Collaborations in Creativity & the Law

A BrandVerb Uber Alles?

Posted in Advertising, Almost Advice, Articles, Branding, Genericide, Loss of Rights, Marketing, Trademarks

uberUber, the popular brand that helps people arrange prompt ground transportation, is now also being called a verb. The Star Tribune recently reported that the founder of iHail, a recent competitor of Uber in the Twin Cities market, would like to achieve the same anointed status: “I want iHail to become a verb, just like Uber.” So, let’s say trademark types might be cringing.

Let me know if you’re still cringing after reviewing these gems from the archives on the risk of trademark genericide through trademark verbing:

Hat tip to Joel Leviton, who by the way did a very nice job earlier today presenting “Key IP Issues in Advertising Law” at the Minnesota IP Institute in downtown Minneapolis.

My question, has Uber become the brandverb über alles? (the link exists for those of you who didn’t get the pun in the title of my post or take German in high-school)

RECOVERY from a Surprise Genericness Refusal?

Posted in Advertising, Almost Advice, Articles, Branding, Genericide, Infringement, Trademarks, USPTO

Reliant Beverage Co., makers of “Recovery Water,” has an endorsement from Russell Wilson and heaps of buzz surrounding the purported benefits of its products and “nanobubbles,” but thanks to some errors from both Reliant and the PTO, a federal trademark may be out of reach.


Reliant applied for the RECOVERY WATER mark back in March, and soon thereafter received a descriptiveness refusal from the PTO, with the Examining Attorney stating the following:

The attached evidence from Collins dictionary shows the wording “RECOVERY” means the act of recovering or the gaining of something lost.  The word “water” appears in applicant’s identification of goods and thus is generic for an ingredient of applicant’s goods.  As shown by the attached evidence from Size or Shred, Cardiostrong, Bodybuilding.com, C12, RoadRunner Sports, and an article entitled “Why Bother with Recovery Drinks,” “recovery drinks” are commonly sold in the athletic industry to allow athletes to improve the rate of recovery after serious exercise in order to enable the drinker to improve performance.  Therefore, the wording taken together merely describes an ingredient and quality of applicant’s water drinks.

This must not have been entirely unexpected for Reliant – countless sports drinks and related supplements emphasize their effectiveness for post-workout or post-exercise “recovery.” But no matter – the Examining Attorney helpfully included a standard form “advisory” informing Reliant that it could amend this application to the Supplemental Register. While the Supplemental Register is effectively the “junior” register for descriptive marks and many advantages of a typical trademark registration on the Principal Registration are lost, it would at least allow Reliant to exclude others from registering a similar mark while it sought to obtain acquired distinctiveness in RECOVERY WATER over time.

So, Reliant dutifully amended its application to the Supplemental Register (with a disclaimer of the generic wording “WATER”), and all seemed well. Then in mid-August, the bombshell came with another office action:

Upon further review, the trademark examining attorney has determined that amendment to the supplemental register is insufficient to overcome the Section 2e1 refusal, as the mark appears to be generic. Therefore, applicant’s response raises a new issue, which applicant must address. The examining attorney regrets the delay in raising this issue, and apologizes for any inconvenience to the applicant.

Unfortunately for Reliant, the Examining Attorney neglected to consider whether RECOVERY WATER was not only descriptive but also generic, a finding of which would be fatal to any trademark registration (and, indeed, would preclude any legitimate enforcement of the mark for third-party use). As evidence to support a generic refusal, the Examining Attorney unearthed a press release from Reliant itself that used the wording “recovery water” generically:

Reliant is the first and only recovery water proven to reduce the muscle damage and soreness that often comes with an active lifestyle. Drinking Reliant helps you recover faster so you can do more and feel better.

Reliant recovery water has become the beverage of choice for world-class athletes wanting to train harder and perform better.

The cardinal rule to avoid genericide: always use your trademark as a trademark (“Recovery Water® sports drink”), rather than as a synonym for the thing itself — or, ideally, choose a distinctive mark in the first place. Now Reliant, once thought to be nearing a registration, has a genericness battle on its hands, thanks in part to its own marketing materials.

Not to be too cruel to Reliant, but perhaps the Russell Wilson endorsement is particularly appropriate here: right on the goal line, success looking inevitable – only to have it snatched away in an instant.

Sorry, Seahawks fans.

