With a tip of the cap to Mark Shea, the sheer emptiness of this tagline has never occurred to me before.  It has always registered in my mind as a promise of sorts that Geico’s rates are on average fifteen percent cheaper than those of other insurers.  Obviously, when you look at it, it is no such thing.  It is a highly specific non-commitment.  The specifics of “fifteen minutes, fifteen percent” have always lodged in my brain, but not the lack of commitment that I “could” save.  Well, I could not save, too.  Very clever.

The more widespread approach to avoiding false advertising liability seems to be to avoid specifics.  Here in the upper midwest, the classic example is the home improvement store Menards.  Menards’ tagline is “save big money,” which it relentlessly repeats in its jingle (example here).  Steve has commented before both on “Save Big” promises and the Menards jingle here.  Interestingly, the jingle does commit, “you’ll save big money when you shop Menards,” but “big money” is a relative, non-specific thing.  Another example is Wal-Mart’s “always low prices.”  Also a non-specific, unmeasurable commitment.

The Geico approach of specific non-commitment has its limits.  What if Geico said, “fifteen minutes could save you fifty percent or more”?  The magnitude of a fifty percent savings highlights the issue: if it could be proved that no customer has ever saved that much, then the claim is probably misleading, if not false. (Or is it?  Just because no customer has ever saved that much does not mean that no customer ever could. Nevermind the difficulties in trying to prove the matter, which would almost certainly have to be a detailed statistical analysis.) My guess is that many Geico customers have saved “fifteen percent or more,” so the claim that you could save that too is probably neither false nor misleading. So go ahead, you could save.

To be fair, this is a bit of comparing apples and oranges, given that Windows is an operating system and iPads are devices.  Nevertheless, Apple’s decision to abandon a generational numbering scheme for the iPad garnered some commentary at the time that it was rolled out.  I wonder if Microsoft’s continued use of “generational” numbering (very loosely construed) will draw comments.

Wikimedia commons has an interesting family tree of Windows products here, reproduced below:

One wonders at the naming processes and stories behind each generation.  I’d venture to guess that some generations had heavier naming input from developers and engineers, while others probably had stronger input from marketers and naming consultants.  Maybe this surmise offends marketers and naming consultants.

Interestingly, when it comes to the Mac operating system, Apple has been much more consistent with a relatively straightforward generational numbering scheme, as detailed here and illustrated here.  Apple basically just counts each iteration of its operating system.  Microsoft, to the degree it counts, counts badly.

As an aside, Gen X’ers and older will also appreciate that the Mac OS used windows (lower-case) well before Microsoft did.  Prior to the Windows operating system, the Microsoft OS was MS-DOS — a very much windowless system requiring line commands to be entered at a prompt, like this:

C:\>

(If you are tilting your head sideways, cut it out.  It is not an emoticon.)  For you younger types (who are not computer programmers), go ahead and figure out how to run a computer with that staring you in the face and no mouse, trackpad, or other pointing device to aid you.  It is loads of fun!

Back to the main point.  To be fair, it is not necessarily easy to see at the outset of a naming project whether or how a product will evolve over time, but when it comes to computing devices and software, it has long been a safe bet that these will evolve over time.   There is value in building the possibility of evolution and expansion into the name, or at least the naming process.  The vision at the front is also worth recording in a brand standards manual or naming brief so that the next marketing director will have  a clue about the long-term vision and direction.

It is also worth considering the long-term requirements for protecting multi-generational names from a legal standpoint.  For example, while Apple maintains an iterative generational numbering scheme and has just two US trademark registrations for MAC OS, it has taken to naming iterations of the current OS X with feline names, like Lion, Mountain Lion, Leopard, Tiger, etc. with each protected by its own federal registration.  As a practical matter, it may be difficult to maintain trademark protection over these names as each version is superseded.  For the most highly valued publicly traded company in the world, a few thousand on a disposable trademark registration is probably not terribly significant, but the rest of the business world may have to judiciously budget for these things.

Computers and computing devices have seen numerous revolutions in the past fifty years or so, but few of them in naming and branding.  Here’s hoping for a naming revolution that does more than count (and count badly).

This 90 second video has more than four million views on YouTube in just over a month, and I must say, it really scratches me where I itch.  I can’t remember when, but several years ago I swore to myself that I would never, ever, buy another Gillette shaving product for as long as I lived.  I liked the Gillette Sensor.  I tried the Sensor Excel, but found that it provided an inferior shave to the Sensor.  So too with all of the subsequent generations of Gillette razor products.  Then there were price increases in the Sensor, then scarcity.  It was forced obsolescence, and I was done with it.  I have found other products that work well, and Gillette does not make them (well, Gillette at least is not listed as the maker–they could be private label products).

