If recent marketing research on brand extensions is followed by brand owners, the necessary due diligence is going to become that much more important — both risk and reward will become significantly elevated with the advent of more dramatic and surprising brand extensions.

Karl Greenberg, reporting for Marketing Daily of MediaPostNEWS, writes about a new study from Northwestern University’s Kellogg School of Management, indicating that the perceived quality of a brand is far more important than the fit between the heritage product it is known for and the new extension. He quotes Kelly Goldsmith, Assistant Professor at Northwestern’s Kellogg School, as saying: “Historically, there has been an overestimation on the importance of fit,” with the research apparently concluding that Nike deodorant (high perceived quality, low fit brand extension) would fare much better than CVS deodorant (high fit, low perceived quality brand extension).

So, on the risk side of the trademark equation, the larger the gap between the core goods and the newly expanded goods, the greater the chance for a serious conflict with intervening third party rights that must be taken into account when determining availability of the brand-name and mark for use on the new goods.

And, on the reward side of the equation, to the extent this research begins to justify brand extensions here-to-fore thought too far afield to be viable, they have the potential for greatly expanding the strength and corresponding scope of trademark rights since they will not only be unrelated to the brand’s core goods, but they are also likely to be unexpected or otherwise surprising to consumers.

Of course, the more unrelated the expanded goods are to the core goods and the more unlikely consumers would expect them to come from the same source, the stronger and broader the resulting rights will become. 

What do you think, are we going to start seeing more “less-fitting” brand extensions?

Don’t get me wrong. I love America. But you really have to be living far from our popular culture to think that “American” suggests or describes something sophisticated, deep, or complex. No. Manufactured, highly-processed, thin, and bland pretty much nails it in both cases.

Now, I have always assumed that “American” as applied to cheese is generic in the trademark sense — that it identifies a category or “species” of cheese, if you will. So far, I cannot find a proprietary claim to AMERICAN as applied to cheese, but there are a few interesting findings. First, Cargill owns a registration for AMERICAN for use in connection with a “rennet enzyme preparation used in the manufacture of cheese,” claiming priority to 1959. If you don’t know what rennet is, see here, but beware, it is not for the faint of heart. (Cargill’s use of this registered mark on this page does seem to leave open the question of whether this rennet product is intended for use in making American cheese, which could be problematic.)

Second, I have also discovered the American Cheese Society. I’m pretty sure that this outfit is the American [pause] Cheese Society, not the American Cheese [pause] Society. It does make a difference. The society’s vision statement does not really help the ambiguity: “ACS is the leader in promoting and supporting American cheeses.” (When they say, “American cheeses,” I think that they really mean “cheeses made in America.”) They’ve been around for almost thirty years and have only recently applied for registered trademark protection of their name.

As it turns out, there are fifty pages of U.S. federal government regulations regarding the production and naming of cheeses. I wish I were kidding. You can see the contents here, and a PDF is here if you’re having difficulty sleeping. The word “American” appears numerous times, and nearly each time in the following passage: “cheddar cheese, washed curd cheese, colby cheese, granular cheese, or any mixture of two or more of these may be designated as ‘American cheese.’”

The final nail in the coffin of AMERICAN being generic as applied to cheese is that the phrase “american cheese” is used in goods descriptions throughout the U.S. trademark register. Of these uses, the best is this: Aldi owns the registered trademark LYNDER for “american cheese substitutes.”

Really? I’d substitute any cheese for American cheese.

This got me thinking about juxtapositions of brands in advertisements.  One common brand juxtaposition is to use a celebrity in an ad campaign.  Sometimes they are harmonious (e.g. Rolex and Nadal or Federer), sometimes they don’t make much sense (e.g. Ann Taylor and Kate Hudson – sorry not a fan), and sometimes they lead the consumer into an unintended brand association.  Earlier this week, I saw an advertisement for a beverage that featured a country music group with a female member juxtaposed with the following line:  “just the way nature intended.”  My well-trained ears perked up at that line.  Regardless of whether you are a country music aficionado, you’ve probably heard the story of the country music group with a female member whose stage tragically collapsed in a terrible storm last summer in an “act of God.”   Based on the line “just the way nature intended” and my inability to distinguish the two country music groups, I immediately drew a negative inference – even though the group featured in the ad was not the group involved in the accident.  Sometimes brand juxtapositions have unintended associations.  You can only control your own brand, and it’s important to consider how connecting another’s brand with your brand and your message may affect the relevant consuming public’s reaction.

