Collaborations in Creativity & the Law

Someone’s Going to be Cranky

Posted in Advertising, Guest Bloggers, Marketing

–James Mahoney, Razor’s Edge Communications

When you put out any kind of advertising or promotion, someone, somewhere, is going to be cranky about it. That’s just a fact of life for marketing and communications people.

Sometimes the crankiness is understandable in hindsight. Other times, it has you giving yourself a dope slap for having missed the obvious. Lots of times, though, it has you scratching your head. Here are a few examples of each.

Recently, The Wall Street Journal reported that Nike and Under Armour each came under fire.

Since 9/11, Nike has run a semi-annual promotion that offers a discount to law enforcement members. This time around, they were criticized for being “insensitive given tensions over recent deaths of black men at the hands of the police.”

bandofballersUnder Armour created a t-shirt that showed a group raising a basketball hoop, similar to the iconic Iwo Jima flag raising, and titled Band of Ballers. They stopped selling the shirt after they were “flooded with complaints it offended U.S. veterans and members of the armed forces.”

Okaaaay. Both are sort of understandable in hindsight, I guess.

chapstickThen there’s the obvious, dope-slap-worthy example of a ChapStick ad. I am certain that the creative/marketing team thought it was a great idea to play off of the consumer reality that you often have to root around to find a misplaced ChapStick. The headline’s terrific. This particular execution of it, not so much. While it may seem incredible that no one in the creation/approval process noticed the unintended insinuation, I can attest that blind spots like this can and do innocently occur. Hence, the post-publication dope slap.

Here are two personal examples that had us scratching our heads.

We’d produced a sales video that featured one actor playing all seven characters, two of which were women. The screening for the marketing staff included two salespeople who had recently come in from the cold: they’d retreated from the sales force to the marketing department during a tough economic time. One said he wouldn’t use the video because he’d be concerned about offending “any cross-dressers in the audience.” The other wouldn’t use it because of “the obvious homosexual relationship between the designer and the manager” characters. Huh?

Unbelievably to me, the client killed the video based on those two objections.

The second, more conventional example is a brochure we produced to introduce new enterprise-level business software. We’d identified the kinds of people who would be using the system, and carefully cast models representing the diversity of the audience and society. The brochure included beautiful portraits of them accompanied by a question typical of a concern that person might have.

Moments after the brochure was delivered, we received a scorching email from a marketer. While beautifully executed, he complained, the brochure pandered to the worst stereotypical prejudices: among them, as he saw it, the older befuddled person, the hidebound executive, and the “smartest in the room” black fellow relegated to a lower-level support position.

Seen in that light, his crankiness was understandable. But the reality is that no matter how much care and attention you lavish on executing an idea—particularly one that includes “diversity”—someone, somewhere is going to get cranky about it, including usually impugning the motivation behind your creative decisions.

The challenge is to assess how much weight to give to the objection. The decision about pulling the plug needs to factor in the breadth of crankiness, the importance of the complaining cohort in your marketplace and to your brand, and the tenor of the times. Sometimes those factors, especially the last two, make you just bite the bullet and pull the plug, even though you know that vocal minority would hold little sway in other times.

The Top 10 IP Issues Troubling PR Pros

Posted in Articles, Branding, Copyrights

That was the substance of my talk last Friday in St. Louis at the Public Relations Society of America’s 2015 Midwest District Conference. A great conference, lots of talent in the house.

One of the attendees had very high praise, remarking afterwards that it was “the best presentation on IP” she has experienced — “very substantive, but understandable.” Thanks!

If you’d like a copy of my slides, just let me know. Better yet, if your organization would like to have a lunch and learn around this topic, let’s try to get it on the calendar soon.

The highlight of the two day conference, for me, was Fred Cook’s keynote address called “Improvise: Unconventional Career Advice from an Unlikely CEO,” — Cook is CEO of Golin.

Loved Cook’s advice to “play it by ear,” “go all in,” and “improvise” by taking something ordinary and making is special, and the Golin “unternship” was nothing less than inspiring.

Tom Wilson, Monsanto VP Global Communication and Corporate Marketing, also delivered a powerful and candid presentation about “Engaging With Audiences Beyond Your Customers.