Yesterday, the Wall Street Journal published this piece on Dollar Shave Club.  Forbes published a blog post here.  It is mind-boggling to me that this start-up – a company that currently employs six people – has gone from unknown to the subject of WSJ and Forbes stories in a couple of months.  Dollar Shave Club has 25,000 likes on FaceBook and almost 15,000 Twitter followers.  Prior to the advent of social media, this sort of customer exposure would have been impossible without a multi-million dollar advertising and media blitz.  Now, it is possible with one well-crafted video that has gone viral (which, as TechCrunch once pointed out, is not simply a matter of serendipity).  It helps that the video is humorous, and it helps even more that the target of the humor is a relatively easy target, at least right now.  It also helps that the video is professionally done and has a high production value while maintaining a sense of feeling low budget.  Dollar Shave Club clearly spent some money on this, but probably not multi-millions.

A start-up still needs a good vision, a good business plan, a good name, and a good source of capital.  A start-up is also well advised to spend early marketing dollars on new media rather than old media.  But it is now theoretically possible to hit the market and make a splash with little more than a home computer, a shoestring budget, and some time and dedication.  As with all things, and as both Forbes and the WSJ pieces point out, the true test of success is not four million views on YouTube, but the test of time – turning the initial splash into long-term success.  We will see if Dollar Shave Club can turn this splash into such success.

Humana raised the issue of likely confusion and trademark infringement with Preval by letter in late 2011, but the issue took on greater urgency earlier this month, as Preval advertised its CONCENTRA memory pills during one of Limbaugh’s controversial episodes.  In the resulting backlash against Limbaugh’s advertisers, Humana’s Concentra Health Services, who does not advertise on Limbaugh’s program, received a great deal of negative feedback, particularly via social media and electronic channels, including some pointedly negative comments from referral sources, swearing never to refer clients to Concentra’s services.  As a result, Humana sued Preval on March 7, and the matter settled within two days.  It appears that Preval has rebranded its CONCENTRA memory pills as “IQMIZE.”  (See regainyourmemory.com.)

A significant issue in this case, and one worth considering in many cases of potential infringement, is that concentra.com is Concentra Health Services’ home page.  Preval’s CONCENTRA product page resided at regainyourmemory.com.  People concerned with targeting Limbaugh’s “Concentra” advertiser likely knew one name only:  CONCENTRA.  Between the concentra.com domain name, Internet search results for “concentra,” and the fact that it is not a stretch to consider that a company called Concentra Health Services might be the source of a homeopathic “memory pill,” it is not surprising that Concentra Health ended up in the crosshairs of many folks.  It isn’t right, but it isn’t surprising.

In my opinion, many people assume that a company advertising goods or services under a particular mark likely owns an obvious domain name that incorporates the mark.  Trademark law permits Delta airlines, Delta faucets, and Delta power tools to coexist because there is little to no overlap or association amongst the three companies’ goods and services, but there is only one delta.com.  While this does not mean that companies should be entitled to broader protections for simply owning a desirable domain name, it does suggest that brand owners should pay close attention to potentially infringing marks that are identical to (or phonetically identical to) domain names owned by the company.  If another company hits the press in a bad way (think boycotts, recalls, investigations, etc.), will it end up at your company’s front door?

Cases of serious negative confusion, like the CONCENTRA case, are relatively rare, but it is a fact pattern worth considering when evaluating potential infringement.

I’ve previously commented on the likely Balkanization of the entire domain universe here. From a trademark standpoint, even so-called “generic” top-level domains have one root operator or registrar, which means that each TLD can be identified with a single source. This is the essence of a trademark. I think that it is a matter of time before there is competition over the quality of various TLD spaces. Marketing, pricing, and services will eventually become relevant to anyone’s choice about where to set up a virtual shop on the web (and we’ve started seeing it with, for instance, the .co space).

By way of reminder, March 29 is the deadline by which an entity must register with ICANN’s TLD Application System (TAS) so that the entity can apply for a new gTLD by April 12 (two deadlines for two different steps). More information is here. It also bears repeating that this is not like registering for myowndomainname.com with Go Daddy, which anybody with ten minutes and ten bucks can do. The application fee for a gTLD is $185,000, and there are some significant requirements for running a gTLD.  It is not trivial.  (There is a reduced fee program for public-interest applicants that have a financial need.  The reduced price is $47,000.)

The next big date to watch for is May 1, when ICANN plans to reveal all of the applied-for strings in this round.  It will then be time to evaluate whether defensive strategies are warranted.  More on that in May!

