Duets Blog : Creativity and the Law: DuetsBlog

The Los Angeles Times reported last week on an interesting nugget – the Missile Defense Agency’s new logo sports a blue O, a red-and-white swooping swirl, and white outlining to set the image off from a blue background. 

The logo looks like this:

Remind you of anything? Say, this:

The LA Times article remarks upon a “perceived similarity” between the two. However, I submit that what is more interesting than this “perceived similarity,” is what the blogosphere is discussing as the perceived message behind the MDA’s new logo. An official at the MDA, Richard Lehner, states that “[t]he symbolism of the design is that it shows missile defense as a global system to defend the US, our deployed forces and allies and friends, as depicted by the path of an interceptor missile and a flash (not a star) denoting a missile intercept.”

The Washington Post, on the other hand, asks “Is the Missile Defense Agency's logo Obama-meets-Islam?”, pointing out that “conservatives’ charges that a logo being used by the Pentagon’s Missile Defense Agency looks very much like a fusion of the Muslim crescent moon and star and the Obama campaign logo. Some folks even detected a similarity to the Iranian Space Agency logo.”

What I find most interesting is that, according to Mr. Lehner, the MDA began using the logo to its materials three years ago to save costs over using its previous logo. I couldn’t find any information on when the Obama logo debuted, but I’m wondering whether the blogosphere has considered the possibility that it is the Obama logo that is newer than the MDA logo. 

What do you think?

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

A few months ago, my colleague Karen Brennan blogged about the Sci-Fi Channel’s name change to SyFy and removal of its Saturn logo. As Karen explained, part of the reason Sci-Fi/SyFy company heads wanted to change the name was to update the brand to appeal to a wider audience. 

Now MTV is “changing” its logo as well. To what, you ask? MTV. MTV? MTV. 

MTV isn’t changing the hefty, 3-D “M” or the graffiti-esque “TV.” MTV is simply doing away with the tagline “Music Television.” 

Rolling Stone is calling it “a move that signifies the end of an era”, while the LA Times reports that “[f]or its part, MTV says viewers had moved beyond what the old logo said. ‘The people who watch it today, they don't refer to MTV as music television.’” 

Rather than a move to expand its audience, however, MTV’s logo change comes across as a bit of coming clean – I was five when MTV debuted and spent most of my single digits pestering my parents so that they would install cable so I could watch it, and I don’t ever recall calling MTV “music television.” The on-line petition to convince MTV to change its name supports my theory, at least in part. 

And besides, as my post last week indicated, we all know what MTV is really known for now.

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

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

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

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

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

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

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

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

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

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

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

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

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

So, stay tuned.

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

At the risk of giving the readers of this blog the wrong impression about my tastes in entertainment, I have to mention the MTV show Jersey Shore. In just a few months, this reality television series about a group of proud New Jerseyans (or Jersyeites?) living at a beach house in the Garden State has partied, squabbled and otherwise worked itself in to the hearts of millions of viewers. The cast of memorable “characters” includes Mike “The Situation,” Jenni "J-WOWW," and Nicole “Snooki,” among others.

With monikers like those and their rapid rise to fame – their salaries have risen from a purported hundreds of dollars per episode to $10,000 dollars per episode - it was only a matter of time before one of them sought to protect the names that many Americans can recognize in an instant. Indeed, the New York Times reports that both Snooki and The Situation are seeking trademark protection for their names.

However, parties cannot seek trademark protection simply for their names. Trademark protection is extended to the use of a name or designation in connection with goods and services. Many celebrities file applications for the services that they provide as a natural result of being famous and on television – entertainment services. Snooki has done this, filing

an application for “entertainment in the nature of personal appearances by a television personality” with the addition of “printed matter, namely, books.”

But Mike “The Situation” does not appear to have filed for these services yet. Instead, the USPTO database reveals four recently filed, pending applications for THE SITUATION – all by different owners, none of whom are an individual named Mike – including “clothing for domestic pets, dog apparel,” “eau de toilette,” “clothing, namely t-shirts and underwear,” and other types of clothing too numerous to list here. Given the range of subjects covered by the characters of Jersey Shore, none of these goods seems implausible – only time will tell if The Situation will live on in American popular culture as an entertainer, a purveyor of doggie duds, or a clothing label.

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

Shaun White recently won gold in Vancouver in the halfpipe with a near-perfect score.   At 23, this already his second Olympic games and his second gold metal in this event.  Since 2002, he has also won 9 gold, 3 silver, 2 bronze medals in the X Games.   Anyone who saw him in the Olympics has to be as awe-struck as I am.  

He has many "trademarks," including the name Flying Tomato for his long red hair or, more recently, Animal.  His most recent trademark is a move - the Double McTwist 1260 (see him perform it here).  While the “McTwist” isn’t his to claim (move invented by a skateboarder 25 years ago), he is the first and only to perform the Double McTwist 1260, a two board-over-head flips inside of 3 1/2 turns.  Apparently, he developed this move over two years before he tried it out at the Grand Prix in Park City, Utah a month before the Olympics.  

While he can’t really protect his “trademark” move, maybe he can own it by virtue of the fact that no one else can do it.  He has already suggested he might be back in 2014 with more new moves. 

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

by Mark Prus of NameFlash^SM

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

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

Which approach is better?

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

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

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

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

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

Your thoughts?

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

More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."

Wolf put its registration to the test a couple of weeks ago in a federal trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf's request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf's single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here's the short answer:

1. Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
2. To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it's a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
3. Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
4. Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf's "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn't the court's recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess' range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as 'initial interest' confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges. 

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf's red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you're wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf's registered trademark.

Stay tuned for more on this interesting case.

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

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.)

• 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

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.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

In light of the recent Super Bowl victory by the New Orleans Saints, I think a brief discussion of the recent squabble over ownership of the phrase “who dat” is in order.

In case you have not been following the story, the phrase “who dat” is commonly used by football fans and, in particular, New Orleans Saints fans.  With the success of the Saints this year, “who dat” merchandise has been popping up for sale which has led to a battle over rights in the phrase.  There are generally three opinions as to ownership of the phrase: (1) the NFL believes they own it; (2) Who Dat Inc. believe they own it; and (3) Saints fans (and merchandise retailers) believe no one owns it.

According to Wikipedia, the chant originated in minstrel shows and vaudeville in the 1800’s and was later adopted by jazz and big band performers in the 1920’s and 30’s.

According to ESPN, Saints fans began using the phrase “who dat” (shortened from “who dat say dey gonna beat dem Saints”) as a cheer over 25 years ago.  Other sources note the phrase has been used as a southern football chant since the early 1970’s.  As such, the general feeling is that no one owns it or it belongs to the city and the people.

The NFL believes they own a trademark in the phrase or at least as used in connection with the Saints.  Numerous t-shirt makers and retailers have received cease-and-desist letters from the NFL over use of the phrase on t-shirts and other Saints memorabilia claiming the unlicensed products lead fans to believe the Saints endorsed the products.