Sandi Straetker, APR, Principal of PRiority Relations, LLC pitched high energy and practical advice on “How to Win with the Media,” complete with numerous baseball metaphors.

Kate Bushnell, President of the Grossman Group gracefully delivered helpful advice and valuable insights in her “Top Ten Consulting Mistakes Communicators Make” presentation.

Ron Waterman, VP of Communications for the St. Louis Cardinals, demonstrated the highly successful use of today’s communications tools to connect, inform and engage Cardinals fans.

Debra Bethard-Caplick, MS, MBA, APR, and Managing Partner at QuickSilver Edge Strategic Communications, persuasively explained how to create behavior change, while discarding the all-too-common “we want to raise awareness” reason for a PR campaign.

The most difficult and challenging aspect of the two day conference was trying to decide between 3-4 amazing breakout sessions at the same time, so if I didn’t mention your session, I’m sure it was great too, but I probably just missed it!

Protect and Serve Your Image

Posted in Advertising, Branding

policebadgeThe few of you that read my posts probably know that I often use this as an opportunity to meander into observations that I find interesting from a branding perspective.  After all, as a litigator, I spend the vast majority of my day composing correspondence and briefs that dive into the finer points of law.  So when I get the opportunity to write about something a little less legal, I gladly accept it as a change of pace.

This brings me to my most recent random observation; an observation which intersects with personal branding, social media, and hot-button social issues.  When you see the image to the left, what do you think?  Do you think “Protect and Serve” or do you think “Punish and Enslave?”  (Congratulations to any other nerds who got the Punish and Enslave reference.)

I’m not here to sway your opinion one way or the other on the underlying social issue.  That would require a deep and probably controversial discussion on race, social class, income inequality, politics, religion, and many other topics you’re not supposed to bring up at Lorentz family holidays.  However, the current state of unrest concerning our nation’s police forces does create an interesting case study in brand management.

Regardless of whether you are a “Protect and Serve” or a “Punish and Enslave” person, you can’t deny that there is an existing image crisis for police officers all over the country.  This crisis is the result of highly publicized, yet statistically miniscule acts of police brutality/stupidity/idiocy that have arguably tainted the entire profession.  Social media and sensationalizing traditional media have convinced a sizable population that the entirety of our criminal justice system is either corrupt or incompetent or both, and we need to start over.  My social media feeds are inundated with such posts, and it seems that there is little for the “good cops” to do other than weather the storm and post occasional videos of themselves playing pickup basketball with neighborhood kids.   (BTW, I’ve seen several of these videos in different locales over the past several months, so there seems to be some intentional efforts at image rehabilitation going on).  These neighborhood outreach efforts give you a slight “feel good” moment, but they certainly do not inspire the same level of fervor as the incredibly negative police stories.

To be clear and to avoid angry emails and letters, I’m not suggesting or implying that commercial branding and police shootings/aggression are in the same realm of importance.  I am, however, suggesting that virtually every widespread social media phenomenon can provide lessons for those involved with managing their brands.  I can think of a few key takeaways from this situation.  First, a few bad apples really can spoil the barrel. All it takes is a few bad customer experiences magnified by the shrill screaming of many on social media to have the negatives overshadow substantially greater positives.  Second, once the negative publicity takes hold, it can be incredibly difficult to turn the tide.  There often is no perfect solution, and most solutions require a difficult to determine mixture of time and pro-active conduct.  If you argue too loudly and too soon, you are not giving sufficient consideration to the wronged.  If you wait too long and speak too softly, you risk letting the fire consume all that was good in your brand.



Is Brewer’s BOSTON 2024 Ahead of Its Time?

Posted in Branding, Famous Marks, International, Marketing, Trademarks, USPTO

Boston Beer Corporation, makers of Samuel Adams beer, received approval for its intent-to-use trademark application for the word mark BOSTON 2024 for “beer,” which generated some news buzz in light of the city’s bid for the 2024 Olympics.  While the move was praised as a smart business strategy to grab the name before other brewers, the legal strategy may need a little work to maintain Sam Adams’ priority in the mark.


