Duets Blog : Creativity and the Law: DuetsBlog

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

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

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

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

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

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

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

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

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

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

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

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

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

What do you think?

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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?

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

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.

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

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

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

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

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

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

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

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

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

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

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.

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

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?

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

In November, I wrote about how Gatorade’s 2009 re-branding as G has been a complete failure. G was an ill-conceived approach to slowing sales in 2007 and 2008. It damaged brand equity, confused consumers and didn’t reverse the trend of falling unit sales.

In the final paragraph of my last blog, I noted that PepsiCo CEO Indra Nooyi said the company is planning a “massive Gatorade transformation” for 2010. I recommended that Gatorade should follow the model of Coca-Cola when they decided to retire New Coke. By doing this, Coca-Cola admitted their mistake and moved on by hitting the reset button on their brand.

Initial details of PepsiCo’s 2010 “massive Gatorade transformation” have been made publicly known here, here and here. Gatorade’s brand strategy for 2010 seems mediocre. Although they are making some positive changes, other moves indicate that they still don’t understand how to successfully market their brand.

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

John Reinan provided yesterday a marketer's perspective that questioned the value of coined trademarks. In my experience, as a trademark type, one place on the spectrum of distinctiveness where both trademark and marketing types can have their cake and eat it too, is the delicious category of suggestive trademarks.

From the legal side of the coin, suggestive marks are immediately protectable and generally enjoy the additional benefit of their inherent strength. On the marketing side of the coin, suggestive marks communicate something about the goods (but not as directly or immediately as descriptive marks do), so the marketer need not start from scratch in educating the consumer, as one must do with coined marks.

For some additional posts discussing the spectrum of distinctiveness, the important line between descriptive and suggestive trademarks, and related issues, see here, here, here, and here.

What is often forgotten about the fine line in differentiating between descriptive and suggestive marks is the subjectivity of making the determination. In practice, this can be a rather fuzzy sort of bright line. What is also frequently forgotten is how narrow the rights can be with some suggestive marks -- those said to be highly suggestive or very close to the merely descriptive border.

A stroll down the baking aisle in your local grocery store provides a nice place to illustrate both points. For example, when shopping for cake mix it is hard to miss the apparent importance of "moist" plus a superlative as key selling points -- "moist" being a merely descriptive term that immediately and directly describes a desirable characteristic of a finished cake. Indeed, Betty Crocker has Super Moist, Pillsbury has Moist Supreme, and Duncan Hines has Moist Deluxe:

These three different brands compete with one another on the very same store shelves and the fact that they peacefully coexist and compete directly without any apparent consumer confusion (despite their similar names) helps illustrate the point of how narrow in scope some suggestive trademark rights can be.

On the point about subjectivity, as the links above demonstrate, you might be surprised to learn that the Super Moist mark was permitted registration by the U.S. Trademark Office as a suggestive and inherently distinctive trademark. Whereas, the Moist Supreme and Moist Deluxe marks were considered merely descriptive, and the U.S. Trademark Office required evidence of acquired distinctiveness (a/k/a secondary meaning) before registration was permitted on the Principal Register.

So, where descriptiveness ends and suggestiveness begins can often depend on who is asked to apply the legal test. Perhaps that is why the U.S. Trademark Office is supposed to approve marks as suggestive, when in doubt. Can someone explain the doubt in favor of Super Moist, and the lack of doubt with Moist Supreme and Moist Deluxe? Because I'm not feeling the need to exercise much imagination, thought or perception to appreciate that each brand communicates a really, really moist cake.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Yikes.

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

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

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

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

Perhaps the better question is: Does the strategy work?

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

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

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

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

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

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

Does that seem difficult?

I don't think so.

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

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

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

Tough questions all.

But sadly, I think the math answers them.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Answer below the jump.

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

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

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

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

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

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

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

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

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

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

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!

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

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

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

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

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

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

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

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

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

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

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

Gatorade’s efforts to re-brand as “G” have been a dismal failure. It seems as if the brand management staff at Gatorade consumed a few too many cold beverages while making this decision, and I’m not referring to refrigerated Gatorades.

The history of the G re-brand has its roots in 2007. Unit sales were flat in 2007 compared with 2006, after three years of double digit growth, according to market research firm Information Resources Inc (IRI). More poor results followed in 2008 despite product innovations and brand revitalization efforts (here and here).  In January 2009, Gatorade started the G re-brand. The G re-brand has done nothing to improve Gatorade’s bottom line. In fact, it has harmed the bottom line.

