wrappers and then inside jewel-shaped clear boxes.

The French seizure of the chocolates underscores the importance of federal trademark registration for U.S. businesses. Obtaining a federal trademark registration enables business owners to work with U.S. Customs to stop the importation of counterfeit goods into the United States and, in many cases, to have the goods destroyed. (Somewhat sadly, this is just what the French customs office did to the 10 tons of chocolate!)

Once upon a time, counterfeiters focused on producing fake luxury goods, such as perfumes and handbags. The French customs office, however, stated that the recent trend shows counterfeiters moving into more pedestrian consumer goods, such as food, medicine and car parts. As a result, businesses both large and small may be targets for counterfeiters from abroad. While obtaining a federal trademark registration won’t necessarily prevent counterfeiters from trying to pass their goods off under a trademark registrant's mark, it may be the best protection in preventing counterfeiters from getting away with their schemes and in deterring them from future attempts.

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I admit it—I have been watching too much TV in this last, incredibly slow, trimester of pregnancy, while my husband and I await the arrival of our bundle of joy.  During one such evening, a commercial came on that started with a floating red umbrella and music, soon joined by Catherine Zeta Jones walking down a street.  My immediate thought was what an odd choice for a Travelers Insurance representative, given her ties to numerous large advertising campaigns.  The 15-second commercial includes no dialogue or use of words on the screen until the very end, where it turns out to be a commercial for Elizabeth Arden (notably, the company I would immediately connect with the red door).

The red umbrella is an icon and has been for decades.  I mean, don’t we all wonder: “aren’t we better off under the umbrella?”  The company claims the red umbrella was first used in 1870 when it appeared in a newspaper advertisement and formalized as a legal trademark in 1959.  Of course, Travelers also owns numerous federal trademark registrations for the umbrella, including a registration for the red umbrella logo with a claimed date of first use of 1961. To prove dilution, all that is required is that use of a “famous” mark by a third party causes the dilution of the “distinctive quality” of the mark.  Thus, even though insurance services and cosmetics are unrelated, Elizabeth Arden’s use arguably dilutes the iconic red umbrella.  As much as I love Elizabeth Arden’s products, perhaps they should stick with the red door.

If pregnancy brain can make the immediate connection between the red umbrella and Travelers Insurance, I would say most people in the country would make the same connection, particularly given Travelers' recent advertisements.

It seems to me the Travelers' red umbrella is the type of famous mark the Federal Trademark Dilution Act was meant to protect.

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Do you recognize this trademark? 

How about this one?  

Any guesses about what sources these represent?  The first is a trademark for Victorinox AG.  The second is a trademark for Wenger NA, Inc.  Do either of these remind you of anything else?  How about a Swiss Army knife? 

I clearly remember receiving my first Swiss Army knife as a boy.  A couple of years ago, I was shopping for a new briefcase.  I saw one with the Wenger logo, and it caught my eye.  A tag on the bag bearing the mark read, "WENGER:  Maker of the Genuine Swiss Army Knife."  I had a positive association with the Swiss Army brand from my youth, so I bought the bag.  The strap broke within the first year of use, which did not make a favorable impression on me.  Subsequently, I began seeing the Wenger and Victorinox marks elsewhere -- luggage, watches, flashlights, shoes, clothes.  Coupled with my briefcase experience, the sheer ubiquity of these marks on goods further and further afield of knives makes me think that Swiss Army products are not very high quality products. 

It could very well be that my lousy briefcase strap was an anomaly, but it could also be that the quality of Swiss Army branded goods are not particularly high.  The point is that consumers will associate their experiences with actual goods and services with particular brands and trademarks, and maybe related brands and trademarks. 

A history of the Wenger and Victorinox companies can be found here. 

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