Finally, ESPN also notes that Who Dat Inc., a company run by two brothers who are long-time Saints fans, claim trademark rights in the phrase for “branded products.”

Interestingly, there are numerous trademark applications for the phrase filed with the Trademark Office in connection with clothing and related goods.  However, no registrations have issued.  In fact, many of the applications were filed within the last month.  I have heard of bandwagon fans, but bandwagon trademarks claims?

So who, if anyone, owns the phrase "who dat?"  Who knows, but I am sure it will continue to be an interesting fight. 

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

We've had a little rash of graphic design comedic parody lately.

The first example is the notoriously funny The South Butt and its tagline "Never Stop Relaxing". Of course, this is an obvious knockoff of leading outdoor clothier The North Face and its "Never Stop Exploring" call to action. From a legal perspective, of course, this is a bit problematic - especially when The South Butt began selling apparel. (Until then, a fun mockery might have earned them a nasty letter, but not a full-on lawsuit).

However, whether The North Face likes it or not, it is a victim of its own popularity. While the company was still a niche brand, focusing on only seasoned outdoorspeople, no one cared. But once it crossed over into high fashion (and became the must-have in every 13-year-old girl's wardrobe), a backlash was inevitable. The same thing happened to Abercrombie and Fitch (remember the raucously funny MadTV sketches)?

From a marketing perspective, The North Face should be content to let this go. Yes, it's irritating, and yes, legally it's an affront. But making too big of a deal of the situation likely will backfire.

Here's another example that should not be taken lying down.

If I were the Humane Society of the United States, I would be preparing my lawsuit at this moment. Say what you will about the politics of the HSUS (suffice to say, it is not just about finding homes for adorable puppies), HumaneWatch is making a visual affront to the organization and its ability to distinguish itself in the market. In short, the competing organization is using HSUS intellectual property (the logo) to bolster its own low standing, confusing people into paying attention.

Whatever side of the political/moral/business issue you might be on, this has to be stopped.

Related Links:

http://www.thesouthbutt.com/

http://www.humanewatch.org/

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

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

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

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

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

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

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

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

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

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

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

Can you spot the genuine iPad?

Back in July, I blogged about my then-discovery that Apple did not own the federal trademark registration for iPhone.  Needless to say, when I heard about Apple's new iPad product, I just had to see if they were out in front in securing trademark rights to this name.  They're not, at least not in the U.S.  As you may have read in the Wall Street Journal here and here, Fujitsu owns a pending U.S. trademark application for IPAD for use in connection with "hand-held computing device for wireless networking in a retail environment."  Fujitsu claims first use of the mark in January 2002. 

Apple?  Well, it appears that Apple is using a proxy (itself a subject for a whole separate discussion) by the name of IP Application Development to secure registered rights to the IPAD trademark.  That application claims priority to a July 2009 application filed in Trinidad and Tobago.  (Trinidad and Tobago?  Another discussion topic.)

Let's see:  Marks are identical, goods are highly similar, if not identical, and priority of January 2002 versus July 2009.  Slam dunk, right?  "No contest," you say?  Apple, pick again?

NOT SO FAST!  No, this may get interesting.  You see, Fujitsu's application to register IPAD lapsed and was declared abandoned, only to be revived in June 2009 -- a mere month before Apple's first apparent claim to rights.  This makes for a much closer race.  Further, Apple (not IP Application Development) has filed extensions of time to oppose Fujitsu's IPAD trademark application--extensions that will expire on February 28.  We should know Apple's next move within a month's time.

My assessment?  Unlike horseshoes and hand grenades, closer does not count for much here.  Priority is priority, and Apple is likely to face a difficult time surmounting some eight years of common law rights that appear to belong to Fujitsu, even if it could somehow bring down Fujitsu's application, which doesn't look promising.  (Trademark geeks see here for reason.)

Combined with the iPhone kerfuffle, I am now really wondering what Apple's trademark clearance process and discussions are like.  Selling iPods and iPhones is like printing money, so maybe Apple believes that it can just buy its way through all of these thickets.  Even so, wouldn't you want the purchase complete before the product unveiling? 

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

Thinking about filing a trademark opposition against a competitor’s pending trademark application? Thinking about filing a civil suit against a competitor’s corresponding trademark use? Often, upon the filing of a civil trademark suit and a request to the Trademark Trial and Appeal Board (“TTAB”), the TTAB will suspend the opposition pending the disposition of the civil suit. Generally, the expectation is that the civil suit will wrap up within a few years, sometimes rendering the subject of the opposition proceeding moot.

But from time to time it is possible for a civil suit to linger – causing its corresponding TTAB action to do the same. The most notorious of such cases (at present) is United Black Fund v. National Black United Fund, Inc., Cancellation No. 92013503. The cancellation proceeding was filed in 1982 and suspending in 1984 pending the outcome of a corresponding civil action in the United States District Court for the District of Maryland. The lawsuit was administratively closed by the court in order to allow “the parties the opportunity to resolve their differences.” If my calculations are right, the parties have provided the TTAB with at least 10 status reports since suspending the action corresponding to the TTAB’s inquiries into the civil suit every two or three years over the past 25 years or so.

The petitioner’s most recent filing indicates that the civil suit remained administratively closed as of December 2009 and that the parties were engaged in settlement talks. The United Black Fund has used its mark in connection with fundraising activities since 1969, while the Black United Fund has done so since 1977. Both continue to offer those same services today, as seen here and here, presumably without any settlement regarding how the parties may use their marks. It would seem that this 28-year-long saga has played itself out, but only time will tell.

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

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



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



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

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

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

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

What do you think?

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

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

Would a reasonable person find these confusingly similar?

$51,000 Blue Cayman                                                      $30 Blue Cayman

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Randall Hull, The Br@nd Ranch®

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

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

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

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

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

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

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

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

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

I recently came across a catalog for a company that sells "modular floorcovering" -- probably better known as "carpet squares."  (They actually sell more than squares, but I digress.)  The brand?  FLOR.  FLOR?  Cue kneejerk trademark attorney reaction:  "FLOR?  Are you kidding me?  I bet they had a heckuva time getting that registered!"  Well, they didn't, but it served as a good reminder to me to be wary of my "Dr. No" tendencies.

I am about to make a sweeping generalization here, but it seems to me that one of the real or perceived gulfs between marketing and legal types is the former's occasional attraction to words with novel spellings and the latter's repulsion to those same words, at least when applied to goods or services that the word might describe.  Conventional trademark wisdom is that a novel spelling of a word will not save it from being "merely descriptive" of the goods or services with which it is used if purchasers would perceive it as merely descriptive of the goods or services.  Why is this important?  Well, "merely descriptive" words are not immediately entitled to trademark protection.  The owner of such words has to use them as a trademark so that they acquire "distinctiveness" or "secondary meaning," and this process can take five or more years.  In contrast, suggestive words are entitled to immediate trademark protection--they are "inherently distinctive" as trademarks.  (See here for a cheat sheet and overview of these concepts.)