Cheap Flights for Flying Blind

Posted in Advertising, Branding, International, Marketing, Mixed Bag of Nuts

European discount airline Germanwings has a practice it calls “Blind Booking”. The concept is straightforward. Essentially you don’t know your destination city until after you have booked the flight. But for €33 (approximately $37) each way you get pretty cheap tickets in exchange for a bit a flexibility. This is basically the airline version of practice used by hotel booking sites where you pick a general location and category of hotel and receive a discount because you don’t know the exact hotel you are booking with.

The service is offered from six German cities, so it’s only available on a small portion of their flights. First you select your departure city. Next you pick from one of the six destination categories offered by Germanwings. (Gay-friendly, Party, Culture, Shopping, Metropolis, and Nature, Trekking and Hiking).


You can see the cities that each category offers and, for €5 extra, you can narrow the list down to three cities. Each destination category has a slightly different mix of cities, though there is quite a bit of overlap. From there you enter your dates, available 45 days out, whether you want to check bags or pick your seat for an additional fee, and your personal information. Once you purchase the ticket you find out where you’re headed.


Of course, you have to take the good with the bad. There is a real possibility of going to a city you actually dislike or getting stuck with early morning or late night flights. But for those with a little flexibility (and perhaps some extra time off to account for flight times) Blind Booking offers an additional discount and a little adventure.

Germanwings’ fleet is only equipped with economy seating but offers three tiers of ticketing: Basic, Smart, and Best. Basic provides for no checked baggage and no free catering. Smart offers one checked bag and free snacks and drinks. Best offers something more similar to business class with preferred seating in the front of the plane, two checked bags, lounge access, and a free meal. This appeals to the more budget conscious traveler that may be willing to pay a bit more for better quality service. With Blind Booking, Germanwings is creating a dual brand. The airline is also reaching out to a younger population that might have a little less cash. The categories are clearly oriented to a young-adult audience, with categories like “Party” and “Gay-friendly” and sharp photos adorning the web page. Blind Booking is an attempt by Germanwings to fashion itself as an airline for the spontaneous and adventurous. At the same time the airline is not completely rebranding, hoping to hold on to existing customers.

Blind Booking appears to be great branding and business decision for Germanwings. The service is popular with expats and students looking to see more of Europe but not too particular about where they go. The offer also gets potential customers to the website where they will also see other offers and perhaps decide to purchase a higher priced ticket. Through Blind Booking, Germanwings gets to pick the destination which allows them to fill seats that would otherwise be empty without decreasing prices across the board for its other customers. And, by getting customers to book through the airline, Germanwings has another tool in the ever greater airline industry fight against sharing ticket prices with online booking sites.

Here Comes The Midwest IP Institute (Again)

Posted in Articles, Branding, Marketing, Trademarks, TTAB, USPTO

It’s that time of year again, the Midwest IP Institute is back in action for the 14th year in a row, and if you’re attending you’ll receive this little gem, the 13th Edition of The IP Book:


So, don’t miss it, Gerard Rogers, Chief Judge of the TTAB will provide us with News from the Trademark Trial and Appeal Board, and he will also share his perspectives on the implications of the Supreme Court’s B&B Hardware Decision on TTAB practice.

Our friend John Welch of the TTABlog will be joining me on the podium for the annual review of trademark cases: The Year in Trademark Law.

In addition, my partner and fellow DuetsBlogger Brad Walz will provide valuable insights on how to avoid the cost and expense of trademark oppositions altogether by utilizing ex parte Letters of Protest at the USPTO.

Please join us this Thursday and Friday at the Minnesota Continuing Legal Education Center in downtown Minneapolis for two days of intellectual property education and networking.

Finally, if you’re wanting a preview of the B&B Hardware discussion, there is a webinar tomorrow you won’t want to miss, my partner and fellow DuetsBlogger Tiffany Blofield is teaming up again with Caldwell Camero of General Mills to discuss their perspectives on how the Supreme Court’s B&B Hardware decision has changed our trademark world.

Delivering to Expectations

Posted in Advertising, Branding, Food, Guest Bloggers, Marketing, Mixed Bag of Nuts

Brent Carlson-Lee

Trucking and delivery companies have some of the most entertaining slogans out there. Next time you’re on an interstate road trip, keep your eye on semis as you pass them, and you’ll be entertained…if your sense of humor is as dry as mine.

While I am committed to DuetsBlog, I have chosen not to put my life, or the lives of others, in jeopardy for the sake of a post. But occasionally, I can safely snap a photo or two.

