Duets Blog : Creativity and the Law: DuetsBlog

For as long as I have been watching television, I have seen countless public service announcements telling me to wear a seat belt.  One series that sticks out in my recollection is the "You could learn a lot from a dummy" ads.  I think I recall these mostly because there were so many of them, and there was a modicum of character development involved--the dummies were Vince and Larry.  These were not high art, but according to the Ad Council, they were effective. 

There have been other seat belt campaigns.  Here's a PSA from the 1970's, and here's one about the inventor of the seat belt.  In the history of seat belt PSAs, there seem to be two principal categories:  humor and shock.  Often, these PSA campaigns have slogans, too:  Click It or Ticket, Drive Alive, Buckle Up . . .

Until this week, it had never really occurred to me to appreciate the artistic side of public service announcements, and then I saw the Sussex Safer Roads Partnership "Embrace Life" PSA:

I believe this PSA was unveiled a little over a month ago, and it already has more than two million views on YouTube.  The Sussex Safer Roads Partnership has a page discussing the making of this PSA and other elements of the campaign, which include the use of graffiti, which seems like a bold, novel step. 

I think that the PSA and the "Embrace Life" slogan are both home runs.  Well done!

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You may have heard the news that iTunes has hit the 10 billion (with a "b") mark in number of songs downloaded.  Sales began in 2003.  That's an average pace of more than 1.4 billion downloads a year.  Considering that a typical single song retails for $0.99 on iTunes (likely higher than average price, as many albums with more than ten songs go for $9.99), I thought, "Wow, that's about $10 billion in sales!"  Well, yes and no.  It's only $9.9 billion in sales--$100 million short of $10 billion.  I sometimes tend to think that one decimal place, one hundredth, is "close," and in a sense, $9.9 billion is close to $10 billion.  In another sense, $100 million is a lot of money standing on its own. 

This reminds me of a point made at a trademark infringement trial a few years ago.  A lawyer (not me) asked a business owner whether a production cost difference of a few pennies per piece part was a big deal--hoping to make the point that it was insubstantial.  The owner replied, "It's a big deal when I'm ordering hundreds of thousands of parts."  All of this, of course, is not new.  I recall learning about economies of scale in my 10th grade Economics class, though the lesson obviously continues to impress. 

But here is another big number to consider:  the folks over at FairWinds recently discovered a company that was losing 47 million initial web impressions to typosquatting domain names.  Josh Bourne has a recent post at the Domain Name Strategy blog discussing this and some related SEO (search engine optimization) issues, and it is worth a read. 

Pay attention to how those little things add up!

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

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

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

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

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

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

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

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

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

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

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Can you spot the genuine iPad?

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

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

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

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

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

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

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

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

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

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

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

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I recently spotted this bit in an ad flyer:

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

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

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

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

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

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

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

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

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

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Among the most ingrained Christmas traditions I recall from my youth was watching the Charlie Brown Christmas Special every year.  For many, many years, that Special was "brought to you by Dolly Madison."  (And it was always preceded by this intro--a classic!) 

Dolly Madison is but one of many brands owned by Hostess Brands, Inc., f/k/a Interstate Bakeries.  Hostess Brands has a number of well-known brands related to breads and cakes, including Hostess, Wonder, Holsum, and Beefsteak, among many others.  I would place HOSTESS and WONDER in the category of famous trademarks, and several of the company's other brands are probably regionally famous. 

So I was really surprised to learn that Hostess Brands does not own hostess.com.  In fact, just last month, Hostess Brands lost a UDRP arbitration to obtain that domain name from Domain Capital. (Opinion here.)  Steve Levy has an excellent analysis over at The FairWinds Blog.  I don't know if it is a deliberate association, but FairWinds also has a sidebar poll asking who among a company's legal, marketing, and IT departments should take the lead in managing domain name resources?  (Poll results here.)  I think there is no universally correct answer, except that the job should be done and be done well.  A company like Hostess Brands should not have been the last one to the party in securing the hostess.com domain name, and when it comes to domain name rights, last place is usually any place other than first place. 

Tip of the hat to the ESQwire.com law firm, which represented Domain Capital, and best of luck to Hostess Brands.

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If you travel by air at all, I suspect that Southwest Airlines' "Bags Fly Free" campaign resonates a bit:

This is but one of many examples of Southwest Airlines' marketing and business savvy.  By all appearances, this is a company that exudes a love for its business, which necessarily requires a love for its customers.  It meets its customers where they are:  blogging, on YouTube, on Facebook, on Twitter, on TV, in print . . . you get the idea.  They are well known for using humor both in advertising and in providing services.  It is a company that is meeting its mission. 

Here's to more fun in 2010!

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