When Interface Global applied to register FLOR as a trademark for use in connection with "modular carpeting and rugs," it was required to show that FLOR had acquired distinctiveness.  In other words, it had to show that when consumers see "FLOR," they actually think of the company that sells modular floorcovering, not just another way to say "floor."  Same thing happened when the original owner of PUR tried to register it for "water filtration units."  Generally, if a company uses a word like this as a mark for five years, exclusively and continuously, that claim alone is generally sufficient to show acquired distinctiveness. 

In the final analysis, novel spellings can be catchy and marketable, but if they are also descriptive, it could take a while to build up strong trademark rights in them. 

For more information, see Steve's recent post on "moist" cake mixes, which gives a good overview of some suggestive trademarks and links to other posts that touch on the line between descriptiveness and suggestiveness. 

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

You may have heard the phrase “Shaq Attaq” referring to the famous NBA player and gold medal winner Shaquille O’Neal’s basketball skills.  While he played basketball in Arizona for the Phoenix Suns, the Arizonians nicknamed him “The Big Cactus” and “The Big Shaqtus” in reference to the combination of Mr. O’Neal and an Arizona cactus.

You may recall that I wrote about former NFL players suing the NFL over their likenesses a couple of months ago “Purple People Eater Jim Marshall & Friends Take on the NFL.” ESPN used O’Neal’s likeness when it aired commercials featuring O’Neal encountering a cactus bearing his face in the desert. Before doing so, however, ESPN obtained Mr. O’Neal’s company, Mine O‘Mine, Inc.’s, permission to use the mark. Mine O’ Mine has the exclusive rights to use and sublicense Mr. O’Neal’s, image and likeness and to register, exploit and protect Shaq and Shaq-formative trademarks.  In connection therewith, the company has a pending application for the “Shaq Attaq” mark for apparel.  

Mr. O’Neal is moving from the basketball court to a different court. True Fan Logo, Inc.’s shaqtus.net website is an online retail store under the SHAQTUS ORANGE CLOTHING COMPANY mark. Playing off the ESPN commercial, the store features an animated character in the form of a cactus with O’Neal’s facial features and a basketball jersey with Mr. O’Neal’s number. This company tried to shut down the ESPN commercial claiming its ownership of the Shaqtus mark. ESPN ignored this request.  However, Mr. O’Neal is not ignoring the company. Indeed, Mr. O’Neal recently sued True Fan Logo, Inc., and individuals Dan Mortenson and Michael Calamese. According to the complaint they have registered and are using shaqtus.com and shaqtus.net.  

A PDF of this complaint is attached. Read more about the complaint here. The complaint  includes claims of trademark infringement, unfair competition, trademark dilution, cyber-squatting and others. Shaq often wins on the basketball court. Now, he is hoping for a win in a Las Vegas court of law.

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

Similar to the Hostess Brands, Inc. predicament, recently posted by Dan Kelly, Goodwill Industries International, Inc. (www.goodwill.org), the well-known and respected non-profit, didn't own the one domain you would expect -- Goodwill.com.

The domain went up for auction this past December after the original owner, a Japanese staffing company named Goodwill Group, Inc., changed its name and allowed Goodwill.com to expire. 

Instead of seizing the opportunity to own and control this element of their brand by simply buying it at auction, Goodwill Industries gambled, in my opinion, by trying to stop the auction. Ultimately, they lost their request as well as the domain. Their next act was to sue the owner of Goodwill.com for trademark infringement and violation of anti-cybersquatting protection act, amongst other claims.

As reported by Domain Name Wire, this month the case was dismissed without prejudice and the Goodwill.com domain finally went to Goodwill Industries. Although this resolution is good for Goodwill, not owning Goodwill.com earlier denied them the domain during the key December donation period, and, potentially, could have proven a very expensive and lengthy process to resolve.

Since monitoring a domain is relatively uncomplicated, it is puzzling why Goodwill industries would allow Goodwill.com to get away so easily. As a brand manager, I am surprised Goodwill wasn't more vigilant or diligent in pursuing and protecting something so apparently associated with their trademark and their brand.

The goodwill (pun intended) a domain name inures to a brand cannot be overemphasized. One of the more important aspects of branding is presence. On the worldwide stage of the Internet, domains perform a leading role in brand proliferation. 

A domain dispute and the associated confusion, as in this case, was unnecessary, considering resolution could have been reached without extraordinary effort and without hunting for legal remedy.

—Randall Hull, The Br@nd Ranch® 

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

I recently spotted this bit in an ad flyer:

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

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

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

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

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

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

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

Brands communicate with the world through a series of message delivery systems such as broadcast advertising, web sites, company representatives and product interaction. These systems utilize brand signals to communicate. While these signals commonly take the form of brand names and logos, they can also extend into sight, sound, touch, taste, smell or even action such as a brand ritual.

Brand signals are far more than an aesthetic veneer. They turn abstract meaning into tangible cues, allowing consumers to better navigate the marketplace. Functioning as vessels, these signals carry learned and associative meaning. That meaning is often instilled by the brand owner and further enhanced by the audience. The connotation of a brand signal evolves over time, as either the brand owner or its audience fills the vessel with new meaning that displaces the original. Take for example, two well know brand signals that once represented something very different than they do today, the ENRON name and logo. The original meaning was displaced by consumers’ new understanding of “ENRON.”

The most effective brands use a wide array of signals to manage consumers’ expectations. Many of these are co-authored by the brand owner and its audience. These signals communicate on multiple levels: Specifically and Categorically, Individually and Collectively.

Specifically and Categorically
When a signal is specific to a given brand, it directly equates to that brand: The names McDonald’s and Big Mac directly equate to the McDonald’s brand as do the golden arches and Ronald McDonald. Yet, we also recognize brand signals by category. These signals indicate brands by type. We relate the yellow and red color scheme to the fast food/burger category. Have you ever noticed how McDonald’s, Burger King and Wendy’s all share the same color scheme? Coincidence? McDonald’s (first to market) established the color scheme that has defined the fast food burger joint category for generations.

Individually and Collectively
Some brand signals carry enough meaning to hold up individually such as a company’s name, its logo or even an iconic shape. Such is the case with Coca-Cola’s “contour bottle.” With its distinctive curves, it is one of the most recognized icons in the world. Designed so it could be identified in the dark and shaped so that, even if broken, it is identifiable at a glance; the unique bottle design ensures that Coca-Cola is never confused with competitors.

Other brand signals work collectively. A slice of lime on its own says nothing. However, when it adorns the neck of a clear beer bottle, the lime says Corona! Add a tropical beach and it screams!

Of course, individual signals can contribute to the collective, and categorical signals can contribute to the specific. Be they specific or categorical, individual or collective, not all brand signals are created intentionally. Many are associated with or equated to the brand over time. These signals are of no less value than those which are developed intentionally by the brand owner. The Corona lime ritual was not created by Corona, but rather a California bartender who, in 1981, made a bet with his buddy that he could start a trend. Corona might not have started the lime ritual, they may not own it legally, but they benefit from this well know brand signal.