To file an intent-to-use trademark application in the United States, the applicant must have a bona fide intention to use the mark – and that bona fide intention must remain until the applicant shows use of the mark with respect to the applied-for goods or services.  As the chosen host city will not be decided until 2017 and the Olympics would not happen for another 7 years, use of the mark within three years of the Notice of Allowance (likely to be issued this year) may be difficult.  A challenge to the application may be raised by a third party if the applicant fails to continue to have that bona fide intention – or did not have it at the start of the application.  Proof showing the bona fide intention include marketing plans, promotional activities, research and development activities, seeking government approval, and other evidence to show that the applicant is actively pursuing use of the mark in commerce.  Here, Sam Adams should document discussions with the Boston 2024 planning committee, its marketing plans, and that it’s moving along with seeking government approval for labeling of the beer.  Nevertheless, after three years from the Notice of Allowance, Sam Adams would have to show use or refile its 2015 application, at which time it would lose the priority of the 2015 application which would be deemed abandoned.  Sam Adams may want to consider selling beer under the mark as soon as the host city is announced (or earlier) and continue to sell beer bearing the mark until the Olympics to avoid a challenge on the basis of abandonment.

Now, on the other hand, could the filing kill Boston’s chances to be a host city?  Companies often, and rightly, take into consideration other filings and registrations when considering a new mark or brand.  The International Olympics Committee (“IOC”) and its local affiliates, which are extremely protective of their trademark rights as we have discussed at least here and here, likely will consider protection for the host city’s name, as they have done in the past with at least Beijing 2008, Vancouver 2010, London 2012, and Sochi 2014.  Each of these registrations included beer at the time of the Games in their respective city.  Further, a little known statutory provision, 36 U.S.C. 220506, provides a cause for civil action for use of any trademark falsely representing association with the IOC.


Even if Sam Adams ultimately does not acquire a registration, maybe the smartest part of this business strategy is the ability for Boston Beer to position itself at the negotiating table for sponsorship of the Olympics, when otherwise a “craft brewery” like Sam Adams may be left out of the negotiating conversation in favor of the likes of multinational brewing companies like SABMiller (owners of Miller and Coors) and AB InBev (owners of Budweiser).  However, until the registration is granted, the intent-to-use trademark application is only assignable if Sam Adams also transfers that portion of the business pertaining to the trademark.

Of course, in an election cycle, they could drop the current connection to the Olympics and sell beer celebrating the Samuel Adams of the future. Or the 250th Anniversary of the meeting of the First Continental Congress.  Or the 40th Anniversary of Samuel Adams beer.

What do you think – was this a smart move by Sam Adams to try to capture this mark at this time?


Pepsi’s Next Generation: The Last Generation

Posted in Branding, Famous Marks, Food, Goodwill, Marketing, Social Media, Trademarks, TTAB

Back in the 1960s, Pepsi burst onto the scene by announcing to the youth of decade that they were the Pepsi Generation (they didn’t have a choice). Then, in the 1980s, Pepsi became “The Choice of a New Generation.” And finally, in the late 1990s, Pepsi hitched their trailer to the surely-to-never-go-out-of-style Spice Girls to announce the arrival of GeneratioNext. I am a little rusty on my LSAT logic games, but I think this means Pepsi’s newest marketing idea will be GeneratioNexter. Or maybe Generation Kitty-Wampus.

Yet it looks like Pepsi is a bit more creative as their newest marketing idea took a different path. What if, instead of moving forward in time, Pepsi moved backward in time? Presumably this was the idea behind Pepsi’s coy suggestion this week that it may be bringing back Crystal Pepsi. Yes, this Crystal Pepsi:


Maybe the best way to guarantee future success is to revive past failures. Crystal Pepsi was intended to be a healthier soda. Back then, people wanted natural and healthy options! But they didn’t want something that was too healthy, so it still had to be a soda.  Pepsi attempted to further this “natural” image with this slightly dated television commercial back in 1992:

And in case you had the same thought as me (“Didn’t SNL do a great spoof of this commercial?”) Yes, you can view it here, and it is superb. Unfortunately for Crystal Pepsi, though, it was pulled from shelves less than two years later.

