DuetsBlog

Collaborations in Creativity & the Law

Two Truly Powerful Words

Posted in Goodwill, Guest Bloggers, Mixed Bag of Nuts

James E. Lukaszewski, ABC, APR, Fellow PRSA

My first management job was as a supervisor trainee in a Minnesota-based retail music company. At that time—1966—their strategy was to place each trainee in a succession of departments as the temporary supervisor to begin to learn the company. I began work there in 1960 as a part-time employee in their first branch store. I was recommended to the company by my band director at Robbinsdale High School.

My training boss in 1966 was a seasoned senior executive. He and another executive herded trainees around to make some sense of how we learned things about the company. My first assignment was in the Stereo Components Department in their main retail operation in Minneapolis. The department consisted of four of the most seasoned and successful audio component salesman in America.

My boss had only two rules for supervisors of departments. The first was that there needed to be a sales meeting at 7:30 AM every Tuesday morning.

The sales meeting idea was daunting. In 1966, I was just 24-years-old. The youngest salesperson in the department was in his late 30’s, Andy Anderson. He had already won most of the national sales awards available from brands like Fisher, Koss and a variety of other major U.S. brands which were important at the time.

After two sales meetings, I realized that it really didn’t matter what I said; whatever I told them, they would make it work. These men were champion salespeople. If I told them, for example, that using a blue pencil was a way to get more orders, Andy Anderson would be the first in my office on Wednesday afternoon to tell me just how successfully he used blue pencils for writing more orders.

The second task was even tougher. I was to write a brief note to each person at least once a month calling out something specific that they did that was exemplary, helpful or interesting. By the fourth week of the first month, I had managed to write such a note to each of the four salespeople.

During the second month, one of the four salespeople passed away, I’ll call him Richard. It wasn’t my fault. My boss came down to the second floor and told me that I needed to clean up the salesman’s desk because his family was coming in to spend a few minutes in the space where the salesman had spent a good part of the last 25 years. I was to go through his desk and make certain that there was nothing embarrassing to him or to the company for the family to find. In addition, I was authorized to offer his family members the opportunity to take anything and everything from his desk home with them.

He had a huge olive drab, surplus army desk. It had a large lockable central drawer, large dark green work surfaces, four huge, deep inside drawers. The central drawer seemed to be for small stuff and junk. Mostly I found just a lot of boring sales material and the detritus of being at the same desk for 25 years, and a carton of papers in the rearmost part of the lower right-hand drawer. It took me a few minutes on my hands and knees to pull that box out and take a look at it.

It also took a few minutes to figure out what the box of papers was all about. There were letters, notes, memos, sales literature—all kinds of documents in perfect chronological order from the oldest to the most recent. As I kept trying to figure out what this box was about, it suddenly struck me. Every piece of paper, every document, every brochure had some kind of positive note written to Richard by someone else. There were old memos dating back more than 20 years, some from the founder of the company. One simply said, “Great job, Dick. You saved the Wilson’s business for us. Thank you,” signed PAS the company’s founder.

What took my breath away was finally looking at the box full of notes as a whole. And there, in front of all of the notes, was the one I sent him just the week before, thanking him for teaching me something about selling stereo components and for taking the time to do that. I teared up a little bit.

When I told my boss about it, his response was, “So, what have you learned?” “Thank you’s are really important,” I stammered. “And pretty rare, too,” my boss chimed in. This was true. In this person’s case there were 205 thank you’s from more than 25 work years, times 12 months, times four weeks, times five days, times 8 to 10 hours each day.

I’ve continued this practice to this day and added a couple of additional rules:

1.  All such notes need to be hand written, preferably on separate sheets of paper or cards, or directly on documents that the writer can count on the recipient saving.

2. Thank you’s by email have little if any value.

3. The three crucial ingredients of these thank you notes are:

a. A brief opening, meaningfully specific and constructive thank you statement.

b. A short phrase or sentence as to why the cited work, behavior or activity is valuable, interesting or important to you and what you learned.

c. If you can mail it, mail it. Meaningful snail mail is even rarer and therefore more memorable and valuable.

