Duets Blog : Creativity and the Law: DuetsBlog

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

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

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

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

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

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

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

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

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

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

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

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

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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®

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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.

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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®. 

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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.     

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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.

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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:

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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?

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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?

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

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

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

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

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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.

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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?

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

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

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

XBOX has adopted a 3D design. 

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

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

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

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

--Alan Bergstrom, Brand Insights

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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.

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

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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".

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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.

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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?

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

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

Some possible considerations and the answer below the jump.

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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.

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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

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I, like most women, want a present in a little blue box from Tiffany & Company (a/k/a Tiffany & Co.) This is not just because the company bears my name (I only wish I were an owner of the company), but because Tiffany & Co.’s exquisite jewelry is associated with the fabulous blue box.  Tiffany & Co. has been around for over 170 years. The mystique of Tiffany & Co. was enhanced by the movie “Breakfast at Tiffany’s” starring the beloved Audrey Hepburn. To protect this long-established brand and trademark that epitomizes luxury and attentive customer service, Tiffany & Co. took to the courts to obtain protection from Internet sales of counterfeits.  

eBay has become a hotbed for counterfeit sales of many high-end products. To assess the impact of this practice, Tiffany & Co. embarked on two buying programs where it bought products that had been represented to be authentic Tiffany & Co. merchandise on eBay. The overwhelming majority of these purchases, as much as seventy-five percent, were fakes. 

To combat this trademark infringement and dilution, Tiffany & Co. sued eBay in 2004 alleging that eBay had facilitated and allowed these fake or counterfeit items to be sold on its website (bringing six causes of action, including various trademark infringement, dilution and false advertising claims under the Lanham Act). Last month, a New York District Court found that Tiffany & Co.—not eBay—was responsible for protecting its brand and trademark on the auction site. In other words, eBay is not responsible for keeping its users from selling fake jewelry with the Tiffany & Co. name. eBay is only required to take appropriate action when it receives notice of the infringement, presumably from Tiffany & Co. Not surprisingly, Tiffany & Co. has appealed this decision to the United States Court of Appeals for the Second Circuit. 

Does this decision ignore an important tenet of the Lanham Act—that it is supposed to protect consumers and trademark owners? Should eBay and other sites such as Amazon.com have independent obligations not to contribute to trademark infringement (i.e., policing their websites)? 

Several other high-end companies have sued eBay in Europe and have fared much better than Tiffany & Co. did in the United States.   A French judge ordered eBay to pay 40 million euros (in light of the current low value of the United States dollar, this would translate to $63.2 million) to LVMH Moёt Hennessy Louis Vuitton over charges of selling fakes. Similarly, the German courts held that eBay must employ preventative measures against the sale of fake Rolex watches.  Unless the Second Circuit overturns the New York District Court’s decision, consumers and trademark owners will receive more protection in Europe than in the United States. Should American courts be more friendly to trademark owners?

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Tommy has a lot to offer in advancing the recognition of certain kinds of non-traditional trademarks, especially touch marks. Yes, The Who's tune from the Tommy Soundtrack "See Me, Feel Me / Listening to You" repeats these lyrics over and over: "See me, feel me, touch me, heal me."

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

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

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

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

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Notice anything special about this pair of photographs featuring two different Holiday Inn front entrances? OK, putting aside that the one on the right -- with green lighting -- seems to have attracted, at least, a few cars, whereas the "blue light special" on the left appears to stage a full house with virtually every room light on, but ironically it reveals an empty parking lot.

Well, these aren't ordinary photographs, they are trademark specimens of use; Six Continents Hotels, owner of the Holiday Inn brand, claims that they depict a pair of non-traditional trademarks, having filed them with the U.S. Trademark Office in April 2009, and asserting that use of the "lighting" marks commenced back in January 2008. So, we aren't talking about the new H logo previously blogged about here or the old Holiday Inn word mark -- those are standard and traditional single-letter logo and word trademarks. In case you're wondering, no sign of any red or yellow lights for Holiday Inn, at least, on the Trademark Office database.