So how did this resurrection happen? And is it really happening? A social media campaign reportedly led by LA Beast seems to be partially to blame. The Pepsi Twitter account tweeted the following letter, which appears to be written with a typewriter on letterhead left over from 1993 (hopefully intentionally, if so, kudos to you Pepsi marketing):

Crystal pepsi letterAccording to Pepsi, the letter is authentic. And Crystal Pepsi wouldn’t the first soda to be brought back from the dead: Coke revived Surge earlier this year, also due to social media demand. But Pepsi hasn’t official announced a comeback, so perhaps it is just a media ploy and there really is no intent to begin selling Crystal Pepsi again.

Which got me thinking. Somewhere out there, someone is wondering whether they can start selling Crystal Pepsi before Pepsi does. Pepsi hasn’t sold Crystal Pepsi for over 10 years without any apparent intent to resume use until recently. The facts suggest a plausible basis for a claim of abandonment (a previous DuetsBlog post addressing abandonment is available here). A quick search of the U.S. Trademark Office reveals that Pepsi has abandoned any rights to any registrations or applications. So is our hypothetical user in the clear?

Unfortunately, this is a bad example as Pepsi has not abandoned its rights in its PEPSI mark. But what if it had been a stand-alone brand, like Surge? Would Pepsi still have rights in the trademark even though it hasn’t been used in over ten years? We’ve briefly discussed the concept of persisting recognition (or residual goodwill) in the past. Like most legal questions, the answer is “it depends.”

For purposes of registration, the Trademark Trial and Appeal Board does not recognize the doctrine. In fact, just recently, the Board cancelled a registration for the mark NAUGLES, owned by Del Taco, reasoning that:

Lastly we note that Respondent contends that it holds “considerable goodwill” in the Naugles mark, sufficient to defeat Petitioner’s claim of abandonment. The Board has never found residual goodwill to be a defense to abandonment, and we decline to do so here. The continued existence of enthusiasts of the old Naugles food items does not negate the statutory presumption of abandonment.

In that case, Del Taco claimed that even though it had closed the Naugles restaurants after merging back in the early nineties, that it still had legitimate rights twenty years later. The company claimed that the “History” portion of its website showed continued use, as well as its sale of promotional clothing. Del Taco’s best argument appears to have been that consumers could still order of the “Secret Naugles Menu,” which meant that consumers would request food entrees that were previously offered by Naugles. But not even the secret menu used the Naugles mark, instead, it consisted of orders like “a bun taco” or “egg burrito.” The Board did not find Del Taco’s evidence of use convincing, although maybe the Board informed Del Taco that they might still be eligible for a “Secret Naugles Registration.”

But what about outside the registration context? The Fourth Circuit has suggested that the potential for residual goodwill depends on the product, reasoning that:

Because fire trucks have very long lives (often twenty to thirty years), the mark stays visible, and the good will value of the mark persists long after production of trucks with that mark has ceased. Thus, it might be reasonable for a fire truck manufacturer to spend five or six years considering the reintroduction of a brand, even though the same passage of time would be unreasonable for a maker of a more ephemeral product, say potato chips

Emergency One, Inc. v. Am. FireEagle, Ltd., 228 F.3d 531, 537 (4th Cir. 2000). In contrast, though, a California court found that eight years of non-use of the COBRA mark in connection with cars constituted abandonment. Shelby v. Ford Motor Co., 28 USPQ2d 1471, 1475 (CD Cal. 1993).

Unlike Pepsi’s new/old refreshment, the precedent here is a bit murky. I guess we’ll just have to wait and see Pepsi’s next steps before we move forward with DuetsBlog Crystal Soda.

Learning from Goalkeeping

Posted in Almost Advice, Guest Bloggers, Mixed Bag of Nuts, Squirrelly Thoughts

James Mahoney, Razor’s Edge Communications

Ken Dryden, Hall of Fame goalkeeper for the Montreal Canadiens, recently wrote a piece in The Wall Street Journal about Carey Price, the current Canadiens goalkeeper.

In describing how good Price is and his style of keeping, Dryden wrote:

“Price makes every save look easy. On a shot to the top corner, even if a goalie’s glove in nearly in position, almost every goalie almost every time, at the puck’s impact, windmills his glove up and around to make sure that what is routine looks spectacular. Price barely moves. I’m not diving and flailing, he says to his opponents, You think that was a great save? It wasn’t. Not even close. I have so much more in me, you might as well give up.

