A Frisbee By Any Other Name?

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

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

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

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

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

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Another Marketing Pitfall: How to Crush a Smashing Brand Name & Trademark

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?

What a Crock, Pot That Is . . .

We're not talking the foamed footwear Crocs® that Randall Hull wrote about in his What a Croc! post from a couple of weeks ago. Instead, we're talking slow cookers -- on this snow-capped Valentine's Day in the Twin Cities.

Every once in a while a stroll down the grocery store aisle leaves me surprised when I spot a federal registration symbol next to a word that I thought was a generic term for the goods or services in question. Today was such a day, when I noticed Sunbeam's Crock-Pot® The Original Slow Cooker appliance on the store shelf. Apparently I'm not alone in my surprise at the trademark status, given Wikipedia's acknowledgment that Crock-Pot is a trademark "often used generically in the USA" -- and Slo-Cooker is a trademark "often used generically in the UK."

It appears the Crock-Pot® trademark was originally registered back in 1972, and a couple of years ago federally-registered protection for the trademark was extended into a number of different classes of goods at the U.S. Trademark Office for a variety of different products, including food, and some cooking accessories. Last June, this logo was federally registered by Sunbeam, but it specifically disclaimed any exclusive rights in the descriptive phrase "The Original Slow Cooker":

I'm left wondering whether this is like the Rollerblade example, where it took the owner of the Rollerblade brand an entire decade to battle genericide by developing a commercially acceptable generic term (in-line skates) to couple with the brand.

Here are a few questions for marketing types to ponder and discuss: If you're Sunbeam, owner of the federally-registered Crock-Pot® trademark, do you care if retailers and your direct competitors call their competing products a Crock-Pot too? What about Search Engines selling Crock-Pot as a keyword, do you care about that? If so, how much do you care? Is it important enough to spend dollars on stopping these kinds of actions?

Just so no one is left out, here, for you trademark types out there, what steps would you take to avoid having the Crock-Pot® trademark invalidated on genericness grounds?

Same drill for the Bundt® trademark that Dan wrote about prior to the holidays.

Dialing in on Trademark Abandonment?

What do these photos have in common, besides the fact that they are both from Roadsidepictures' beautiful photostream collection posted on Flickr?
 
Abandoned by Roadsidepictures  Dial Soap, 1960's by Roadsidepictures.
 
Well, one might say, they both illustrate a form of abandonment, an abandoned building on the left, and apparently some abandoned intellectual property in the form of a clock logo and 'round the clock protection tagline on the right (the package of vintage Dial soap apparently was purchased in Sandy, Utah, as late as 2003).
 
With respect to trademark abandonment, at least under U.S. Trademark Law, it is often said, a trademark owner must "use it or lose it." Apparently in that spirit, over the last couple of decades or so, Dial has permitted its various U.S. Trademark Registrations containing the clock logo and 'round the clock protection tagline to become cancelled or to expire, here, hereherehereherehere, and here.
 
If a trademark owner discontinues use of a trademark with an intent not to resume use of the mark, at that very moment, the trademark is immediately abandoned (putting aside the potential issue of "lingering goodwill"). Since U.S. Trademark Law appreciates (or at least anticipates) that there is likely to be debate over the "intent not to resume use" element, legal abandonment is presumed after three consecutive years of non use.
 
A couple of other important points about trademark abandonment are worth noting.
 
Under U.S. Trademark Law, if a trademark registration has been abandoned or permitted to lapse or expire, it doesn't necessarily mean that the underlying common law or unregistered trademark rights have been abandoned -- if the mark remains in "use" there is no trademark abandonment, only relinquishment of the registration. Keep in mind that "use" means "bona fide use" of a trademark "made in the ordinary course of trade, and not made merely to reserve a right in a mark."
 
In addition, trademark abandonment occurs "[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." So, if the trademark owner does something (like misuses its mark) or fails to do something (like enforce its rights against infringers) that causes the mark to become generic or otherwise lose its significance as a trademark, there is legal abandonment of trademark rights
 
So, what often happens in the marketplace after a trademark is abandoned?
 
Others tend to view this as an open door to adopt the same or similar marks: 
Zest Ocean Energy Body Wash

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

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Kleenex® Not Wanting to Blow It: Some Steps to Avoid Trademark Genericide

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

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

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

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

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

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

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

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

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

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

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

From Trademark to Tin God: Long Live the King?

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.    

   

Genericide Watch: Frisbee, Hula Hoop, Slip 'N Slide, and Super Ball

Wham-O, Inc. has had its share of hits over the years, achieving "household name" status (my opinion) with an impressive list of trademarked (I am not afraid to use it as a verb) products:

  • FRISBEE for "toy flying saucers for toss games"
  • HULA HOOP for "plastic toy hoops"
  • SUPER BALL for "sport and toy balls"
  • SLIP 'N SLIDE for a "flexible plastic water slide"
  • SILLY STRING for "plastic stream material or composition and toy and novelty pressurized dispenser of same"
  • HACKEY SACK for "footbags used in a kicking game"

(As an aside, its SUPERELASTICBUBBLEPLASTIC trademark for "viscous toy balloon making composition suitable for dispensing from a sqeeze tube" has sadly gone by the wayside.)