Your own brand likely has signals that extend beyond its name and logo. By identifying and refining these signals, your brand can begin to own these mental cues to build a more engaging brand experience with your audience.

—Mark Gallagher, Brand Expressionist® at Blackcoffee®. 

• Email This
• Print
• Comments (1)
• 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

An in-depth focus on arguably the most important trademark issue to brand owners and their trademark counsel. The seminar will focus on the many faces of trademark confusion, with a special focus on initial interest confusion, reverse confusion, survey evidence, and post-sale confusion theories.

Promises to be a good program, we hope you join us, special guests Ron Coleman and Nancy Friedman will be in town, and Paul Mussell from Wells Fargo, see here for the link on the Minnesota Continuing Legal Education website. See here for a pdf of the brochure, please check it out.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

On December 9, 2009, I blogged about the trademark issues surrounding the famous Tavern on the Green restaurant in Central Park. Well, the New York landmark officially closed shortly after midnight on December 31, 2009, after a blow-out party for 1,700 on New Years Eve. The New York Times reported on the items currently being auctioned to pay the prior owner’s debts including 59 chandeliers, a 14 foot King Kong, champagne buckets and a topiary giraffe. 

As previously noted, the Tavern on the Green mark was estimated to be worth $19 million.  The prior owners, the LeRoy family, continue the fight over the name with the City of New York who claims the name belongs to whoever operates the space.  The LeRoy family filed a federal trademark application for the mark in 1978, which registered shortly thereafter.  

Since my last blog post, some interesting updates have occurred.  First, if the City of New York loses the fight, the new name of the restaurant (now owned by Dean Poll) will be "Tavern in the Park."  The City filed a federal intent-to-use trademark application for the new name on November 10, 2009. 

Second, on December 30, 2009 (one day before the closing), an individual from Texas filed a federal intent-to-use trademark application for the identical TAVERN ON THE GREEN mark in connection with bar and restaurant services.  There is no question that the application will be initially refused by the Trademark Office, based upon a likelihood of confusion with the registration owned by the LeRoy family.  However, the Applicant may hope to cancel the prior registration for non-use of the mark. This raises a few interesting issues to be addressed, including:

1. Abandonment

If the LeRoy’s win the battle over ownership of the mark, but do not operate a restaurant under the name, have they abandoned the mark so that others may sweep in and use it? Under trademark law, abandonment of a mark occurs when the owner ceases use with no intention to resume use in the future. In addition, non-use for a period of three years is considered prima facie evidence of abandonment. Bankruptcy raises an interesting question as to intent to resume use and whether another party could prove a lack of intent shortly after a business goes bankrupt.   

2. Residual Goodwill

Since Tavern on the Green is most likely a famous mark, what about residual goodwill in the name?  As described in a previous blog by Steve Baird, even if there has been a technical and legal abandonment of trademark rights, a potential newcomer must consider the residual goodwill that may form the basis of an unfair competition cause of action.  Residual goodwill recognizes that the goodwill in a trademark doesn't necessarily go away right away, but there is no definition as to how long residual goodwill in a mark lasts. 

Stay tuned to see what happens. 

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

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

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

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

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

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

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

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

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

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

I have heard that lightning only strikes once in the same place, but apparently that is only a myth. Indeed, the number of lightning bolt logos that have "hit" the mail room, over the years, at the U.S. Trademark Office appear to provide additional evidence for disproving the popular myth.

So, what does that say, if anything, about the scope of rights associated with the non-verbal lightning bolt logos shown below, none of which are owned by the same entity, and all of which have been registered or at least approved for publication by the U.S. Trademark Office? And, how many of them do you recognize anyway?

In addition to the link for each logo that connects to the relevant trademark information at the USPTO, here is a numbered hint for each, and the answer key is below the jump:

1. golf ball brand
2. golf club brand
3. Wyeth is the owner
4. protective eye wear brand
5. professional football club is the owner
6. PulseSwitch is the owner
7. Gatorade's lightning bolt
8. the lightning bolt logo that Gatorade filed an opposition against
9. firearm trigger brand
10. an NFL team, the NFL, and the Air-force have filed extensions of time to oppose
11. semiconductor brand
12. athletic competitions at the high-school level

a.   b.      c.

d.e.f.   g.  

h.i.j.k.l.     

• Email This
• Print
• Comments (5)
• 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

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

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

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

Happy New Year!

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

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

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

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

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

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

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

1. Celero                                   a. dental insurance

2. Tolamba                               b. private mortgage banking

3. Onvio                                     c. oil and gas operations

4. Fortex                                    d. email relationship manager

5. Xobni                                     e. fake!

6. Opteum                                 f. motion control equipment

7. Contango                              g. trading software

8. Nexxar                                   h. wealth management services

9. Provantis                               i. money transfer services

10. Graxxion                              j. allergy treatment

Answers are below the jump.

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

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

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

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

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

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

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

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

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

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

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

What do you think? What do you know?

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

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

Would you expect the offer to be from Dell Computer?

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

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

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

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

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

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

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

Who is he anyway?

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

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

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

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

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

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

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

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

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

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

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

and Inci Fatih.

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

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

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

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

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

The Associated Press reported last week that adult entertainment pioneer Larry Flynt, the creator of the famous, and infamous, Hustler Magazine, scored a victory in his trademark infringement suit against his estranged nephews, who are also in the family business.  The nephews, Jimmy Flynt, Jr. and Justin Flynt, launched their business after their uncle fired them from Larry Flynt Publications.  The mark at issue?  FLYNT.  Simply put, the court found that the nephews’ use of FLYNT – regardless of the fact that it is their own last name – creates a suggestion of sponsorship or endorsement by the elder Flynt.  “No one wins in this thing,” said one of the nephews, “It’s sad that the family is in this dispute, but we felt strongly that we should be allowed to use our name in our business.”

This case underscores a point that is all too familiar to many trademark attorneys – trademark-related conflicts that may arise among family members when the family business becomes successful.  In many conflicts, a grandparent or parent starts a business – using the family name as a trademark – and toils to make it successful, only to pass the business on to multiple children who proceed to have differences of opinion, split the business, and commence to fight about who has the right to use the family name as a trademark and take advantage of years and years of goodwill in their own last name. 

In most cases, the selection of an inherently distinctive mark – or exploitation of a personal name that is not related to the family – will often prevent this problem.  The Flynt case, however, adds a wrinkle to this approach; Larry Flynt did use an inherently distinctive mark, HUSTLER, in connection with his goods and services and, of course, Larry Flynt didn’t pass his business on to his nephews – he simply fired them because he “felt they were doing a horrible job.”  Under these circumstances, it’s possible that the suit could have been prevented by following different employee termination procedures.  In terms of preventing his nephews from using their own last name in connection with their business, however, and as with many successful family businesses, it appears that court was the only place for these parties to go.

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

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

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

As you may recall from March of this year, we blogged about Kimberly-Clark's novel intent-to-use trademark application for a "sensory, touch mark" in connection with disposable paper hand-towels. Other discussions of sensory, touch marks may be found here. 