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Kimberly-Clark® is no stranger to securing federal registrations for its various non-traditional trademarks. No doubt, these unconventional trademark assets are of great commercial value and an important part of K-C's evolving business strategy and intellectual property portfolio.

My previous post about the oval-shaped facial tissue container K-C was able to federally register in November 2007 is linked here. That post also discussed their current non-traditional trademark application covering a "textured alternating dot pattern appearing on the surface of the carton of disposable paper hand-towels." By way of update, it was initially refused registration in April, but the application remains pending, as can be seen here, with no response due until October 2009.

Kimberly-Clark® has non-traditional, single color trademarks too:  

In fact, I recently came across a pair of their federal trademark registrations for "the color purple," one obtained in 2002 and the other in 2006. The differences in the description of goods between these two "color purple" registrations help make a point that is quite important to both marketing and trademark types, namely, the importance of keeping registered trademark scope current and consistent with the underlying and evolving business scope.

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

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

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

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

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Full disclosure: I am a huge fan of Method products. They are non-toxic, smell good, they come in the kind of stylish product packaging that you can display on any countertop, and they work. So it should come to no surprise that Method is a brand with fans. What other manufacturer of toilet bowl cleaner can you think of that has a blog not just entirely devoted to it, but uses the word “lust” to describe such devotion?

Last month, ANA Advertiser On-Line Magazine featured a great interview with co-founder and Chief Brand Architect of Method, Eric Ryan, which may explain some of the adoration. Although formed during a recession and competing with companies such as Clorox, Procter & Gamble, and S.C. Johnson for shelf space, Method enjoys high (and growing) awareness among consumers. Mr. Ryan explains that Method competes with the Goliaths in its industry by “shift[ing] the conversation” – the branding conversation. Smaller, private companies (like Method) simply don’t have the budget or the longevity to stand up to long-established brands on those brands’ terms. So instead of talking the talk of its competitors, much of which goes to the work that their products do or don’t do, Method “shifts the conversation,” by promoting the non-toxic qualities, pleasant fragrances and cool designs that make up the overall Method design aesthetic.

In short, Method competes by not competing in the traditional sense, but by building brand awareness through non-traditional trademarks, previously blogged about on this blog, by associating stylish sights and smells with its products. It just goes to show that brand loyalty isn’t necessarily dependent on brawn and budget. Chalk one up for the little guys.

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

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

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

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

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

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

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

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

   Vs.   

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

—Burt Alper, Catchword Branding

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

G GLEUKOS is a federally registered trademark for sports drinks.

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

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

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What is it about some advertising campaigns that make them magnets for imitation?

For example, the Got Milk? imitators appear to be endless in numbers, but that is the subject of another post for another day. 

For today, with respect to a different imitation magnet: There must be an endless number of creative and original ways to market a series of home and self defense videotapes, I suspect. Even relying on fear as an underlying theme to sell these videotapes, there must be only a few less than infinity still possible.

So, why the need to borrow from a famous ad campaign here -- one I won't mention until after the jump below?

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

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

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

So, the Golden Arches can probably stand alone.  

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

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

What do you think about this one?

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

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

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

How about the International or American Red Cross?

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Building a packaging brand seems simple at the outset. The only problem is you have to understand what the consumer wants and expects in their product packaging. That consumer is on the move too. They are time crunched, overworked and overwhelmed with information and even worse you have only 2.6 seconds to convince them to pick up your product for a closer look. So how can you "connect your message" with the consumer?

The package has an immense role to play. Besides transporting, protecting and keeping your product secure consider what other things the package is doing simultaneously: educating about what's inside or how to use the product, helping the consumer to make an informed purchasing decision, making it convenient and easier for the customer to use, providing a sense product integrity and trust in your brand. Heard enough? Can your package meet these criteria?

It's the emotional connection that builds today's brands. How you make that connection is what separates successful brands from those that fail to make the grade. The package needs to "engage" the consumer by clearly stating value, benefits and reasons why a consumer should make the purchase. How will purchasing the product make someone's life easier? How easy or convenient is it to use? How does it mesh with the consumer’s lifestyle? And most importantly, what's in it for the consumer once they make the purchase?