Well, the friendship may be over.  Folliard has moved on to be the proprietor of his own brand of whiskey, 2 Gingers, and consequently has divested himself of pub ownership.  The Local is now making The Big Ginger with 2 Gingers whiskey and not Jameson.  Jameson allegedly offered to buy THE BIG GINGER trademark in 2009, which Folliard’s companies declined.  Fast forward to last week, when a distributor evidently spotted table tents at another local establishment (local, not Local) promoting a BIG JAMESON GINGER.  Folliard has moved quickly, filing a suit this week and moving for a temporary restraining order.  A hearing date has not yet been set.

Drink trademarks are very interesting types of trademarks because they involve tastes (quite literally) and often incorporate other branded goods.  (We’ve covered this before here.)  Of particular interest in this case is some of the evidence that Folliard’s companies have already submitted, like this presser:

How about that?  According to the proprietors themselves in 2010 (and 2009 and 2008), a Big Ginger consists of Jameson and ginger ale–a claim repeated over and over through the years and many press reports.

The initial allegations in this case do not appear to reflect well on Jameson, but that is always the case with a complaint or opening brief–it is one side of the story.  Look for this one to become really interesting on the merits.

You can see the full page here.  If you read the fine print, this letter from the “United States Trademark Registration Office” is a solicitation, not an official notice from the United States Patent and Trademark Office (“USPTO”):

This is one of the more egregious examples I’ve seen.  Most modern correspondence with the USPTO takes place electronically, so it is uncommon in the first place to see hard copy correspondence from the PTO.  If a private law firm or attorney is handling your company’s trademark, it is highly unlikely that your company will receive correspondence directly from the USPTO as well.  The modern electronic forms bear little resemblance to the above document, but rewind just a few  years, and you can see some similarities (granted, government documents are not renowned for their distinctive look and feel):

The USPTO periodically notifies the public and practitioners about these sorts of scams, but you have to hunt for the notices.  I found a couple here and here, but neither discusses the “United States Trademark Registration Office.”  The irony here is that the USPTO does not have registered trademark rights in its own name.  I would think that the government probably has legal recourse, if not under trademark at common law, then perhaps mail fraud or some other statute, although the “United States Trademark Registration Office” seems to be trying to insulate itself from such an action.

A short primer on U.S. government IP rights can be found here, and you may also want to review a similar scam I blogged about last year concerning the World Intellectual Property Organization (“WIPO”).

Just this past Monday, GP won its jury trial in North Carolina, and the jury awarded GP about $790,000 in damages.  Unfortunately, being a jury trial, there is no written opinion to review or report upon.  I suspect that there will be an appeal.

So the obvious question is this:  how can GP lose its case in Arkansas, lose the subsequent appeal, then go on to win in North Carolina on substantially the same facts and claims?  Well, that’s a good question, and one that may feature in an appeal of the North Carolina case.  There is a principle in law called “issue preclusion.”  The idea is that once a party has tried a particular legal issue on particular facts, others may rely upon the outcome of that decision and hold it against the party that tried the issue.  Here, GP lost on its trademark infringement claim in Arkansas, therefore, in theory, it should lose that issue on the same facts in North Carolina.  Unfortunately, the defendant in the North Carolina case, in the court’s opinion, waited too long to raise the defense of issue preclusion, so the court denied application of the doctrine.

In my first week of law school, my Torts professor stressed the importance of procedural posture in each case and how it can affect outcomes.  This case is a good example, and the possible negative impact of the delay is amplified by a few other GP cases pending around the country:

• On Sept. 8, 2011, GP survived a motion to dismiss a suit in the Southern District of Ohio where the motion was based upon applying issue preclusion from the Arkansas / 8th Circuit case.
• On Nov. 4, 2011, GP lost a motion to dismiss a stuffing suit in the Northern District of Ohio based upon the application of issue preclusion from the Arkansas / 8th Circuit case.  GP is currently appealing to the Sixth Circuit Court of Appeals.  (The other Ohio case above is currently stayed pending the outcome of the appeal, which is likely to be binding in that case.)
• Another case pending in the District of Nevada is stayed until at least next month.  This case has been stayed since late 2010, initially awaiting the outcome of the 8th Circuit appeal, and now likely awaiting the outcome of the 6th Circuit appeal.

It looks like the North Carolina jury award will not be the final word in this matter, and even if it is, I have a difficult time believing that $800k will cover GP’s attorneys fees in five federal lawsuits and three appeals (possibly four).  It appears that GP is questing to have paper towel dispensers treated like soda fountains–insuring that the product in the machine matches the label on the front.  Unfortunately, as the 8th Circuit pointed out, even GP will sell towels for use in others’ dispensers.