Beginning in July of 2008, however, Wham-O has found itself playing defense to four petitions to cancel its registered trademark rights in some registrations for the first four of these marks, all brought by Manley Toys Ltd., a company based in Kowloon, Hong Kong.  Earlier this year, Wham-O countered this move by filing a lawsuit in federal court seeking the court's declaration that its trademarks are not generic.  In legal jargon, this is known as a "declaratory judgment" action.  Last month, the court dismissed Wham-O's request, and Wham-O is now appealing that dismissal. 

The feud between Wham-O and Manley goes back several years, and good histories have been reported in the San Francisco Chronicle here and the ABA Journal here.  We are keeping tabs on it to monitor the fate of these registered trademarks. 

For additional background on the importance of good generic names to use with trademarks, see Steve's Rollerblade post.  Our previous posts relating to genericide can be found here

 

When You Need To Enforce Your Trademark Rights, Forget It (Maybe)

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

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

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

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

To Google® Or Not To Google®

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

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

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

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

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

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

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

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

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

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

Mark Prus, NameFlashSM

Just Verb It? Part III: Testing the "Slippery Slope" of Using Brands as Verbs

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

      

 

 

 

 

 

 

 

 

 

 

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

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

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

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Internet Surveys -- Powerful Yet Perilous

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

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

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On Trademark Enforcement & Protection: Is Twitter on Target or Off the Mark?

Mark Image

Brand managers and marketers often wonder about the risks and consequences of not enforcing or protecting their trademarks from infringement. A shooting target formed by a series of concentric circles is the best graphic I have found to illustrate the legal answer to their frequent question.

Judging from the robust criticism Twitter has received about its lax or laissez-faire approach to trademark enforcement, the Twitter folks have never seen (or perhaps they have chosen to ignore) the shooting target graphic illustration. Distilling these criticisms to their essence, basically there are more than a few folks out there asking Twitter: "What are you doing?"

The irony of this is hard not to find amusing, given how Twitter explains its reason for existence this way: "Twitter is a service for friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?" For Twitter, only time will tell how "simple" the trademark enforcement "question" is for itself to answer.

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Just Verb It? Part II: A Legal Perspective on Using Brands As Verbs

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:

                                                            "Do You Yahoo!?" Bumper Sticker

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.

Just Verb It? A Legal Perspective on Using Brands As Verbs: Part I

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

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

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

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

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Unlawful to Rollerblade?: An Important Lesson in Product/Service Naming

This kind of sign is all over the place. They are readily available for sale on-line too, see here, here, and here. In fact, a similar one is posted on every level of at least one parking garage in downtown Minneapolis. What does it mean to you? How about to the Rollerblade® brand?

For example, would you be “o.k.” skating in the vicinity of the sign wearing, say, K2® brand in-line skates, or perhaps, Nike® Bauer® in-line skates? Would the owner of the real estate who posted the sign agree? Would Nordica® agree, as the owner of the ROLLERBLADE® mark? Doubtful.

Similar misuses of the ROLLERBLADE® brand appear in city and township ordinances and in meeting minutes across the country. Some make “unlawful” the operation of a “skateboard or rollerblade” except on sidewalks. Others forbid “rollerblading (which is the same as inline skating).” Yet others seem to only forbid “rollerblading” when there is a “dog in tow.” Ah, right. Some progressive cities have had the foresight to forbid not only “rollerblading,” but “roller skating” too, closing the potential branding loophole defense, for us trademark types.

How does this happen? Seth Godin’s recent blog post “Where’s the Baxter?” may have some application here, perhaps with a little embellishment by yours truly. Mr. Godin correctly reminds us of the importance of creating a “name” for a new product, especially when “you make something remarkable,” or “its something that hasn’t been done before,” basically, when “you’ve created something worth talking about,” and it may disappoint others to learn when they like the name too, it “is already taken.” When something is “taken” in the naming context, we’re talking about brand names, not generic names. The former can be owned, the latter cannot. So, brand names seem to get the most attention prior to launching a revolutionary new product or service.

Getting much less attention, and deserving far more, is the need to create an acceptable generic name too, especially when the new product is truly “remarkable,” and appears headed for creating a new category. For example, had Rollerblade® adopted, embraced, and promoted “in-line skates” as the generic name for the category it “pioneered” in the early 1980s, it seems unlikely the misuses would be as prevalent as they are today. How do we know it didn’t take these early steps? Besides my imperfect consumer recollection from the decade of the 1980s, I rely on the clunky patent-like generic product description set forth in the original ROLLERBLADE® trademark registration (1985), covering “boots equipped with longitudinally aligned rollers used for skating and skiing.” Uh, not a very consumer-friendly sound-bite. As far as I can tell, it wasn’t until the close of the 1980s that the term “in-line skating” or “in-line skates” began to appear, at least, in Rollerblade® trademark filings, see the 1990 U.S. registration for TEAM ROLLERBLADE®. A decade is a lot of history to erase.

Touchy Trademarks

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

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

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

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

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

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

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