The decision to modify a brand name should not be taken lightly. A brand name communicates the essence of the brand to consumers. According to Rick Baer, Professor of Marketing at Thunderbird School of Global Management and former Global Brand Manager with Colgate-Palmolive and Dial Corporation, a brand name “should conjure up all the associations and images you want for your brand”. Does G accomplish that? The answer is a resounding no.

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

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

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

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

What is your favorite touchmark anyway?

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

VS.

Remarkably, this is not a new promotion for World Wrestling Entertainment.  No, a few outlets reported last week that WWE has opposed The American Wine Foundation's application to register the trademark SOMMELIER SMACKDOWN for use in connection with "Entertainment services, namely, conducting contests in the field of food and wine pairing; Entertainment services, namely, wine and food tastings at which attendants taste food and wine pairings to determine which wine expert better pairs food and wines."  For those pop-culturally challenged among you (as I sometimes am), WWE owns several registrations for SMACKDOWN for use in connection with entertainment services, namely, wrestling events. 

As reported at SFGate, a spokesman for WWE claims that WWE coined the term "smackdown."  That's a big claim, and one easily exploded by reviewing the voluminous evidence produced by the Trademark Office in the course of WWE's prosecution of an early application for SMACKDOWN demonstrating widespread use of the term in connection with sports that predates WWE's first use of the term (1999) and its claimed date of coining (1998, by Dwayne Johnson, a.k.a, "The Rock").  WWE dodged the descriptiveness issue by arguing in the alternative that it had acquired trademark distinctiveness in SMACKDOWN as applied to its entertainment services.

This promises to be an interesting case, as there appear to be factors that favor both sides.  For WWE, the SMACKDOWN mark appears fairly strong, despite its descriptive roots.  For the Wine Foundation, I suspect that it will be able to make a good case that its entertainment services appeal to an entirely different consumer market than WWE's entertainment services.  (WWE has also argued that the Wine Foundation's mark dilutes its SMACKDOWN mark--an issue that also may have legs.)  For the time being, we'll watch to see if this match goes more than one round. 

*LET'S GET READY TO RUMBLE® is a registered trademark of Ready to Rumble, LLC.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Have you ever seen a bottle with a top that resembles this image?  Do you associate it with a single source?  Do you associate it with a particular product?  If so, which source or product?  Would you think that the product pictured below comes from the same source?

    How about this one? 

These are the basic facts in a lawsuit brought last month by Maker's Mark Distillery against Jose Cuervo International and related entities.  Maker's Mark owns a federal trademark registration (more than one, actually) on its wax seal for use in connection with whiskey.  Jose Cuervo sells the bottles pictured above as part of its Jose Cuervo Reserva de la Familia line of tequilas.  While news outlets reported this new case last month, and indeed a new case was filed then, these two parties have been in litigation since 2003 on the same issues.  In the 2003 suit, the Cuervo parties have counterclaimed to cancel the Maker's Mark trademark registration, in part on the basis that the wax seal is functional. The parties are currently briefing a motion for summary judgment brought by the Cuervo parties, so there may be a disposition within the next several months.

It is not presently clear to me how the two lawsuits are related.  In any event, these suits, if tried to published decisions, will add a helpful data point to the body of non-traditional trademark law.  We'll keep you posted.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

UPDATE: Here.

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

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

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

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

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

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

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

Until they sued.

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

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

Ick.

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

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

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

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

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

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

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

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:

• Email This
• Print
• Comments (7)
• Trackbacks
• Share Link

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

              VS.         

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

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

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

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

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

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

Sometimes, when times get tough, a business just cannot afford all the expensive branding, design, marketing, and legal consultants . . . or maybe a business has cornered a market and can simply dispense with all but the most necessary of elements:

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

Mars recently introduced a new candy bar, Fling, marketed exclusively to women, advertised as “an un-regrettably indulgent new product for women”.  The website is predominantly pink and is littered with very stereo-typical one-liners meant to be sexy such as “you never know when you’ll want to have a Fling” and “so tear it open and sneak in a quickie.”   The packaging is shiny pink and silver with the tag-line “Naughty, but not that naughty.” 