We shall stay tuned to see if the score changes…

Of the ingredients that go into our fruitcakes, whiskey is the most expensive, as well as the hardest to obtain:  State laws forbid its sale.  But everybody knows you can buy a bottle from Mr. Haha Jones.  And the next day, having completed our more prosaic shopping, we set out for Mr. Haha’s business address, a "sinful" (to quote public opinion) fish-fry and dancing cafe down by the river.  We’ve been there before, and on the same errand; but in previous years our dealings have been with Haha’s wife, an iodine-dark Indian woman with brassy peroxided hair and a dead-tired disposition.  Actually, we’ve never laid eyes on her husband, though we’ve heard that he’s an Indian too.  A giant with razor scars across his cheeks.  They call him Haha because he’s so gloomy, a man who never laughs. As we approach his cafe (a large log cabin festooned inside and out with chains of garish-gay naked light bulbs and standing by the river’s muddy edge under the shade of river trees where moss drifts through the branches like gray mist) our steps slow down.  Even Queenie stops prancing and sticks close by.  People have been murdered in Haha’s cafe.  Cut to pieces.  Hit on the head.  There’s a case coming up in court next month.  Naturally these goings-on happen at night when the colored lights cast crazy patterns and the victrola wails.  In the daytime Haha’s is shabby and deserted.  I knock at the door, Queenie barks, my friend calls:  "Mrs. Haha, ma’am?  Anyone to home?"

Footsteps.  The door opens.  Our hearts overturn.  It’s Mr. Haha Jones himself!  And he is a giant; he does have scars; he doesn’t smile.  No, he glowers at us through Satan-tilted eyes and demands to know:  "What you want with Haha?"

For a moment we are too paralyzed to tell.  Presently my friend half-finds her voice, a whispery voice at best:  "If you please, Mr. Haha, we’d like a quart of your finest whiskey." 

His eyes tilt more.  Would you believe it?  Haha is smiling!  Laughing, too.  "Which one of you is a drinkin’ man?"

"It’s for making fruitcakes, Mr. Haha.  Cooking."

This sobers him.  He frowns.  "That’s no way to waste good whiskey."  Nevertheless, he retreats into the shadowed cafe and seconds later appears carrying a bottle of daisy yellow unlabeled liquor.  He demonstrates its sparkle in the sunlight and says:  "Two dollars."

We pay him with nickels and dimes and pennies.  Suddenly, jangling the coins in his hand like a fistful of dice, his face softens.  "Tell you what," he proposes, pouring the money back into our bead purse, "just send me one of them fruitcakes instead."

"Well," my friend remarks on our way home, "there’s a lovely man.  We’ll put an extra cup of raisins in his cake." 

The black stove, stoked with coal and firewood, glows like a lighted pumpkin.  Eggbeaters whirl, spoons spin round in bowls of butter and sugar, vanilla sweetens the air, ginger spices it; melting, nose-tingling odors saturate the kitchen, suffuse the house, drift out to the world on puffs of chimney smoke.  In four days our work is done.  Thirty-one cakes, dampened with whiskey, bask on window sills and shelves. 

Yum.  Merry Christmas to all!

This decision is among the first paragraphs in a new chapter of domain-related trademark issues that are arising in light of ICANN’s roll out of new generic top-level domains next year.  It is unsurprising that companies are attempting to secure trademark rights in top-level domains, since the new gTLD scheme is seemingly set up to encourage the Balkanization and proprietization of gTLDs.  Verisign, the long time "owner" of the .com gTLD, among others, used to own this registration for ".COM .NET THE WORLD’S MOST TRUSTED NAMES."  Verisign now has an application pending to register the tag line "THE WORLD IS CONNECTING BETWEEN THE DOTS," which it is using in connection with a rotating banner on its home page to promote its gTLDs–.com, .net, .gov, .name, and .tv. 

Other groundwork for this has been under construction for some time: 

• Neustar owns two registrations for .BIZ (and Design, ".biz" disclaimed)
• The Cooperative League of the USA owns a registration for DOTCOOP (i.e. ".coop")
• The Public Interest Registry owns registrations for .ORG (and Design, ".org" disclaimed)
• Telnic Limited owns registrations for .TEL (and Designs, ".tel" not disclaimed)

There are numerous implications for viewing a TLD as a trademark.  For companies that do, do they intend to license every second level domain registered in the domain space?  If not, how do they plan to maintain the association of the TLD with a single source?  The .MUSIC decision makes clear that merely placing a "." in front of a descriptive term is not distinguishing for a TLD directed at goods and services described by the term.  Would applications for .QUARTERNOTE for the same goods and services be registrable?  Is a three-syllable TLD too long to be an effective TLD?  

This site appears to be maintaining a list of announced new TLD initiatives.  As I peruse it, I do not see much in the way of creativity.  I think that the most successful new gTLDs will be ones that have at least a dash of creativity and a good marketing plan.  Internet users–both content providers and consumers–will need incentives to break out of the .com paradigm, and descriptive TLDs offer few incentives. The new gTLD initiative may eventually take off, but it will need some more creative offerings to do so.