It’s highly likely that the two words “thank you” are among the most personally, powerful words in any culture and language. I’ve learned that thank you’s are always on time, always appreciated, always remembered and often talked about with colleagues, family and friends, sometimes for a very long time. As I work with senior executive leadership, I teach and consider the consistent thanking of people to be one of the crucial ingredients of leadership, and being remembered.

Even in his passing, Richard taught me one of the most important lessons in my life. Thank you, Richard, for teaching me the enormous power of these two words.

Dethroning a Right to Register a Trademark?

Posted in Agreements, Articles, Branding, Contracts, Dilution, Famous Marks, Infringement, Marketing, Trademark Bullying, Trademarks, TTAB, USPTO

Last month, you will recall we wrote about the important difference between the right to register a trademark and the right to use a trademark, here and here.

Despite the fact that in most cases, a “likelihood of confusion” test governs both determinations, the right to use and the right to register are not necessarily coextensive rights – defeating the right to register, in most cases, is easier than defeating the right to use.

So, just because a brand owner is denied the right to register doesn’t necessarily mean that actual infringement has occurred, injunctive relief is appropriate, or monetary relief is warranted.

Hat tip to our friends at BlackCoffee in Boston, for providing this entertaining image, and another storytelling opportunity on this topic of great importance:

 

The name and visual identity of this portable restroom service provider were obviously inspired by the likely famous The Home Depot brand, name and logo. The orange and black trade dress, the similar all capital lettering style, the square logo, and the three word name beginning and ending identically (with the word in the middle creating a rhyme and having an overall similar cadence and sound), leave little doubt about the source of inspiration here.

So, why has Home Depot not taken action or stopped this use? Well, it appears they did take some form of action back in 2008, but the terms of any settlement are not publicly available, and they are likely confidential, but if you have any insights, please do share.

Here’s what we do know, for sure.

The Thone Depot, Inc. of Arlington, Massachusetts, filed on July 18, 2007, an application to federally-register this logo in connection with the “rental of portable toilets,” claiming a first use date of January 1, 2006.

We also know for sure that the application was examined by the USPTO and approved for publication, without any citation to Home Depot or its federally-registered rights, and in fact, the Throne Depot logo published for opposition on July 29, 2008.

It is also clear that The Home Depot filed extensions of time to oppose registration of the claimed logo, and then the registration application was voluntarily abandoned by Throne Depot on January 26, 2009.

The missing information, of course, is what terms might be contained in the apparent settlement between Throne Depot and Home Depot.

What we can reasonably surmise from abandonment of the application is that Throne Depot relinquished the right to register — as they have no pending trademark or service mark applications at the USPTO for any mark.

We can also surmise that The Home Depot did not extract a promise from Throne Depot to cease any and all use, and it seems unlikely a license arrangement exists, since there was no assignment of the application to The Home Depot.

If you’re in the mood to speculate, any thoughts on what other restrictions Home Depot might have extracted from Throne Depot to resolve the dispute on terms that apparently contemplate the continued use by Thone Depot?

Would you have dethroned only the right to register if you were the sitting king of this trademark enforcement effort?

Might Home Depot have been concerned about what is now called “trademark bullying“?

How strong is the likelihood of confusion claim here, and does it improve knowing that Throne Depot caters to the construction industry?

What about dilution of a famous mark, perhaps a tarnishment theory, given the nature of the services being provided by The Throne Depot?

What about these mocking Vine videos linking the two brands?

The World Cup of Counterfeit All-Stars

Posted in Branding, Counterfeits, Infringement, Marketing, Trademarks

There’s a sports fever in the air of the homeland of the DuetsBlog team.  The World Cup final is Sunday and, from my office window, I have seen an ever-growing number of soccer fans on the rooftop lawn of Brit’s Pub to watch the matches.  I’m not much of a soccer fan, but I am a huge baseball fan and so I am thrilled that my home state will be the stage for the MLB All-Star Game, which will be held at Target Field on Tuesday.

