Multiple meanings because I suspect there may be a generational divide on the obvious Starsky and Hutch brand reference (trademark data of owner Columbia Pictures can be found here, here, and here). I further suspect that the generational divide makes the reference all that more attractive given its wider scope and reach.

For baby boomers this billboard probably calls to mind the original 70s television cop series featuring Paul Michael Glaser as David Starsky and David Soul as Kenneth “Hutch” Hutchinson:

And, let’s not forget about Huggy Bear — the police snitch who loved the phrase Jive Turkey. What I had forgotten about the series is that David Soul’s character, Hutch, was the “quiet, intellectual Minnesotan,” in constrast to Paul Michael Glaser’s Starsky character, the “streetwise Brooklyn native.” So, the Minnesota-based furniture seller may be playing on that connection too.

However, non-baby-boomer furniture shoppers probably have these images in mind, along with Owen Wilson (as Hutch), Ben Stiller (as Starsky), and Snoop Dogg (as Huggy Bear):

Now, I seriously doubt that Schneiderman’s average consumer is expecting to meet David Soul or Owen Wilson on their next shopping visit, given the billboard’s “plenty of Hutch” reference, but then again, let’s not forget that the Lanham Act protects the “least sophisticated potential consumer” under the likelihood of confusion test of trademark infringement.

Our very own Susan Perera is a brand new mom, so a very special celebration for you Susan!

We have been following Rapala billboard ads for the last several years, right around the time of the fishing opener (and Mother’s Day), and the 2012 edition is shown above and to the left.

I’ll have to say, I’m not very moved by Rapala this year, past years were far more creative in my opinion:

Rapala Taunts a Monster?

Good Bye Google, Hello Whudjagiddumon?

Rapala’s More Hits Than Google Billboard

Rapala Fishing Lures: More Hits Than Google? Or, More Cats Than You Can Shake a Stick At?

Which one is your favorite?

Take the example to the right, an ad for EagleBank, a community bank operating in the Washington, D.C. area.

While mingling with more than 9,000 other trademark lawyers from around the world who have descended upon the Washington, D.C. area for the International Trademark Association’s annual meeting, I noticed an EagleBank ad in one of the Metro stations, sporting the tagline “We’re listening” — positioned directly beneath the EagleBank name and logo.

My first thought was, I’ve heard about “eagle eyes” and the superior vision of eagles, but I’ve never associated eagles with exceptional hearing, much less listening skills.

Believe me, after nearly twenty-five years of marriage, trust me, I do know the difference between listening and hearing, but I think even my wife would agree hearing is a prerequisite to listening, so I’ll continue along this line of thought without skipping another beat.

So, as it appears, I’m not the only one who has wondered about the hearing prowess of the national bird, and as it turns out, eagles hear no better than humans. Since eagles are not renown for their hearing, but they are distinguished by their incredible sight, why associate tagline messaging around ears when the bird having exceptional sight is at the core of the brand’s name?

There actually is a phrase known as “eagle ears” — unfortunately for EagleBank, it means: “Someone who claims they can hear everything but cannot.” Ouch, how’s that for a dose of (presumably) unintended irony?

Earlier today Mark Prus wrote about the importance of checking for unintended and inappropriate meanings of brand names in foreign languages — I’m thinking that checking the Urban Dictionary for slang meanings might be as important too.

Interestingly, EagleBank’s website sports a different tagline: “Focused on You.” And, without a doubt, this tagline seems much more compatible with the EagleBank brand name.

Perhaps D*MNGOOD, the creative agency of record for EagleBank, is actually that, and noticed the need to bring some consistency between the brand name and tagline, but they’re still working through the old print media?

What do you think, how important is it for a brand name and the associated tagline to work together and avoid unintended irony?

Trademark types are anxiously waiting to hear whether the district court’s denial of Louboutin’s requested preliminary injunction against YSL’s monochrome red shoes will be overturned (hard to imagine at this late date) and whether the district judge’s skepticism about single color trademark ownership in the fashion industry will be rejected (much easier to imagine at this late date).

British Vogue is keeping up to the minute on the dialogue between the parties through their comments to the media. And, back in October 2011, Fashionista reported that a decision from the Second Circuit was expected in early Spring 2012 “if not earlier.” So, what is taking so long?