Check this out.
















You’d probably expect some puffery like “World’s Greatest Coffee.” Or maybe a cheesy pun like “Our coffee gets you through the morning grind.” But no. None of that.













“Consistently good!” That’s it.

I like it. It’s meaningful. And I believe it. Those more interested in jargon than I may call it “authentic.”

So thumbs up to Farmers Brothers Coffee. But I must say, they should rethink a slogan on their website: “We don’t just deliver product; we deliver success.”

The Uber Tax Timebomb

Posted in Guest Bloggers, Mixed Bag of Nuts

James Mahoney, Razor’s Edge Communications

In our first foray into self-employment, many of us experienced the sticker-shock of being on the hook not only for our “own” payroll taxes, but also for the portion formerly covered by our employers.

The shock is bigger for the uninitiated who don’t understand, or ignore, that no one else is automatically withholding taxes from their revenue. There’s also the frosting on the cake of quarterly payments that the IRS and state revenue departments require, but may escape the notice of newbie independent contractors.

And that’s where the Uber Tax Timebomb comes in.

In an unscientific sample of my own experience and opinion, a substantial percentage of first-year Uber drivers will get nailed at tax time. They will discover the wonderful world of payroll taxes, interest and penalties, and it will put many of them behind the tax-man’s 8 Ball.

To wit, Uber says in its Help section:

About partner taxes

All Uber partners are independent contractors, so we do not withhold any taxes and partners are entirely responsible for their own tax obligations.

You should seek the advice of a tax professional if you are unsure of how to report this income.

If you’re a partner based in the United States, you will receive a 1099-K and/or 1099-MISC form to report income you earned with Uber. You’ll receive one or both depending on the type of payment you earned in the calendar year.

The Uber blog claims that “For example, the potential income a driver on uberX can make in a year is more than $90,000 in New York and more than $74,000 in San Francisco.” A quick search shows that the reality appears to be different; e.g., this article from Business Insider.

But whatever the actual case, the tax challenge remains, regardless of a driver’s net income after Uber’s 20% take, fees, gas, car payments, etc. At $30,000 net, for example, the payroll tax alone is $4,900; 12.4% for Social Security and 2.9% for Medicare. (“Whaddya mean, I need to pay 12.4%??? I thought it was 6.2!!”)

It’s likely that few first-year drivers will have prepared for this, and also likely that it’ll take them time to recover while many of them pay off the tax debt with its accruing interest and penalties.

Welcome to the world of independence.

Apple Takes Us Back to PENCIL and PAPER

Posted in Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Social Media, Squirrelly Thoughts, Technology, Trademarks, USPTO

If you are a member of the Cult of Apple, like tech, or even just watch the news, you’re probably aware that yesterday was Apple’s big fall event where they announce new product launches and updates.  The event showcased a new iPhone with enhanced photo features (as this Wired article aptly puts it “Because selfies.”), new iPads (including a BIG one – which I’m kind of intrigued by), an updated Apple TV, and one totally new product just in time for back to school – the $99 Apple Pencil.


Yes, it’s a stylus.

Yes, at a whopping $99, I know I’ll probably lose it.

And, yes, they’ve applied for patents for a stylus in the past.  See, e.g., here.  But in addition to the technical advances of the new stylus, what about trademark protection?  Layering IP protection with patents, design patents, trademarks, and trade dress protection is a highly recommended strategy to protect all facets of the IP for a product.  Apple knows this strategy well – filing even on icons and relying on their design patents to mount an expensive intellectual property attack against Samsung.

In advance of an Apple event, I like to review trademark filings to see what Apple may have coming up.   It’s one of the best ways to determine what might be launched at a new event since patents are not published until at least 18 months after they have been filed.  A recent review of applications filed in 2015 identified nothing really out of the ordinary, aside from the TUE 9 marks, which actually are design marks referring to the “look and feel” of at least part of the Apple Watch graphic user interface – the TUE 9 being letters and numbers in the calendar and an interesting topic itself, but I digress.  There are no pending applications (as of a search last night) for APPLE PENCIL, or even PENCIL for a stylus.  So why might that be?

Well, a search for “stylus” as the good and PENCIL as the mark reveals a prior registration:  PENCIL BY FIFTYTHREE.  The registration, issued on November 18, 2014, is owned by FiftyThree, Inc. for “computer stylus; stylus for portable electronic devices including tablets.”  Their product is available for purchase on their website and through Amazon.