The marketing campaign is nothing more than a concoction of cliches directed toward women simply because it is a low calorie candy bar, touted as under 85 calories per stick.  Interestingly, since there are two sticks in a package, Fling has about the same number of calories as other, gender neutral, candy bars such as Nestle's Chunky Bar (190 calories; I don’t believe Nestle was thinking about marketing directly to women when it named this candy bar), Nestle's 100 Grand Bar (190 calories), or Mar's Milky Way (approximately 220 calories).

I can’t decide whether this marketing campaign is smart or insulting.  While the company claims it is for women, the target audience is obviously younger women (late teens - 20’s) who may not be as insulted as slightly older women (lets say 30's).  In researching this blog, I did find numerous comments from women who were insulted, such as www.wonderbranding.com, (Fling blog) and Creative Skirts.  Mars is marketing this new product as a guiltless fling.  However, like any other fling, you don't realize how bad it is for you until its too late. 

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

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

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

Cheers!

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

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

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

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

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

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

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

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

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

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

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

I will assume that by now you have heard of the Crunch Berries lawsuit that was dismissed about a month ago in federal district court in California.  If not, you should read this post about it at the blog Lowering the Bar.  (The update is also quite humorous.)  The brief summary is that an individual filed a class action lawsuit against Pepsico, parent of Quaker Oats Company, under California's "Unfair Competition Law," among others, asserting, in essence, that Cap'n Crunch's Crunch Berries fraudulently or deceptively suggests that it contains real fruit, which it does not. 

On the serious side, this is only the most recent in a line of cases brought by the same group of attorneys who are apparently looking to strike it rich in tobacco-esque style litigation targeting a number of products that were the subject of an April 2007 study by the Prevention Institute titled, "Where's the Fruit?"  (H/T On Point.)  The gist of the argument is that the products mislead customers by suggesting that the products are more healthful than they really are. 

Under U.S. trademark law, a trademark can be refused registration if it deceptively misdescribes the goods for which it is registered, but CRUNCH BERRIES, FROOT LOOPS, BERRY BERRY KIX, FRUITY CHEERIOS, and JUICY FRUIT are all federally registered trademarks, and all were found by the Prevention Institute's report to contain no fruit.  It had not really occurred to me until I considered the Crunch Berries case, but the line between suggestion and deception in a trademark is not necessarily easy to draw:  a mark that is suggestive to one consumer may be deceptive to another.  While all of the above marks seem to fall on the suggestive side of the line to me, these fruit suits show that some think otherwise.  In today's sometimes absurd litigation environment, the line between suggestion and deception is one that marketers and brand managers cannot ignore. 

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

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

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

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

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

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

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

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

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

Josh Brooks of packagingnews.co.uk reports, here, that Coca-Cola has succeeded before the Paris Court of Appeal in banning the production and sale of Yoplait's Dizzy brand "milk-based fizzy drink." Coca-Cola's winning Blak bottle is shown below side-by-side with the losing Yoplait Dizzy bottle:

It appears from the news report that the French success was based purely on the distinctive shape of Coca-Cola's Blak bottle. Putting the bottle shapes aside, if one were considering the non-shape visual aspects of trade dress, one might be tempted to call the Coca-Cola Blak beverage, night, and the Yoplait Dizzy beverage, day, since that is about how much they otherwise share in common.

It will be interesting to see how this ruling impacts (if at all) Yoplait's apparent intention to launch its Dizzy beverage in the U.S. marketplace. Yoplait's word mark application for Dizzy was just issued a Notice of Allowance by the U.S. Trademark Office last month, so unless Yoplait requests an extension of time to submit evidence of use in the U.S., we might see the U.S. version of the Dizzy product by November 2009, if not sooner. Interestingly, Yoplait abandoned a bottle shape trademark application a couple of years ago, here, having a virtually identical identification of goods, and it was initially refused registration on functionality and non-distinctiveness grounds, but not on confusing similarity to Coca-Cola's distinctive bottle shape trademark.

Hat tip to JoAnn Hines, The Packaging Diva, on the Josh Brooks article. 

By the way, DuetsBlog readers should check out www.PackagingLaunch.com, a new and interesting site launched by JoAnn, "Where Packages Are Judged By the People Who Buy Them" and a slate of Guest Authors with various backgrounds and experience, including yours truly.

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

My wife and I recently received a gift of chocolate, called the Marital Bliss Bar, from Bloomsberry & Co.  The packaging is quite humorous:

Bloomsberry's other chocolates are also in generally humorous packages, with some bordering on edgy, even racy -- all can be viewed at its website. 