I was neither Carey Price nor Ken Dryden when I was a soccer goalkeeper. My personal record of letting in 16 in one game attests to that. But I am a goalkeeper. I devour any material that deals with goalkeeping in any sport. I know what the author is talking about in a way non-goalkeepers can’t. As I suspect every other goalkeeper in the world does, I see aspects and events of my not-so-brilliant career and performance reflected in such commentary.

Here’s a case in point related directly to Dryden’s passage. Partway through my rookie season, my coach commented on my style. I made good stops, he said, but I needed to make some of them look more spectacular or harder than they were. On low shots, for example, I would simply drop or glide down for the stop. “Make a nice dive instead,” he counseled. “Shape it up. Put on a bit of show.” The idea was that flashy saves inspired the team and the fans.

So, the very next game, the opportunity came. A very routine, rolling shot came in. I knew no one was near enough to capitalize on it, so it was a safe play. Ordinarily, I’d simply take a step or two to the left and collect the ball. Instead, I executed a beautiful little arching dive and hit the exact spot on the ground that the ball had just rolled through. Score one for the opposition.

We lost that game, 2-1, and it was the last time I intentionally “shaped it up.”

Bottom line? Showboating is entertaining (when it works), but doing the job well is the real objective.

Losing Marbles With Packaging Trademarks

Posted in Articles, Branding, Look-For Ads, Marketing, Mixed Bag of Nuts, Non-Traditional Trademarks, Product Packaging, Sight, Trademarks, USPTO

Welcome to yet another edition of non-traditional trademarks, but instead of discussing brown paper bags for chips as trademarks, today we’re focusing on a U.S. trademark registration that surprisingly issued just a few weeks ago — a net bag package design for holding toy marbles:

ORC001As shown above, the claimed mark “consists of the three-dimensional configuration of packaging for marbles comprising the combination of a square round-cornered placard with a net bag retaining marbles, wherein the top of the net bag extends through a central hold in the bottom of the placard to secure the bag such that it hangs down from the placard in the shape of a pouch and wherein the square placard has a border extending around the perimeter of the placard.”

Although it is possible for some package designs to be so unusual that they are immediately protectable and inherently distinctive, the USPTO determined this one required evidence of acquired distinctiveness. What surprised me is the meager evidence satisfying the USPTO that the claimed package design had acquired distinctiveness: a five year declaration signed by counsel, a single customer declaration and a single distributor declaration.

The application drew five office actions refusing registration, but in the end, the USPTO registered the package design as a trademark, more than three years after the original filing date. The first and second office actions refused registration based on mere informalities. The third office action refused registration on substantive grounds, the usual suspects — failure to function as a mark, and functionality, but the Applicant overcame them rather easily with mere argument. The fourth office action invited the Applicant to show acquired distinctiveness. The fifth office action accepted the claim of acquired distinctiveness and raised more informalities, and the Applicant overcame them with an amended drawing — the one shown above.

Here is what the packaging looks like, as it would appear in a store, according to the specimen of use submitted by the claimed trademark owner Megafun USA:


Do you really believe that it doesn’t matter what appears on the placard portion of the design? Is the placard and net combination really enough to perform as a trademark to identify, distinguish, and indicate source, without more? What if Mattel decided to sell marbles with the same package design, except it used its own artwork, name, and logo on the placard portion of the package design? Likelihood of confusion? Seems doubtful, at least to me, do you agree?

In the end, while the net bag packaging design might do a great job of preventing the loss of one’s physical and tangible marbles, my primary concern relates to the far more easily lost metaphorical and mental marbles in trying to comprehend how this registration issued based on the miniature record evidence of acquired distinctiveness.

A Naked Attempt at Trademark Association

Posted in Branding, Guest Bloggers, Infringement, Mixed Bag of Nuts, Squirrelly Thoughts, Trademarks, TTAB, USPTO

- John Reinan, a Minneapolis journalist and recovering marketer

When news broke a couple months ago that the “gentlemen’s club” Spearmint Rhino would be opening a downtown Minneapolis branch on Hennepin Avenue, I joked on Twitter that I should open a club down the street and call it Menthol Hippo.