When the snow is gone in Minnesota and most of us have mowed our green lawns in the Twin Cities at least once so far, it’s at least early Spring.

Besides, we’ve already provided the appropriate road map, here and here.

Other possible road maps can be found here.

And, as you may recall, I’m not a fan of simply ignoring them, even when they are objectively baseless, because it sends exactly the wrong message back to the sender.

What I am greatly in favor of is the development of a strategic framework for responding to trademark enforcement cease and desist letters. Recognizing that trademark disputes are highly fact intensive where no two are just the same, here is a very general skeleton outline that I have found helpful in preparing responses over the years:

1. Determine the Recipient’s Goals & Objectives
2. Scrutinize the Asserted Claims & Demands
3. Size Up the Adversary, Their Counsel & Likely Goals
4. Identify Options & Recommended Course of Action
5. The Mechanics and Executing the Approved Strategy

To the extent you’d like to see more meat on these large bones, consider tuning into Strafford’s upcoming program on Trademark Enforcment, where I’ll be speaking on strategies for responding to trademark cease and desist letters. The first three comments to this blog post will enjoy free attendance at tomorrow’s webinar.

If you aren’t quick enough on the draw or you’re are unable to attend, fear not, my plan is to post a series that fleshes out each of these approaches in the above outline, one by one.

Now, when a specialty fast food restaurant chain and trademark owner adopts a tagline that includes such a basic and competitively necessary message as “eat more” — of the core food it sells – at least these trademark questions necessarily arise: is the tagline even distinctive (does it point to a single source) and, if so, how strong and broad can the rights be? I’d also add, is dilution-style fame even a possibility for such a tagline? 

As you know, we’ve been monitoring, scrutinizing, and breaking news on Chick-fil-A’s efforts to prevent federal registration of Robert “Bo” Muller-Moore’s “Eat More Kale” tagline and trademark, based on Chick-fil-A’s “Eat Mor Chikin” tagline and trademarks – still no federal district court lawsuit, as far as we know. And, as you will recall, I’ve expressed some serious doubts about Chick-fil-A’s claim of likely confusion between the “Eat Mor Chikin” and “Eat More Kale” taglines and marks.

To me, what makes Chick-fil-A’s tagline distinctive is not the words alone, but the seriously mispelled words in the black-ink dripping style, along with the conniving cows who are determined to have fast food customers eat more chicken, and less beef. Had Chick-fil-A adopted a properly spelled tagline “Eat More Chicken” without these unique elements, it is hard for me to imagine the USPTO would have registered it without a serious showing of acquired distinctiveness, and that seems highly unlikely. It would have been like Wendy’s trying to own “Eat More Beef” as opposed to the vastly more creative and distinctive “Where’s the Beef?” tagline.

Nevertheless, the USPTO Examining Attorney assigned to Muller-Moore’s “Eat More Kale” trademark application has now reversed herself (hat tip to Corsearch’s Trademarks + Brands Blog), on the talons of of a successful Letter of Protest (by the way, Geri Haight of Mintz Levin recently did a nice write-up on trademark Letters of Protest), presumably filed by Chick-fil-A, and the USPTO now appears devoted to according the tagline an enormous scope of rights, almost treating it as if Chick-fil-A’s mark were “Eat More” and not the narrower “Eat Mor Chikin”.

So, I must ask, should yours truly eat more crow or humble pie for calling Chick fil A’s trademark allegations regarding “Eat More Kale” baseless?

Or, will counsel for “Bo” be able to overcome the registration refusal for the distinct pleasure and certainty of litigating at the TTAB and having the mark formally opposed by Chick-fil-A?

And what do you make of these additional “eat more” examples? Don’t they make a claim of dilution-style fame difficult?

Representative Peppin apparently is a law student at William Mitchell College of Law, and she has teamed up with other students and William Mitchell law faculty to write and introduce into the Minnesota State House, a bill entitled the “Small Business Trademark Protection Act” (H.F. 2996).

The body of the proposed bill makes no reference to “small business,” nor does it attempt to define “small business,” but it does purport to define “trademark bullying” this way:

 ”[T]he practice of a trademark holder using litigation tactics in an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark holder.”