Photo from sportslogos.net

Can you imagine if a baseball stadium filled with fans started chanting:  “I BELIEVE…I BELIEVE THAT…I BELIEVE THAT WE…I BELIEVE THAT WE WILL WIN!  I BELIEVE THAT WE WILL WIN!“  No – baseball is America’s sport.  We don’t need belief; we know our team is going to win.  (Well maybe not our team lately.) Apparently San Diego State University has sought trademark registration for the mark I BELIEVE THAT WE WILL WIN.

Of course, with all major sporting events, there is a bunch of All-Star Game memorabilia or swag that will be sold to fans, who may or may not have had one too many ounces from the self-serve beer vending machines at the stadium.

There was a story in the local media yesterday regarding the prevalence of counterfeit All-Star Game memorabilia.

I was surprised to see that the MLB or the Office of the Commissioner of Baseball does not file trademark applications for the All-Star Game logos; they simply have one registration for ALL-STAR GAME. If they have a trademark registration or a copyright registration, they can record these rights with the U.S. Customs and Border Protection (CBP) for a nominal fee of less than $200 per class for up to ten years of protection.  As part of the recordation process, the CBP requests information regarding licensees and manufacturers who may be transporting product to the US.  When an importer does not match the CBP’s records for allowed users of the mark, the CBP will detain the product, investigate its authenticity, and destroy the product if it is counterfeit – all without the MLB having to do anything but register their trademark with the CBP.

But what if someone were to use the background of the logo, not include the registered ALL-STAR GAME wording or the MLB symbol until it was delivered to the U.S.  If I had Photoshop, I would show you what I mean. Without protection of the design elements of the logo, that product wouldn’t be stopped at the border by CBP.    Now the All-Star Game may present a poor example of this because they use a new logo for the Game every year and they build up some common law rights in the mark (which can’t be registered with the CBP), but think about your business and your client’s business.  If someone eliminated your protected words from your design logo, would you be adequately protected?

While of course I am not encouraging this, I do hope to see a vendor cheekily selling Derek Jeter gift baskets.

 

Description of a Trademark with the USPTO

Posted in Articles, Branding, Non-Traditional Trademarks, Sight, Trademarks, USPTO

Continuing our discussion — from yesterday and the day before – about the description of a mark provided to the USPTO during the registration process, the below images from two unrelated federally-registered, non-verbal logos for banking services, help tell another related story:

 

 

 

 

 

 

 

 

 

 

 

As the links on the USPTO images reveal, the one on the left is associated with Lloyds Bank, based in London, and the one on the right is associated with First Security Bank of Missoula, based in Missoula, Montana.

Despite the fact that both horse images show raised front legs and a head turned backward (and even putting color aside), the commercial impressions of these two non-verbal logos appear to me to be quite different. So, let’s compare the descriptions of each mark approved by the USPTO, but first let’s refresh our understanding of what the USPTO requires for descriptions of marks.

The USPTO generally requires that the description of the mark be clear, accurate, and concise. It also provides through TMEP 808.02 that the “description should describe all significant aspects of the mark” and “[i]nsignificant features need not be included in a description.” In addition, “[w]hen a mark includes a large number of elements, they are not all necessarily significant.  For example, background design elements can sometimes be considered insignificant if they do not change the overall commercial impression of the mark.”

But, “because of the requirement to describe where colors appear in the mark, marks that include color will generally have a more detailed description.”

With that background in mind, perhaps it is not surprising that the word count for Lloyds Bank’s horse logo is only eight words (“the mark consists of image of a horse”) while the First Security Bank of Missoula’s colored horse logo includes a whopping 136 words:

“The mark consists of a trotting horse depicted in bold brush strokes with the horse’s head turned to the viewer’s left. The horse’s head appears to be painted in blue with yellow, orange, and red highlights. The horse’s neck and front appears to be painted in blue with pink, purple, and yellow highlights. The horse’s front two legs appear to be painted in yellow, blue, pink, purple, orange, and red. The back of the horse, including the tail and the two hind legs, appears to be painted in yellow with orange and red highlights. Grass appears below the horse, which appears to be painted in green and blue. The horse is not painted in completely, and there are areas in the horse that are transparent where the background appears. The background of the mark is transparent.”