OK, so I’m not really getting into the strip club business. But the notion did start me wondering whether there would be any trademark implications in making such a move. How much latitude is allowed in playing off the naming concept of an established brand? Could someone make a naked attempt to profit off the Spearmint Rhino’s established mark?

The answer appears to be: probably not. Courts have consistently ruled against competitors who create marks that are associative of or parallel to an established mark, even if the marks are dissimilar from an appearance or sound perspective. A few examples:

  • Play-Doh vs. Fundough: The U.S. Court of Appeals for the Federal Circuit reversed a Trademark Trial and Appeal Board decision and held that Fundough was confusingly similar to Play-Doh. “After earning fame, a mark benefits not only its owner, but the consumers who rely on the symbol to identify the source of a desired product,” the court wrote. “Both the mark’s fame and the consumer’s trust in that symbol, however, are subject to exploitation by free riders.”
  • Downtowner vs. Uptowner. In this case, the TTAB found the terms were likely to confuse consumers and refused the defendant the right to register its mark. This is a decision that every trademark attorney knows, but one that’s likely to puzzle a layman. Holding that “Downtowner” and “Uptowner” are likely to be confused seems to me about the same as claiming that “Left” and “Right,” or “Black” and “White,” are confusingly associative terms.
  • Mr. Clean vs. Mr. Stain. The U.S. Court of Customs and Patent Appeals held that use of the courtesy title “Mr.,” coupled with a word associated with cleaning, was likely to cause consumer confusion.

Given these decisions, I have my doubts that a court would uphold a trademark case in favor of the hypothetical Menthol Hippo. Thus, patrons of Minneapolis’ new Spearmint Rhino can relax, knowing that the ladies taking off their clothes are doing so in good faith, rather than as trademark infringers.

Facebook vs. DESIGNBOOK: Is Anybody Watching?

Posted in Advertising, Branding, Dilution, Fair Use, Infringement, Social Networking, Technology, Trademark Bullying, Trademarks

One might assume that Facebook, the ubiquitous social media platform that aggregates and analyzes nearly 1 billion users‘ data, would know every nook and cranny of the USPTO trademark database.  Apparently, that’s not quite the case.

Various news outlets have reported recently that a Vermont startup named Designbook has received the demand letter nasty-gram from Facebook (no reference to Facebook property Instagram intended) regarding its name. Designbook styles itself as a “peer to peer marketplace for emerging businesses” that allows entrepreneurs to collaborate with new team members and — more importantly — investors.

Designbook already went to the trouble of filing no less than fifteen trademark applications in late 2014 for various iterations of their core trademark, including DESIGNBOOK, DESIGNBOOK.COM, and the Designbook logo:ImageAgentProxy

As an initial matter, Facebook certainly cannot consider this to be a run-of-the-mill trademark infringement case, which depends on likelihood of consumer confusion.  While Designbook offers some modicum of social networking through its “collaboration” platform, the differences between its niche services and Facebook’s, along with the differences in the marks themselves, suggest that consumers can still readily differentiate between two “-BOOK” marks online. Facebook hasn’t had too much luck fending off other “-BOOK” marks, even when they are used for discussing Facebook itself. What’s more, Designbook’s cofounder Aaron Pollak had a real zinger of a quote for Boston Magazine:

“What about a phonebook? What about a yearbook? What about a notebook or a scrapbook? All of those things have the name ‘book’ in them and the truth is, a lot of those things is an aggregation of profiles.”

It’s far more likely that Facebook will rely upon “dilution by blurring,” a more expansive way to protect “famous” marks I previously discussed in relation to the late <walmart.horse> (RIP). And indeed, Facebook has filed two batches of oppositions against the DESIGNBOOK and the DESIGNBOOK.COM marks alleging both traditional likelihood of confusion and dilution by blurring (you can follow the action for each batch here and here, respectively). This requires marshaling a greater amount of evidence, so it remains to be seen how resolute Facebook will be here.

What’s truly interesting from a trademark counsel standpoint is that, while Facebook filed these oppositions, they only cover seven of Designbook’s applications.  Three of Designbook’s other applications have already gone past the opposition deadline and have received notices of allowance. So DESIGNBOOK in Class 36, DESIGNBOOK.COM in Class 36, and DESIGNBOOK.COM in Class 35 each escaped the opposition guillotine. If Facebook’s goal is to keep the Principal Register clear of “-BOOK” marks, then one wonders why these weren’t included in the opposition (indeed, the DESIGNBOOK application for the identical Class 35 services is among those opposed).