FiftyThree…FiftyThree…now where have I heard that before?  Oh right, I wrote a prior post on the launch of Facebook Paper.  While I’m on the subject, where did that “next greatest thing” disappear to? (I guess it still exists.)   Facebook’s adoption of Paper was challenged in a blogpost by FiftyThree, which had a registration for PAPER BY FIFTYTHREE for various computer software and smartly filed an application for PAPER in the wake of Facebook’s announcement of the Facebook Paper app. There’s a thunderstorm in the Twin Cities as I write this, so I can’t help but to ask – does lightning ever strike in the same spot twice?  This sure looks like a rare example of that.

Will we see a PENCIL filing by FiftyThree and some challenging words?  Maybe so.  An internet search revealed that a product recently sold as Pencil By FiftyThree was available on the Apple Store, but clicking on the link provides an error page.


I always prefer to err on the side of optimism, so given Apple’s obvious knowledge of FiftyThree’s product, I’d like to assume that these two are collaborating.  FiftyThree has yet to take to their blog like they did with the Facebook Paper issue, but VentureBeat blatantly called Apple out on copying and a spokesperson provided comment, although quite different in tone than the Facebook Paper blogpost.

Every Pencil needs Paper. We’re excited to launch the all-new Paper on iPhone and iPad tomorrow http://www.fiftythree.com/coming-soon, after which creative thinkers everywhere will see their phones and their ideas in a new light. We believe pen-and-touch input is the foundation for a new type of productivity geared towards creative thinking. Our and Apple’s products open up these tools to even more people, which we support. We at FiftyThree are excited to reveal where we think the next chapter of productivity is headed.

As you can gather from these comments, FiftyThree’s success is dependent upon Apple’s iPad and iPhone success.  It likely significantly relies on the iPad, and therefore the App Store, for sales of its Paper app.  The Pencil is for use with the Paper app, so the sales of the Pencil are entwined with the Paper.

I guess where lightning strikes twice, you should THINK to buy a lottery ticket.  Seriously, how can a company get copied twice at such a high level by two of the most highly valued companies in the world?

I’d love to read what people think about Apple’s recent branding – the  iPod, iPhone, and iPad to now the Apple Watch, Apple TV, Apple Music, and Apple Pencil.  Recognizing that one of the keys to Apple’s success is minimalist, user-friendly design, and their branding strategy pairs well with that, do you think they need to get more creative with their product names?

I’m also curious which design you like better – the Apple Pencil or the Pencil by FiftyThree?  Personally, I like the carpenter or utilitarian pencil appearance of the Pencil by FiftyThree over the more traditional Apple Pencil.

Lego Adds a “Brick” to its Enforcement Strategy

Posted in Fair Use, Infringement, Non-Traditional Trademarks, Product Configurations, Product Packaging, Trademark Bullying, TTAB

The Danish Lego Group is no stranger to trademark disputes. Understandably, Lego enforces its rights in the LEGO mark against third-parties who use LEGO without their permission. Lego also claims trade dress rights in product shape and configuration of its blocks and enforces those rights against other building block manufacturers. Some competitors claim that these actions amount to an attempt to monopolize the building block industry, characterizing the company as using trademark law to unfairly harm competitors.

However, protection of the LEGO brand and product trade dress aren’t Lego’s only trademark concerns. Just last week, Lego filed a trademark opposition at the Trademark Trial and Appeal Board (TTAB) against start up company IdentiToy, opposing an application for the mark IDENTIBRICK.

IdentiToy developed technology that is used with tablet computers that allows the computer to interact with toys that are placed on the tablets screen. The technology appears to use optical sensors along with RFID technology

IdentiToy advertises that its technologies can be used with construction toys, too:

Identitoy - Sample

Although the technology is still in development, this video suggests that there could be some pretty interesting applications.

But back to Lego. If you’re up in arms thinking, “Lego can’t claim to own rights in the word BRICK!,” you’re correct. Well, at least Lego isn’t claiming rights in the word “brick.” Instead, Lego filed an opposition on the ground that IdentiToy’s mark was merely descriptive.

The Notice of Opposition alleges that Lego, its licensees, and numerous other third-parties frequently use the term “brick” to describe their products. According to Lego, allowing the IDENTIBRICK mark to register without a disclaimer of the term “brick” would harm Lego and Lego’s competitors by granting to IdentiToy rights in the word BRICK.