So what constitutes compelling packaging brand? How "connected" are you to your consumer? Here are a few emotional descriptors that your packaging must convey. Does your packaging Engage, Evoke, and Engross the consumer?

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Remember what you were doing back in September 2006? 

Keyword ad trademark infringement lawsuits were being filed left and right (that hasn't changed much). The hot issue at the time: Does the sale (by a search engine) or purchase (by the competitor of a brand owner) of another's trademark -- as a search engine keyword -- constitute "use in commerce," a necessary element of a successful trademark infringement lawsuit?

Search engines and other defendants were hoping that the technical "no use" defense would permit a short-circuiting of these growing number of lawsuits. In fact, this hope was fueled on September 28, 2006 when Google had just prevailed in dismissing such a lawsuit brought by Rescuecom.

A federal district court in New York had dismissed the Rescuecom suit, saying that the sale of Rescuecom's trademark as part of Google's AdWords program did not constitute a "use in commerce," so there was no need to even consider the question of likely consumer confusion. For the next few years, other courts followed suit (mostly in NY) and similarly short-circuited and dismissed such claims.

As of last Friday, two and a half years after Google's initial win, and a full year after oral arguments were made to the Second Circuit Court of Appeals, Rescuecom may be singing, "We're back!"

In reversing the September 2006 dismissal, the Second Circuit Court of Appeals found sufficient trademark "use" for the case to proceed, relying on Rescuecom's allegation that "Google displays, offers, and sells Rescuecom's mark to Google's advertising customers when selling its advertising services. In addition, Google encourages the purchase of Rescuecom's mark through its Keyword Suggestion Tool." As such, the Rescuecom case will proceed and is sent back to the federal district court in New York to determine "whether Google's actual practice is in fact benign or confusing."

The Trademark Blog provides a helpful link through Scribd to obtain a copy of the court's 15-page decision (including the 19-page Appendix) here.

Professor Eric Goldman's detailed analysis can be found at his Technology & Marketing Blog by clicking here. 

You might remember my keyword advertising post on DuetsBlog from a couple of weeks ago here.

Bottom line: It appears that this latest ruling will pave the way for decisions that actually rule on the critical likelihood of confusion question.

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"Buy low, sell high. Fear? That's the other guy's problem."

Can you name the origin of that quote?

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

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

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

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

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

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

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

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

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

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

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

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Do you recognize this logo?

Does it make you hungry?  Ok, maybe not.

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

CHEWNIVERSITY

CHOMPENSATION

SATISFLYING

ANTIHUNGERESTABLISHMENTARIANISM

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

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I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins. Being able to own and enjoy exclusive rights on "day one"—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything. Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed). On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all. So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.

As the opening paragraph suggests, trademarks are not all created equal. Inherently distinctive trademarks are the obvious target, the gold standard, for brand names because they are always recognized and rewarded with immediate legal rights. Courts view these marks as sufficiently creative and unique to presume they function as trademarks, believing without proof they automatically identify, distinguish, and indicate source. Inherently distinctive word mark examples include KODAK for film (coined trademark), APPLE for computer (arbitrary mark), and COPPERTONE for suntan oil (suggestive mark). Descriptive marks, on the other hand, while capable of being owned and acquiring distinctiveness, are not inherently distinctive. In fact, they are inherently lacking in creativity, so those who pick (not create) these designations must live with the uncertainty of when, if ever, exclusive rights attach. Owning them takes longer, is more expensive, and is more difficult. This is because the law refuses to presume a trademark function with the use of descriptive terms. Nor does the law reward those who choose to "hit the consumer over the head" with such a blunt device (would-be trademark); one that immediately and overtly describes something about the product. As a consequence, picking (not creating) a descriptive mark, brings a state of limbo for an unspecified period of time, where there can be little or no control of destiny. These folks typically have to hope others voluntarily steer clear until after acquired distinctiveness is achieved. For example, the CALIFORNIA PIZZA KITCHEN mark was used for six years before those words were owned as a federally registered mark. A lot can happen in six years to get in the way of obtaining exclusivity. Generic terms, even worse than descriptive ones, apparently "hit the consumer over the head" so badly with the obvious connection to the goods that they are incapable of being trademarks—they cannot be owned, they are simply part of the public domain, free for all to use. Examples include LITE for beer and BRICK OVEN for pizza—both name entire product categories, they don't identify, distinguish, or indicate source. There is simply nothing creative about them.