In any event, the original description of the claimed Kimberly-Clark trademark was as follows: "The mark consists of a distinctive arrangement of textured alternating dot pattern appearing on the surface of the carton of disposable paper hand-towels. The mark is a sensory, touch mark."

Here is the original drawing (on the left):

Kimberly-Clark now appears to have shifted its approach by amending both the drawing (the new drawing shown above on the right) and the description of the mark to now read: "The mark consists of a configuration of packaging consisting of a design of a distinctive arrangement of soft textured raised alternating large and small dot pattern appearing on the surface of the carton of disposable paper hand-towels. The matter shown in broken lines is not part of the mark and serves only to show the position or placement of the mark."

So, no more reference to this being a "sensory, touch mark" -- now the focus is on a packaging configuration. This amended mark was approved for publication by the Trademark Office as an inherently distinctive trademark, and it was published for opposition just days ago, on December 8, 2009. 

What do you think, is this amendment a material alteration of the originally filed sensory, touch mark? Are the commercial impressions of the original mark and the amended mark essentially the same? Apparently the Examining Attorney concluded they were. Do you agree?

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

A couple of months ago there was quite a buzz about Holiday Inn's projected $4 million annual savings by moving to a leaner and greener direction with their adoption of LED lighting on exterior signage. 

As you may recall, back in June we blogged about Holiday Inn's interesting effort to federally register a pair of non-traditional lighting trademarks, one employing a green-colored lighting scheme and the other employing a blue lighting scheme: 

We had noted it would likely take a strong showing of "look for" advertising to overcome the registration refusals initially lodged by the Trademark Office.

Instead of attempting to overcome the registration refusals, however, Holiday Inn apparently has opted for a leaner approach and cost savings on the trademark front too, settling for Supplemental Registrations, a much dimmer form of protection -- offering no legal presumptions of validity, ownership, or exclusive right to use.

About the only meaningful benefit of a Supplemental Registration for a service mark is that it blocks and prevents others from obtaining Principal Registration for confusingly similar marks. Here are the official drawings associated with those newly issued Supplemental Registrations:

In addition to amending the applications to seek registration on the Supplemental Register, Holiday Inn tweaked the description of the marks to read as follows (for the green mark):

The mark consists of green lighting formed by four light fixtures placed in a symmetrical fashion near the entryway of the building. One set of two green lights is evenly placed on columns to the right and left of the entryway and direct the green lighting downward thereby casting a green shadow down the length of the column; while the other set of two green lights is evenly placed on the building wall above the entryway and direct the green lighting upwards, casting a green shadow up the length of the wall and roof overhang. The matter shown by the dotted lines is not a part of the mark and serves only to show the position of the mark.

Perhaps Holiday Inn will be back -- with a brighter approach down the road -- to seek Principal Registration after it believes it has sufficient evidence to establish acquired distinctiveness.

Any thoughts on how long that might take?

• 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

If you have been following the bankruptcy of the Tavern on the Green, you have most likely heard about the controversy surrounding the famous trademark.  

There are a few parties claiming ownership of the Tavern on the Green trademark, recently appraised at $19 million according to the New York Times. The current licensee, the LeRoy family, has run the restaurant since 1974 when they turned a former sheep barn into a magnificent restaurant known around the world by name.  Warner LeRoy licensed the space from the City of New York under the name Tavern on the Green Limited Partnership.  Mr. LeRoy filed federal trademark applications for the name which registered with the PTO in 1981.  The Tavern's gross revenues in 2007 were $38 million, making it the second highest-grossing independently owned restaurant in the United States (according to Wikipedia). 

Apparently, in August 2009, the LeRoy family lost a bidding war for a new 25-year contract with the New York City Department of Parks and Recreation to Dean J. Poll, who runs The Central Park Boathouse.  However, on September 9, 2009, months before the LeRoy’s license expired, they filed for Chapter 11 bankruptcy  with 452 listed creditors leading to the current controversy over the Tavern on the Green trademark. 

The second party claiming ownership of the trademark is New York City.  According the another article, the City asserted ownership of the trademark at the bankruptcy proceedings claiming rights dating back to the original opening of the restaurant in 1934.  Apparently, as a back-up plan the City has registered the name Tavern in the Park with New York State. 

Based upon the limited facts available, it is very difficult to determine who has the better claim to ownership of the Tavern on the Green mark.  The creditors certainly hope the LeRoy family prevails but, if so, will the mark survive?  It will be interesting to watch. 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Lest you think this post is just an excuse to post the ridiculously viral video of The Muppets singing Queen’s “Bohemian Rhapsody,” guess again.  There is a trademark lesson here.  


Do I still have your attention?  The lesson is this – you, the consumer, don’t need to know what the source of a good or service is for that good or service’s mark to function as a mark.  All that matters is that mark is capable of signifying a single source, regardless of whether any consumers know what that single source is.

Case in point – when I saw this video, I thought of the late, great Jim Henson, who passed away from complications of pneumonia in 1990.  But there’s the rub – Mr. Henson hasn’t had a hand in The Muppets since his death (pun intended).  As much as I love The Muppets, I couldn’t for the life of me remember who – or what – is the source of The Muppets.  A bit of searching, and the answer was clear: the owner of The Muppets (and the MUPPETS family of trademark registrations) is the Muppets Studio, LLC (The Walt Disney Company).  In contrast, the JIM HENSON portfolio of marks is owned by the Jim Henson Company, which I believe is unaffiliated with Disney.  The fact that I still think of Jim Henson when Animal cries “Mama!” is irrelevant for the purposes of trademark law.  In the end all that matters is that the source of goods and services featuring Animal – whatever he happens to be crying – is the same source of goods and services featuring Miss Piggy, Fozze the Bear, Kermit the Frog, and the rest of The Muppets.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Answer below the jump.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

But is it legal? Probably not.

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

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

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

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

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

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

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

XBOX has adopted a 3D design. 

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

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

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

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

--Alan Bergstrom, Brand Insights

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

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

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

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

OK, need more information?

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

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

Still not enough? Alright, enough suspense?

The visual answer and more discussion is below the jump.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

• 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

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

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

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

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

One of Minneapolis' most recent hotel additions, Aloft Hotel, branded as a "hip" hotel and a "vision" of Starwood's W, apparently features the WXYZ Bar. Or is it XYZ?

I'm not sure, and I'm not sure if Starwood or W have made up their minds yet either (as there appears to be different font, size, and spacing between the W and the lower case xyz). In any event, Starwood has registered both XYZ and WXYZ as standard character service marks.

The Mpls reviews appear to be generally quite good and confirm the promised hipness. Given my previous "confession of a lamer," in admitting to being "out of touch with modern fads or trends," I haven't had an occasion to step foot inside XYZ or WXYZ, at least yet.

The San Francisco W clearly shows use of XYZ alone, but at Aloft in Minneapolis (and perhaps other Aloft locations), given the minimal spacing shown above on exterior signage and the definite compression of letters shown below, it appears both the three and four letter versions actually are in use.  