On its face, the claim seems reasonable and straight forward. Yet registration of IDENTIBRICK would not necessarily grant rights in the word BRICK to IdentiToy, and the rules of the USPTO suggest that the claim is unlikely to succeed. The IDENTIBRICK mark would likely be considered a unitary mark. Under the Trademark Office rules for examining applications, “no disclaimer of an element, whether descriptive, generic, or otherwise, is required” for unitary marks. TMEP 1213.05.

However, the rules do allow voluntary disclaimers of otherwise registrable matter. It appears that Lego is only concerned with ensuring that third-parties expressly disclaim the term BRICK when it appears in an applied-for mark. For example, Lego seems to have reached an agreement to withdraw an opposition regarding a similar application for the mark BRICKS OF THE ROUND TABLE.

It would be reasonable to doubt the legitimacy of Lego’s concern for the public’s right to use the word “brick.” This is particularly true because Lego owns a registration for BRICKMASTER in connection with “construction toys” which does not disclaim any rights in the word BRICK. However Lego could claim acquired distinctiveness in this mark as it claimed to have used the mark for more than five years when the application was filed.

In light of the past perception of Lego’s enforcement efforts, IdentiToy may choose to cast themselves in a David and Goliath story. But the upside is small, as a disclaimer may not significantly harm IdentiToy’s rights in its IDENTIBRICK mark, and Lego may readily withdraw the opposition if IdentiToy agrees to enter the disclaimer. We’ll have to wait to see IdentiToy’s next move (or Tweet) to find out.

Observations of a Bumper Stickler

Posted in Advertising, Branding, Guest Bloggers

–James Mahoney, Razor’s Edge Communications

As surely as locusts mark the seventh year and swallows announce the return of Spring to Capistrano, bumper stickers herald campaign season.

Whether they support announced candidates, urge the unannounced to run, or express views on issues, bumper stickers all have one thing in common: they are brand ambassadors.

Consider the impact of a discourteous or otherwise bone-headed driving move. Most of us react negatively with a shake of the head or pursed lips (full disclosure: some of us Boston drivers are more expressive than that).

Now add in a bumper sticker or two. The negative association of the idiotic driver with the candidate, issue, position, etc., can either diminish positive perceptions or reinforce negative ones: “So that’s the kind of moron who supports [fill in the blank]…”

The dynamic works on the positive side, too—though unfortunately less often—when a courteous move draws your attention.

Think this is a stretch? Check yourself the next time something like this happens and you notice a bumper sticker.

The bottom line here is that if you’re going to proclaim your support or opposition on a bumper sticker, then you are a brand ambassador whose actions can subtly and unintentionally affect others’ perceptions of the sticker subject.

If that’s not enough to remind you to drive courteously, come take a tool around Boston. We’ll help draw it to your attention.

The Recycling of Brand Vessels?

Posted in Articles, Branding, Infringement, Marketing, Non-Traditional Trademarks, Product Configurations, Trademarks

Brand signals have been described as meaning vessels before, and vessels of trust too. Does that make a branded product package, container, or configuration a vessel within vessel?

The tin cans below that have been recycled and transformed (as seen in the image I captured at the Minnesota State Fair), were most likely once brand vessels within vessels, but now, there is no trace left to the variety of brands that once adorned these physical vessels:


No one of sane mind would question this vendor’s legal right to strip all brand recognition from these physical vessels and give them new life as creative hanging planters.

And, it also seems unlikely anyone would question Coca-Cola’s legal right to stop a vendor who refills a branded Coke bottle with something other than Coke, passing it off as genuine Coke.

But, the recognition of truth at these two extremes, brings me back to my post that rode the holiday weekend, questioning the level of control a brand owner has in controlling its branded packaging and containers downstream:



What do you think, are the branded candles and nightlights closer to the Coke example than the tin can example? I think very much so, notwithstanding the reference on Candles by Brandles website to “recycled bottles.

What do you think, where do you draw the line of where the brand owner loses control, if ever?

Does your answer to the question hinge on the difficulty the brand owner has created in another removing all traces of the brand from the container, i.e., removing a paper label from a tin can, or grinding a glass bottle to remove the Coca-Cola logo?

Actually, the Coca-Cola bottle is a bad example, or perhaps a great example to illustrate another point, the contour of the Coke bottle, is a trademark itself, and it cannot be ground out or removed without destroying the bottle.