So, if "hitting the consumer over the head" is not a rewarded activity for branding professionals, where is the other half of the lesson, the promised paradox piece? Actually, there is a time and place for everything and being blunt, direct, and overt is not always a mistake for marketers. At times, bluntness and overtness is not only rewarded, but an important component for legal success. The key is knowing and understanding those circumstances where "hitting the consumer over the head" is appropriate, beyond repeated purse-snatching or shoplifting episodes, of course. This is where the paradox comes into play.

As you may recall, we previously blogged about some types of non-traditional trademarks here. Non-traditional trademark formats extend far beyond words and logos, encompassing any other subject matter that may be perceived by one or more of the five senses, provided they still identify, distinguish, and indicate source. Color, product configuration, product packaging, uniforms, restaurant interiors, building exteriors, sound, touch, scent, and taste, all have potential. What we haven't explained before about many types of non-traditional marks is that the law can be quite skeptical of them, and as a consequence, proof that they actually function as trademarks can be helpful in easing the skepticism. When such proof is required, the target, or the gold standard, is being able to point to "look for advertising"—consumer communications where one directly informs of an intention to treat non-traditional subject matter as a trademark. So, "hitting the consumer over the head" with this blunt and overt "look for" advertising can be necessary and important, if not critical. Because the Trademark Office or a court might be highly skeptical of a claimed trademark in the polka dot background of a product label, it may want to see evidence that the claimed trademark owner was blunt in stating its intentions on packaging and in advertising, "Look for the Polka Dot Label, as a sign of high quality milk from XYZ Company." Perhaps the mark is the container itself, so "Look for the unusual shape of our milk container to be sure you are getting high quality milk from XYZ Company" is needed. These very overt kinds of marketing statements are a common element of many successful efforts to protect various non-traditional, yet visual trademarks. Most such statements are boring, pedestrian, and not very creative. They seem to distract from other important messages to convey. One good exception is the "What Can Brown Do For You?" tagline, used by UPS, to reinforce a more creative form of "look for" advertising to acquire exclusive rights in the color brown for the various services it provides.

As non-traditional trademarks proliferate, the brand new challenge of creativity will be in developing the legal equivalents of "look for" advertising when marks touching the other non-visual senses are involved. Using the admittedly clunky "look for" phrase won't even work when something other than a consumers eyes need to experience the claimed mark. The challenge there will be in coming up with creative and engaging ways to be overt about the intention of having consumers experience the subject matter in question as a trademark.

So, when creating and building new brands, consider whether being blunt and overt or subtle and suggestive, is the right course of action, to achieve your desired result.

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There is certainly a lot of buzz in the news these days about “Stimulus Packages” and how they might be utilized around the globe to spur economic growth and permit us all to resume our active pursuit of prosperity. Let us not forget that a brand (and the underlying trademarks that provide for the legal protection of the brand) is a rather potent “Stimulus Package” in its own right. Indeed, brands and trademarks are discrete packages of information that can stimulate any of the five senses to make a purchasing decision and spur economic growth for the brand owner and any licensees. Let us also not forget that there is much more to a brand than a name:

“By developing branding tactics that extend beyond mere naming and logo design, creatives who collaborate early with competent trademark counsel can assist their clients in finding new ways to accomplish the goal of differentiation. The non-traditional brands of tomorrow will only be limited by the creativity of those involved in the process. Who will be the first to brand eyeglasses by the taste of the tip that rests above the ear. Who will be the first to brand ballpoint pens by the taste of the cap?”

Perhaps now is the perfect time to follow Stevie Wonder’s example in developing and exploiting brands and trademarks that "touch" much more than our senses of sight and sound.

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