As I understand it, W, one of the most well-known single-letter brands (and the only single-letter with three syllables), spawned the XYZ and WXYZ brands just over a decade ago. Starwood and W must have wanted to get the concept just right before making the debut in Minneapolis!

You may recall my previous blog post on Exposing Single-Letter Envy in Hotel Branding. We also have covered other contexts where single-letter branding continues to make "a" mark.

Can you think of a better single-letter brand than W?

• Email This
• Print
• Comments (16)
• Trackbacks
• Share Link

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

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

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

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

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

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

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

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

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

  

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

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

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

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

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

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

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

Would you wear these tights (yes, they’re animal-rainbow print)?

How about this hair decoration (yes, it’s made out of an orange)?

Would you give your child, or your favorite King-of-Pop fan, this toy (yes, it’s a Michael Jackson sock monkey)?

These are but many of the handmade objects and wearable art available at Etsy, a sort-of modern day handicrafts bazaar where independent artisans can sell their creations and wares. The mission of Etsy, which has been in business since 2005, is “to enable people to make a living making things, and to reconnect makers with buyers.”

These are also but many of the handmade objects and wearable art at which fun is poked, or that are downright mocked, at Regretsy, a relatively new web site whose tagline is “Handmade? It looks like you made it with your feet.” [Warning: the Regretsy site features some of the more edgy and controversial pieces available on Etsy, and may contain graphic imagery and/or imagery that is not safe for work.]

Given the tenor of Regretsy’s commentary on Etsy’s artists, the level of coverage Regretsy has received from major media outlets (here and here – and again I renew the previous warning), and the basic fact that Regretsy looks and sounds a lot like the federally registered trademark Etsy, one might think that Etsy would be ready to rumble.

More after the jump.

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

"What am I?"

Every invention begs this essential question of identity.

The answer is found in the product's descriptor. A descriptor defines a thing, categorizing it, framing it, positioning it and signaling its intended future.

A product that doesn't claim to break new ground adopts its category's standard convention. For example, a new, run-of-the-mill digital camera would be marketed as a "digital camera".

A revolutionary product, on the other hand, deserves an innovative product descriptor. And, sometimes, a me-too product benefits from one, too.

The trouble is, innovation is easier done than said.

I wrote in this article about the "brander's paradox": Human instincts make us wary of unfamiliar and different things, yet differentiation is essential to a product's success.

By definition, an innovation is unfamiliar. How can its product descriptor differentiate without triggering people's fear of the unknown?

The New York Times gives us an idea in this recent article about product descriptors,

"When people encounter something they don't recognize, they make sense of it by associating it with something familiar."

The most effective new descriptors combine familiar terms in unfamiliar ways. They make product function or form clearly understood, even upon first exposure. Novel descriptors insufficiently informative should at the very least pique interest.

Descriptors that differ

The products shown below the jump illustrate different approaches:

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

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

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

Now it's time for some questions.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Reverse confusion trademark infringement claims are sometimes reminiscent of the well-known biblical story of David versus Goliath.  This doctrine basically protects smaller, lesser known, trademark owners whose trademarks are infringed upon by large multi-national companies with gigantic advertising budgets.  You may want to check out a few prior posts on DuetsBlog relating to Lion's Tap and McDonald's from Steve Baird, here and here, and guest blogger, Jason Voiovich, here.

Domino’s Pizza learned this lesson earlier this October. Great American Restaurant Company owns and operates the small Dallas area pizza chain Brooklyn’s Old Neighborhood Style Pizzeria. It holds the trademarks: “A TASTE OF THE OLD NEIGHBORHOOD” and “BROOKLYN’S OLD NEIGHBORHOOD STYLE PIZZERIA.” When Domino’s Pizza launched its new “Brooklyn Style Pizzeria,” the smaller Texas chain sued Domino’s Pizza for trademark infringement. The Fifth Circuit reversed Domino’s Pizza’s win in the lower court (in legalese = granting summary judgment). Domino’s Pizza will now have to battle it out with the Great American Restaurant in the Texas courts. 

Domino’s Pizza is not alone. Steven Spielberg’s well-known company, DreamWorks, was sued by senior trademark user Dreamwerks Products—a science fiction convention. Although Spielberg’s production company produces much more than science fiction movies and television shows, DreamWorks was still found to have infringed the convention’s trademark through reverse confusion.  

Similarly, Victoria’s Secret was sued by A&H Sportswear when it launched THE MIRACLE BRA swimwear. A&H Sportswear holds the trademark to MIRACLESUIT for swimwear. In deciding the appeal, the Third Circuit allowed the claim against Victoria’s Secret to continue. However, the Third Circuit observed the downfalls of such claims. Reverse confusion claims penalize an innovative junior trademark user who, after spending a lot of money promoting a trademark, could be blocked from using it by a senior trademark owner who has not even invested in or promoted the trademark. Moreover, the claim could inhibit larger companies from expanding product lines, such as in this case Victoria’s Secret from moving into the swimwear line.   

In contrast, the Harlem Wizards did not fare well off the basketball court. In a court of law, the Harlem Wizards lost its reverse confusion infringement claim against the NBA for using the Washington Wizards. The court found that entertainment basketball was different from NBA basketball so there was no infringement. 

These cases raise the issue of how aggressively should courts enforce the reverse confusion infringement doctrine. Do we fear chilling companies from expanding into other product lines? Should a senior trademark user be able to block use by a larger company when it does not promote its own trademark? This battle between David and Goliath will likely continue in federal courts across the country for some time.

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

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

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

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

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

The single-letter branding and trademark truncation trend continues.

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

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

How about these, do they help?  

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

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

In case you're wondering, this design is a federally-registered non-verbal trademark.

The owner identified it as a "Miscellaneous Design," without further detail or description (since it predated the more rigorous rules on supplying the Trademark Office with an accurate and detailed description of the mark).

The U.S. Trademark Office assigned to this design mark Design Code 24.15.25 ("other arrows") and in some cases 26.17.09 ("bands, curved; bars, curved; curved lines, bands or bars; lines, curved.").

So, now that you're armed with all this valuable information, certainly you can answer three simple questions: (1) Who owns it? (2) What is it? and (3) What goods or services are identified and distinguished by this non-verbal design mark?

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

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

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

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

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

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

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

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

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

Some possible considerations and the answer below the jump.

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

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

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

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

It’s a jungle out there in corporate America. A hot, steamy, ardent, passionate jungle.

You’ve seen the evidence. Whole Foods is hiring “people with a passion for healthy living.” Bose seeks “people with a passion for innovation.” The South Florida Water Management District wants “good people with a passion for water.” Grant Thornton is looking for “people with a passion for the business of accounting.”

There’s plenty of heavy breathing outside the help-wanted ads, too. At last count, there were 960 live trademarks in the USPTO database that incorporated “passion” or “passionate,” from Dark Passion coffee to Elizabeth Taylor’s Passion perfume to Tango Passion, which turns out to be a brand of slot machines.