As presently written, the proposed Minnesota state law would require the following:

1. All trademark cease-and-desist letters sent to a Minnesota entity by an entity with a presence in Minnesota must contain specific language notifying the recipients of their right to a settlement conference through the Minnesota Office of Administrative Hearings; not available after suit has been commenced by any party.
2. The primary purpose is said to assist the parties in resolving disputes and the secondary purpose is said to identify and label cases of “trademark bullying.”
3. The timing, format, and additional requirements are detailed, e.g., how the conference shall not exceed eight hours unless the parties and the judge agree otherwise.
4. Attendance by parties or their representatives is mandatory; if the party starting the dispute won’t participate, it is liable for a $1,500 fine and the attorney fees, costs, and disbursements incurred by the other party.
5. At its own cost, any party may provide information such as expert testimony, industry practice standards, and evidence of trademark use in commerce.
6. If a settlement is not reached but the parties have reached an agreement on any fact or other issue, the alj must issue an order confirming and approving, if necessary, those matters agreed upon. The order is binding on any Minnesota state district court judge who is later assigned to hear a related civil action.
7. If no settlement is reached, any party may request the issuance of an alj summary. The alj may issue such a summary without the request of any party if the alj believes that the claim brought is a case of “trademark bullying.”
8. Treble damages may be awarded against a party guilty of “trademark bullying”.
9. If a party is found by a Minnesota state district court or the Office of Administrative Hearings to have engaged in “trademark bullying” more than two times in a period of ten years the party may have their right to conduct business in the state revoked.
10. The cost of the settlement conference is split equally, unless the alj orders otherwise.
11. The proposed effective date is August 1, 2012, and would apply to disputes evidenced by cease-and-desist letters and similar communications sent on or after that date.

I’m thinking this proposed legislative solution to “trademark bullying” really misses the mark, your thoughts?

“It seems that every good idea, every admirable quality, at some point gets overused and eventually becomes a cliché. Some qualities become so popular that every organization aspires to possess them or at least claim that they possess them.”

I like his recommended solution of letting your actions do the talking when the clichés come knocking:

“By all means, embrace them as a way of conducting your business and perhaps even as a point of difference. In support of this, even include them in your internal brand strategy documents. But, don’t integrate them into your taglines, elevator speeches or marketing campaign themelines. These are admirable qualities to possess so by all means strive to possess them, but don’t scream to the world that you possess them. Let your actions scream that for you.”

Of special interest to me is that “leader” made the top of his branding clichés list, a term we have dubbed, one of the L-words.

As you may recall, I wrote about Losing the L-Word – a year ago, almost to the day, in fact — a post inspired by attending an excellent Padilla Speer Beardsley program, called: “Thinking Local in EMEA: The Next Wave in European Program Execution.”

Thanks again to Matt Kucharski for putting it all together and sharing some of his pearls of wisdom.

It appears that Lunesta (eszopiclone) — apparently, the top prescribed branded sleep aid –  has a new fan, but as you’ll see, and hopefully for the Farrelly brothers, the newcomer won’t be anything close to a competitive medicinal product: Stoogesta (nimbiscus dumbphondenol). Stoogesta video on YouTube can be viewed here.

We’ll have to wait until April 13, 2012, to see whether Stoogesta also will perform the function of a prescribed sleep aid.

What do you think, is this example more clearly a parody than Penn Law’s recent use of the Louis Vuitton trade dress?

CBS Philly coverage of the Penn Law flap here, with a quote from yours truly.  Did anyone attend the symposium, if so, please share, I’m wondering how it went? Nick?

This is what blogging (and social media) is all about. “Meeting” online, finding some commonality, and then meeting face-to-face. Forming relationships with people whom – without some kind of technology – we may never have met. Thanks to those of you who could make it, we can’t thank you enough for being guest bloggers and loyal readers. So, keep those great guest posts coming, and keep sending your ideas our way. Your ideas matter most to us.

For those of you who couldn’t make it – here’s some virtual cake for you:

Yeah, that’s right. Happy DuetsBlog to you ;) [Note: Accidents and mistakes happen. This just happened to be a tasty one.]