A typical trademark “watch” keeps an eye out for trademarks that may contain key terms or otherwise resemble a brand owner’s trademark. It typically comes in one of two forms: one type watches for newly-filed applications (that may be several months away from being eligible for an opposition, if they ever get that far), and another type watches for applications that will be “published,” that is, approved by the PTO and eligible for a third-party challenge. The culprit might be that the three lucky applications published slightly sooner than the others. But any standard trademark watch package would have put brand counsel on notice many months before the opposition deadline, suggesting that Facebook may have been asleep at the wheel, missing its chance to oppose these marks as well.

Perhaps letting those three applications go this was a deliberate decision by Facebook’s trademark counsel, but otherwise it’s a surprising oversight for a company of Facebook’s size and technological savvy.

Ford’s Patent Announcement Not so Groundbreaking

Posted in Patents, Technology, USPTO

Last week, a press release announced that Ford would “Open[] [its] Portfolio of Patented Technologies to Competitors to Accelerate Industry-Wide Electrified Vehicle Development.”  Media outlets were quick to report that Ford was joining Tesla in opening its patent portfolio, referencing Tesla’s widely publicized promise last year not to enforce its patents.  But Ford’s announcement is not quite as revolutionary as many media sources would have us believe.

Tesla was heralded last year for announcing an open source plan for all of its patents (“All Our Patents are Belong to You”).  With its announcement, Tesla promised to allow anyone to freely use its technology in “good faith.”  Tesla’s purported goal was the “advancement of electric vehicle technology.”  Earlier this year, Toyota jumped on the bandwagon and announced at the 2015 Consumer Electronics Show that it would grant limited free licenses for several of its hydrogen fuel-cell technology patents.  With this apparent trend of automobile manufacturers giving away patented technology, it’s no wonder many assumed Ford’s press release signaled the same.

Below are a few of the early media responses likening Ford’s announcement to Tesla’s earlier move:

These and other headlines leave us with an impression that Ford is casting aside its greed-fueled patent rights in favor of a more communal approach for the betterment of all.  Unfortunately (or fortunately, depending on your take), it’s not true.  A closer look at Ford’s announcement reveals that the company is not at all following in Tesla’s patent strategy footsteps.  Instead, Ford is offering a fee-based licensing system, which is exactly the way many companies leverage their patented technology.  Citing lofty goals of innovation and industry-wide advancement, Ford is merely marketing the fact that it has electric vehicle patents available for licensing fees.  While it is perhaps a step forward that Ford is explicitly offering to license its electric vehicle technology, rather than keeping it entirely off limits from competitors, and the company suggested that fees will be relatively low, the move is nothing akin to Tesla’s open source plan.  If an unauthorized individual or company attempts to practice Ford’s patented electric vehicle technology, Ford will surely take action.

Much of the misconception in the media seems to stem from another false perception—that patented technology is secret.  It’s understandable, given how secretive companies often are when it comes to new tech.  But let’s be clear: patents are publicly available.  The American patent system was developed on the notion that in order to receive a patent, an inventor must tell the world exactly how his new invention works.  The very purpose of requiring a disclosure of the invention is to teach the world how to design around it, and thus promote innovation.  Issued patents and published patent applications are available for free from the U.S. Patent and Trademark Office.  They’re even searchable on Google.  Anyone, including Ford’s competitors, can already access Ford’s patents and published patent applications.  There may also be some confusion surrounding the difference between the patent document, which describes Ford’s patented technology (freely available) and the technology patented (Ford can exclude others from, or charge a license fee for, practicing its invention).  While a competitor cannot make, use, or sell the patented invention without a license, competitors are free to design around the patented invention, or build on the invention with non-obvious improvements.

Later headlines reported a more accurate depiction of the announcement:

Indeed, as Fortune Magazine’s Kirsten Korosec suggests, the most striking aspect of Ford’s announcement may be the very last line of the press release.  Slipped in almost as an afterthought, the announcement states that the automaker intends to hire 200 electrified vehicle engineers this year, signaling what may be a shifting focus for the company.