Häagen-Dazs. Mmmmm. Just the thought of their ice cream makes me feel good. And I know it will taste good because it was born in Scandinavia, right?

Then I learned the brand history. I must say I was disappointed. Häagen-Dazs was born in the Bronx, New York in 1961. Its creators were not Scandinavians but rather two Polish immigrants, Reuben and Rose Mattus. Their first retail store opened in Brooklyn in 1976, and today Häagen-Dazs is sold in 55 countries around the world.

Why did they choose the name Häagen-Dazs? The name was created to look Scandinavian for Americans. This European cachet radiates craftsmanship, tradition, and wholesomeness, thereby justifying the higher price. On early labels they used an outline of Denmark, even though the umlaut is not used in the Danish language.

As Häagen-Dazs succeeded, the copycats emerged. American Richard Smith created Frusen Glädjé using an “almost Swedish” name (without the accent on the final e the word means “frozen joy” or “frozen delight”). Häagen-Dazs actually tried to sue Frusen Glädjé to prevent them from using a Scandinavian marketing theme (thereby demonstrating a new level of audacity).

The umlaut parade continued with the launch of Yogen Früz, a frozen yogurt, and Freshëns frozen yogurt’s “Smoöthies.”

This “foreign branding” implies a superior heritage where none exists, which represents inauthentic branding at its best.

Let’s consider another ice cream brand, Ben & Jerry’s. Go to their website and read their company history.  It’s a scrapbook! And you can see pictures of Ben and Jerry. And you can learn about this remarkable company who has remained true to its roots.

Ben & Jerry’s = AUTHENTIC BRANDING. Häagen-Dazs…not so much.

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?

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.

Exposure, in my opinion, has never been a bad thing. But I’m curious, does product placement make an impact on product sales? Maybe it’s just because I’m a marketer by trade that I am not swayed by these placements (or, maybe I am and just don’t know it). I’m pretty much set on which pop I drink and clothing I purchase, but what about the rest of the world?

Interestingly, I came upon this article on CNBC listing the primetime shows with the most product placements in 2011. Is it a coincidence that the majority of the shows are “reality”? Why do you think reality shows have the most product placements?

The counterfeiters registered at least 34 domain names, including several with the word Hermès along with its bag names: Birkin and Kelly.  Hermès sells two handbags named after famous actresses.  The Birkin bag was named after actress and singer Jane Birkin.  I saw an episode of “Sex and the City” this weekend where Samantha was fired for using her client’s name (Lucy Liu) to go to the head of a list with a two year wait to obtain the coveted bag.  The Kelly bag was coined after actress and Princess of Monaco Grace Kelly covered her pregnant stomach with a Hermès bag.  These bags sell from $6,000 to $150,000.

When the defendants failed to answer the complaint filed by Hermès, the court entered a default judgment and permanent injunction.  In addition to trademark counterfeiting, infringement and dilution, the court also entered judgment on the cybersquatting claim.  Cybersquatting involves registering or using a domain name with the bad faith intent to profit from the goodwill of another’s trademark.  In other words, the defendants were selling knock-off products through these domain names.  The court’s order also provides that upon receiving notice Internet search engines (e.g., Google) and social media websites (e.g., Facebook) are required to de-index and remove infringing domain names and websites from any search results pages.  This type of relief will likely be requested more frequently by litigants with Internet shopping’s growing popularity.

Other fashion designers have, and will continue to, enforce their trademark rights and work to shut down counterfeiters.  Indeed, there is another counterfeit handbag battle pending before the Second Circuit.  Fendi Adele SRL (“Fendi”) is arguing that it can obtain enhanced damages from an alleged counterfeit merchandise seller’s conduct without showing that the conduct was willful.  This battle (going back to 2006) is a topic for a blog post on another day.