Some of the marks strain credulity, to say the least. Passion hearing aids—eh? “A Passion for Packaging”? (Packaging?) How about “Experience Our Passion for Flow”—the slogan of a company that makes, uh, flow meters.

And the lawyers—the lawyers! A random sampling of passionate legal slogans includes “Law. Life. Passion” (Nashville), “Passion. Knowledge. Strategy. Action” (Chicago), “A Passion for Justice” (West Palm Beach), and “Compassion for People. Passion for Justice” (Little Rock).

All together now: Get a room!

In all seriousness, when it’s overused like this, “passion” is drained of distinctiveness. The word may have had some shock value back in 1985, when Tom Peters published A Passion for Excellence and spawned a generation of passion-pitching management consultants and self-help gurus—and thousands of books with titles like Creating Passion Teams, Leading with Passion, and Turn Your Passion into Profit. Thanks to Peters, being a breadwinner was no longer sufficient: you had to fall head over heels in love with your job. Again and again.

“Passion” used to signify something special. When it first came into English from Old French in the 12^th century, it retained its Latin meaning of “suffering” (as in “the Passion of the Christ”). Four hundred years later it took on a new meaning, “sexual desire,” and in the 17^th century became synonymous with “deep, overwhelming emotion”—often caused by love or anger. And now? “Passion” sometimes means “enthusiasm,” sometimes “self-sacrifice,” and sometimes “a word we use to convince ourselves the long hours and tedious work are worth it.”

If you’ve been thinking about using the P-word in your own company brand, I suggest you first take this little quiz. Simply match the passionate slogan with the company—or even just the industry—that created it. Warning: although many of these slogans and brands are national or even global, I don’t expect anyone to ace the test. In fact, it’s so tough that more than two correct answers qualify you as a Passion Pro.

Answers after the jump.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

More commentary after the jump . . .

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

An entire experience designed as an altered reality. Sounds like science fiction, but drop yourself into Las Vegas and you will likely see the world from a new perspective. The full bombardment of your senses is real but nothing around you really is. You feel real marble inside palaces meant to emulate palaces in Rome. You walk under the Eiffel Tower to enter a casino and look up to see painted clouds. In this case the opposite of real isn’t fake, but rather recreated reality that defines the Las Vegas experience.

Consider the experience of visiting Paris, France, and going to the top of the Eiffel Tower, touching the metal, smelling the grass, seeing the views. That experience isn’t trademarked, patented or protected in any form, to my knowledge. Now, when you consider an average American’s chance to walk under the “real” Eiffel Tower, the Las Vegas recreated version may inspire a visit to the real cultural icon in Paris. But, more likely it offers an alternative reality and what you’ve seen is your new reality. “Why go see the real Eiffel Tower when we’ve seen it in Las Vegas.” Does this equate to eating at a French restaurant makes you want to visit France? Maybe. But when does the altered reality become the new reality? When does a copy of an experience like the Eiffel Tower have an impact on how many people visit France? Or alternatively, if a replica of the Statue of Liberty existed in Tokyo, Japan, how would that impact travels to New York ? 

The design of experiences has been happening since the beginning of time, sometimes thoughtfully and others not as much. And, those that become iconic are often replicated by others. The Eiffel Tower is one of many modern examples. The Eiffel Tower is a designed experience and should offer certain rights and protections. Although authenticity can be felt by any average individual, there is a point where an altered reality impacts what is real. It would be a sad day when someone believes they’ve visited the Eiffel Tower after leaving the desert of Nevada.

No disrespect to the City of Las Vegas, you certainly have it going on, and I have seen your share of attempts by others to replicate the Vegas experience elsewhere.

Take a guess which version of the Eiffel Tower you are looking at here.

The experience of Las Vegas: What was your last memory of a family vacation?

—Aaron Keller, Capsule

• 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

What does this image signify to you?

For full credit, please answer the question before peeking back at Dan's popular post called "I See Blue Ovals."

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

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

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

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

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

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

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

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

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

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

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

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

UPDATE: Here.

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

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

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

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

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

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

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

More than a few trademark types cringe when their clients or others say things like "let's trademark it," "they didn't trademark their logo," or "we don't want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “'Trademark' is not a verb. There is no such thing as 'trademarking' a word or phrase." Similar views are expressed here, here, and here.

Perhaps any cringing may result from the fact that the Lanham Act -- the federal trademark statute -- defines the word "trademark" as a noun, not a verb or adjective:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof --

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Section 45 of Lanham Act, 15 U.S.C. 1127.

Turns out though, the words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; 'trademarked goods'".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

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

Harvard, celebrated as the birthplace of the American university, collegiate tomfoolery, and Al Gore and Tommy Lee Jones’ friendship, has done what every second celebrity seems to be doing these days by starting its own clothing line, aptly named Harvard Yard. 

It's certainly nothing new for universities to license use of their names in connection with t-shirts, baseball caps, and even cut glass stemware. Such paraphernalia provides college students, alums, and fans with instant spirit wear for the next football game and is lucrative enough to guarantee numerous colleges millions of dollars a year. Adding to the sweetness is the fact that for every $35 sweatshirt a university sells, its purchaser is providing the school with countless moments of free advertising.  

So what’s really notable about Harvard’s recent partnership with Wearwolf is the fact that the neither the HARVARD name nor the university logo will appear anywhere on the pair’s clothing line.

Instead, the line will feature upscale menswear, including tailored dress shirts, fine wool sweaters and, dare I say it, fancy pants, all of which will bear the most subtle of Harvard touches – buttonholes, collar plackets and the like all in the shade of crimson. For the uninitiated, the use of crimson is a fine bit of self-reference, as Harvard’s mascot is the Crimson.

What’s equally interesting about Harvard’s creation of the line is the speculation behind Harvard’s reason for entering this line of business. Apparently, the blogosphere has gone wild about Harvard Yard, with some stating that the line “screams old-school elitist” and others theorizing that the line is a creative solution to the havoc wreaked on Harvard’s endowment by the recession.

In truth, the Harvard created the line to supplement financial aid, a fact that has been reported but has done little to quell the criticism launched at the university. One wonders what the detractors would think if they knew that, back in 2007 and long before university endowments and 401(k)s went on a freefall, Harvard filed an intent-to-use application for HARVARD YARD in connection with finer cuts of clothing.

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

A couple of weeks ago, news reports came out that KB Toys, which had filed for bankruptcy in December, sold its trademarks and domain names to a company called CE Stores LLC for $2.1 million.  Last week, Toys "R" Us disclosed that it owns CE Stores.  While this may be somewhat unremarkable, consider that Toys "R" Us has made the following other moves this year:

• In February, it purchased eToys.com, babyuniverse.com, and ePregnancy.com for an undisclosed amount.
• In March, it purchased Toys.com for $5.1 million.
• In May, it purchased FAO Schwartz for an undisclosed sum.