Humor in marketing and product packaging carries some risk, because taste in humor is like taste in most everything else -- it will vary from person to person.  For instance, this image of a bull does not make me want to dine at the advertised steakhouse, but I could imagine the pictured billboard being an effective ad for some audiences.  (And while I will concede that my criticism may generate more impressions for the ad, isn't it a bit ironic that high quality beef comes from steers, not bulls?)

This exercise leads me to conclude that I am likely a member of the former company's target market, but not the latter's.  Which one are you in?

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

I have a good friend who, on point of principle, eschews endorsing large corporations.  Consequently, when he comes to possess t-shirts that bear corporate logos, he wears them inside out, so as to defeat the nominal marketing power they may have.  He gets a bit of a thrill knowing that he will not be a pawn in that game.  I once ran some errands with him in such a condition, and just about every person that saw him told him that he was wearing his shirt inside-out.  To each one, he briefly preached his gospel, "No corporate sponsorships, ma'am!" 

He hasn't converted me yet (and he may be a trendsetter), but his antics are an apt background to those who are at the opposite pole:  consumers who voluntarily create marketing materials for major brands.  The Internet has amplified this considerably.  I recently hit upon an illustrative case:  Johnsonville Sausage.  About a month ago, I saw a billboard with an enlarged photo of some bratwurst cooking on a grill with a simple white word overlay:  TASTYVILLE.  I salivated like Pavlov's dog.  Just last week, I saw a second, similar billboard, and the word was SUMMERVILLE.  Then it occurred to me:  I bet the Johnsonville website is carrying this theme as well.

Not only is the Johnsoville website playing off of this theme, but the company is conducting a contest in which users can create their own _______VILLE advertisements.  I realize that this marketing concept is hardly novel, but it really struck me how far technology has enabled us to go when it comes to customer-created advertising. 

Of course, art has always imitated life, and the videos here and here really prove it.  Move over YMCA!

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

Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen. 

But what about when a branded prop dominates the ad or the identifiable trademark is another's product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another's commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz' ads, continue reading after the jump.

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

I submit that when a multi-million dollar study finds that one of the “core aromas” of one of the top-selling wine varietals in the world consists of one of the foulest smells known to man AND a winery seizes the day to incorporate said core aroma into a distinctive brand name, there may very well be no surprises left in the branding world.

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

What do you think, infringement or not?

vs.

How about these?

vs.

No, I did not just learn how to use Photoshop.  If you live east of the Rockies, you likely know Hellmann's mayonnaise and Edy's ice cream.  If you live west of the Rockies, you can't buy either Hellmann's or Edy's.  Instead, you can buy Best Foods' mayo and Dreyer's ice cream.  (Check out the websites--they resolve to different domains for each brand, but are otherwise completely parallel.)  To my knowledge, Unilever, who owns the Hellmann's/Best Foods brands, has no relation to Dreyer's, who owns the Edy's and Dreyer's labels.  Each company splits these brands at the continental divide, and each has a different story as to how this came about (one here, the other here). 

Moral:  the United States is a pretty big country.  If through merger or consolidation a company picks up a regional brand with a loyal following, it may pay to have a split personality. 

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

There is no question that attempting to own "hot" or versions of "hot" appears to have great value and importance in the marketing world. So, how many original, unique, and memorable ways are there to communicate spicy "hot" anyway?

As to memorable, perhaps painfully memorable, Paris Hilton apparently sells designer clothes under her "That's Hot" brand, and judging from her pending federal trademark filings, she still has an intention of expanding her "That's Hot" brand to cell phones and alcoholic beverages, among other items, but apparently not buffalo chicken wing sauce or potato chips, thankfully.

Otherwise, it really might distract from a recent pair of trademark food fights in Minneapolis, both involving chips claiming to be "hot" too. You may recall the "Red Hot" Chip Fight between Barrel O'Fun and Old Vienna discussed here, that was quickly bagged here.

So, here are the current contenders in the most recent "Blazin' Hot" trademark food fight:

   Vs.   

A copy of the Buffalo Wild Wings trademark infringement complaint against P&G and Pringles is here.

The most interesting aspect of the complaint, from a trademark strategy perspective, is the fact that Buffalo Wild Wings did not bring a claim for infringement of a federally-registered trademark (Section 32 of the Lanham Act). Instead, it only relies on Section 43 of the Lanham Act (designed to protect unregistered trademarks) and a pair of Minnesota state law causes of action, even though it refers to owning some federal trademark and service mark registrations for and containing the term BLAZIN'. Perhaps Buffalo Wild Wings is attempting to insulate them from attack or challenge by P&G, since none is five years old yet or incontestable. Stay tuned to learn whether P&G turns up the heat on this dispute and counterclaims for cancellation anyway.

Now, as to the "original and unique" point raised above, it is worth asking, who else appears to have a stake in "Blazin" hot trademarks for food products? Uh, let's just say, more than a few . . . .

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

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

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

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

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

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

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

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

As you may recall, three weeks ago, I posted about what appeared to be the makings of a "Red, Hot, Chip Fight" between Old Vienna and Barrel O'Fun Snack Foods, over Barrel O'Fun's use of "Red Hot Ripple" and other elements of trade dress claimed by Old Vienna (see here for my prior post and a side-by-side comparison of the potato chip bags).

As you may also recall, I invited you to "stay tuned" to "see how this fight progresses."

Folks, this one didn't even last the first round, almost as soon as the opening bell sounded, the case was voluntarily dismissed by Barrel O'Fun before Old Vienna's answer was due.  Here is a copy of the Order of Dismissal.

I'm guessing the parties worked something out to their "mutual satisfaction" -- if anyone knows for sure, ring the bell, please.

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

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.

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

The makers of Gatorade® apparently like to engage consumers by asking questions. They used to ask, "Is it in You?" The "it" being Gatorade®, of course. Most recently, Gatorade® has embarked on a massive teaser ad campaign -- apparently to re-brand Gatorade® -- asking, "What is G?" -- a question that begs answering in the mysterious ads.

You might be interested to know that trial attorneys are taught not to ask questions -- at trial -- if they don't know the answer. A related and good rule of thumb for marketers might be: Don’t ask a question, if you don't know and -- perhaps more importantly -- if you can’t own the answer.

This may be especially good advice when competitors and other sellers of related products are able to truthfully answer the question posed in their favor, and "steal your thunder," or perhaps "lightning," as the case may be. For example, just picture the makers of these beverage products collectively raising their glasses in answer to Gatorade's bold question "What is G"?

G by G PURE ENERGY already is a federally registered trademark for an energy drink.

G already is a federally registered trademark for bottled water too.

G is a trademark approved for publication by the U.S. Trademark Office for soft drinks.

G3 is a federally registered trademark for fruit juice, not to be confused with Gatorade's G2.

G5 is a federally registered trademark for soft drinks, again, not to be confused with G2.

G JUICE already is a federally registered trademark for sports drinks and other beverages.

G is a proposed trademark allowed by the U.S. Trademark Office for fruit drinks.

G ENERGY MADE FOR WOMEN is a federally registered trademark for fruit drinks.

ELIXIR G is a federally registered trademark for non-alcoholic cocktail mixes.

"EROTIC G-SPOT DRINK" is a federally registered trademark for sports and isotonic drinks.

ENERGIZING GIMME A G has been approved for publication as a trademark for energy drinks.

G GLEUKOS is a federally registered trademark for sports drinks.

Gee Whiz . . . and there are more Gs where these came from, but I think you get the point.

For more of a marketing critique of Gatorade's alpha-truncation-re-brand, continue after the jump.

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

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

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

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

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

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

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

Minneapolis is the chosen venue for a brand new legal food fight, one involving potato chips.

Putting aside for the moment that the proper test of trademark infringement is not based on a side by side comparison of products (unless, of course, they are encountered that way in the real world, as opposed to the court room) because consumers are believed to have imperfect recollections of the details of brands and marks, what do you think about the allegation of likely confusion between the two packages shown below?

Ding, ding, ding. Ladies and gentlemen, in the white bag, standing in the right corner, sporting the Old Vienna® brand, and the federally-registered Red Hot Riplets® mark (disclaiming only the term “Hot”), is the fighter claiming infringement. In the red-brick bag, standing in the left corner, sporting the Engine Co. 51 brand, and the words Red Hot Ripple, is the “fire” fighter claiming it has done nothing wrong, and feels so strongly, it wants to prove so in court.

To read the spicy cease and desist letters from Old Vienna® that triggered the lawsuit, see here.

To read a copy of the federal complaint filed in court by Barrel O’Fun Snack Foods, see here.

To see how this fight progresses, stay tuned here on DuetsBlog.

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

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 . . .

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

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.

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

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.

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