Well, looks like all of our toys now belong to Toys "R" Us.  Let's hope they don't pick them up in a huff and go home.  I am fairly certain that there are no other national bricks and mortar toy retailers left (not counting department stores), and I wonder if the Federal Trade Commission will snoop around for antitrust compliance issues.  (Toys "R" Us has been down that path before.)  In the meantime, good luck finding competitive deals on toys!

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

Clients and friends have enjoyed passing yesterday's Dilbert cartoon on to me, just for fun (I think).

So, for those of you who weren't sure we could take not only a lawyer joke, but a "trademark infringement lawyer" joke, read on:

Having said that, I think we already demonstrated our ability to self-deprecate with the best of them, by adopting our favorite cartoon labeling the "trademark attorney" as "the most basic figure," here.

OK, show of hands, how many of you have left the world of patents for trademarks?

For a post that points out the confusion between patents and trademarks, see Techdirt.

One more show of hands, how many of you are billing by the hour?

I have no more questions.

Likelihood of Confusion, weighs in on the subject, here.

For perhaps the most detailed and cat-like analysis of the subject, see IPKat, here.

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

When it comes to scope of rights and trademark enforcement, as a trademark type, it's hard not to admire Adidas' success in preventing the use of two, three, and four stripes, when its long-standing federally-registered design mark consists of three stripes.

At least in the U.S., Adidas appears to have gained a one stripe buffer on either side of its powerful three stripe iconic symbol, so advocates for Adidas might say 2, 3, or 4 stripes, and you're out (of luck anyway).

(For some great coverage on Adidas' recent trademark enforcement activities, check out Seattle Trademark Lawyer).

How can it be then (within the hospitality industry), that no analogous buffer exists between 4&5, Motel 6, Big 7 Motel, Bel-Air Motel 7, Big 7 Motel (Chula Vista, California), Big 7 Motel (Valdosta, Georgia), Magnificent Seven, Seven Days, Super 8, and National 9 Inn, with them all happily coexisting (apparently) without any likelihood of confusion?

(Also, how can it be that Super 8 (apparently) doesn't control the Super8Inn.com domain?)

Perhaps it all comes down to what your trademark strength and likelihood of confusion analysis happens to count, stripes or numbers . . . .

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

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

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

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

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

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

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

Until they sued.

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

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

Ick.

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

—Megan Langley Grainger, Bereskin & Parr LLP

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

Today is a really, really big day for trademark types.

As many of us have been saying for a couple of years now, trademark fraud (i.e., fraud on the U.S. Trademark Office) continues to be one of the hottest issues facing trademark owners and the attorneys who represent them. Perhaps after today, not so much, but who really knows, we'll see.

For those not already plugged into the issue of trademark fraud, most mark the 2003 decision of the Trademark Trial and Appeal Board (TTAB) in Medinol v. Neuro Vasx, as the starting point for a much lower, and easier to prove, standard of fraud.

After Medinol, if a trademark owner knew or "should have known" it made a material false statement to the Trademark Office, the entire resulting trademark registration was subject to cancellation at any time. Since then, and following the reasoning in Medinol, the TTAB issued numerous decisions granting opposition or cancellation of trademark applications and registrations on fraud grounds, causing trademark owners and their attorneys great concern with what many have called a strict liability standard, not one based upon an actual "intent to deceive" the U.S. Trademark Office. Most of these cases have fallen into the "overinclusive" goods and services category of fraud cases -- basically, cases having sworn statements that the applied-for mark is currently in use in connection with all of the listed goods and services, when in fact, something less than all the goods or services are actually in use with the mark.

For those interested on the development of the trademark fraud issue, here is a pdf of my slides for a talk I gave in January 2008, at LAIPLA's Washington in the West continuing education conference.

As some of you may recall, during several of my talks over the last two years, I have figuratively flashed a yellow light and cautioned that the CAFC -- the TTAB's primary reviewing court --  has not been heard on the subject of trademark fraud for quite some time, and it has not been clear to me that the CAFC actually would endorse the TTAB's easier to prove fraud standard in the Medinol line of cases. Today the CAFC weighed in on the subject.

Earlier today, the United States Court of Appeals for the Federal Circuit (CAFC) decided In re Bose, a long-anticipated decision on what it takes to establish fraud before the U.S. Trademark Office. In doing so, the CAFC flashed a red light, indicating the TTAB had read "too broadly" prior CAFC precedent that had mentioned the words "should have known," and it specifically reaffirmed "that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO," and it further redirected the TTAB: "Unless the challenger can point to evidence to support an inference of deceptive intent, it has failed to satisfy the clear and convincing evidence standard required to establish a fraud claim."

So, after today, trademark fraud still exists, and it can be proven, provided it is "proven to the hilt," with "clear and convincing evidence," leaving "no room for speculation, inference or surmise," and so long as "any doubt must be resolved against the charging party." Basically, "deception must be willful to constitute fraud." [Here is a link to a pdf of the CAFC's Bose decision].

Hat tip to John Welch of the TTABlog for alerting his followers of the CAFC's decision published first thing in the morning today.

My more detailed perspectives about the CAFC's Bose decision will follow later.

Also, stay tuned, because we continue to await the CAFC's fraud decision that it is currently reviewing in Grand Canyon West Ranch, LLC v. Hualapai Tribe.

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

Well, at least in the trademark arena, a Beatles heir defeated a preliminary injunction motion brought by the wife of the lead singer of U2.  The dispute centered around Stella McCartney’s launch of the perfume “STELLANUDE” last weekend. 

Bono’s wife, Ali Hewson, is an owner of the cosmetics company Nude Brands Co., Ltd. Her company owns the European Union trademark on “NUDE” in capital letters and the United States Trademark for NUDE.

Bono’s wife brought a motion for a preliminary injunction to prevent Paul McCartney’s daughter from launching her new perfume. The English High Court denied the injunction because the delay in selling Stella McCartney’s perfume would cause massive disruption to the company and cost millions of pounds to the company (i.e., advertising, packaging, etc.).

Of course, this may only be a battle victory for Ms. McCartney and her company. Bono’s wife and her company intend to fully pursue the trademark infringement claim to trial. Mrs. Bono may still ultimately win the war over the “NUDE” trademark.

Would the result be different in the United States? 

As I blogged about recently, a federal court in New York took a different view regarding a trademark issue involving eBay than the courts in France and Germany had taken on the issue. Similarly, some United States courts have differed in their treatment of preliminary injunction motions in the context of a trademark dispute than the English High Court involved with the “NUDE” trademark case. For example, the United States District Court for the District of Minnesota recently issued an injunction in a trademark dispute applying the long-standing (at least in the United States) presumption of irreparable harm in the case Gold’s Gym Licensing LLC v. K-Pro Mktg. Group, Inc., No. 09-CV-1211, (D. Minn. July 28, 2009).  If the presumption was applied, Mrs. Bono may have had more luck with her preliminary injunction motion in the United States courts. Yet, the applicability of this presumption across courts in the United States is an open question in light of the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 U.S. 388 (2006)—declining to apply the presumption in a patent case.

• Email This
• Print
• Comments
• 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

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

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

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

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

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

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

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

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.