Here is where it might be beneficial to obtain not only a registration that claims color, but one that is not limited by color too, as the word count drops, and the scope of rights likely increases. I’m thinking it would have been possible to obtain the following description, keeping the USPTO’s guidance of the description being clear, accurate and concise (in an application not claiming color as part of the mark): “The mark consists of a horse depicted in bold brush strokes.”

Given the inherent subjectivity in application of these principles, how broad or narrow a description that the brand owner is able to obtain from the USPTO may depend on the assigned Examining Attorney, but counsel should keep in mind the “description of the mark” section of an application as an important element of the brand owner’s overall trademark portfolio strategy.

Short and sweet descriptions should support broader rights, but more detailed descriptions might be beneficial or even necessary to avoid getting hung up on broader prior registrations.

With that in mind, any trademark types out there ever file a petition for partial cancellation to narrow an overbroad description of the mark to make room for a newcomer’s application?

In particular, I’m left wondering, might it be possible to compel a narrower Lloyds Bank mark description, perhaps requiring more description about the position, pose, and activity of the horse?

As you may recall, we’ve written before about rearing and prancing horse non-verbal logos (recall this gem: Striking The Pose of Differentiation? from the deep, dark archives?), so I’m left assuming, given an appropriate set of facts, it could be a viable option in overcoming a likelihood of confusion refusal, any thoughts or insights to share?

Finally, let’s not forget the USPTO’s further instruction that “the description should state clearly and accurately what the mark comprises, and should not create a misleading impression by either positive statement or omission.”

Going back to my related post from yesterday, was Pepsi’s description misleading?

Pepsi Gets Grip on MLB All-Star Extravaganza

Posted in Advertising, Articles, Branding, Food, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

How cool is it to have the MLB All-Star Game and related events, right here in Minneapolis? Very.

As the advertisement shows, Pepsi is playing a large role in the event, as the “Official Soft Drink” of the MLB All-Star Game.

As attractive as the ad is, sadly, I suspect that only trademark types and dedicated DuetsBlog readers will automatically have their attention drawn to the “grip-able” portion of Pepsi’s new bottle design, launched last year — recall this little gem?

By way of dramatic update, Pepsi’s new bottle design was registered — yesterday — as a non-traditional trademark, see here.

The description of the mark reads:

“The mark consists of a configuration of product packaging in the nature of a three-dimensional bottle having a flat label panel on the top half, with a decorative band below the label panel containing a diagonal pattern, the bottle having concave sides where the diagonal pattern appears. The matter shown in the mark with dotted lines, the closure and footed base, is not part of the mark and serves only to show the position or placement of the mark.”

The “decorative band” reference is hardly the whole truth is it?

To that point, it is certainly interesting that functionality was never explored by the Examining Attorney at the USPTO (or addressed by Pepsi), instead the focus of the examination was on whether the bottle design is merely a non-distinctive package configuration, and Pepsi was able to convince the Examining Attorney that the bottle shape is inherently distinctive, with this response.

Apparently the Examining Attorney never considered any of the media coverage that we addressed last year? What, no dedicated readers among the Examining Corps?

Given how functionality is a challenge that can be raised “at any time” under the Lanham federal trademark statute, what might that mean for Pepsi when it comes time to enforce rights in this non-traditional trademark registration, now, or ever?

To the extent Pepsi’s early missteps in focusing on the functional aspects of the bottle design changes would support a viable challenge to invalidate the registration and any non-traditional trademark protection, reading the recent writing of the legendary Tony Fletcher (and one of my former partners) might provide an important pause for Pepsi:

“[I]f trademark registration of functional matter is not refused and a registration issues, the functional matter is a ticking time bomb . . . .”

Hopefully for Pepsi, the only explosions that will be heard during this MLB All Star extravaganza will be fireworks, and not the kind of functionality time bomb Tony has warned about.

Apple’s Word Count for Non-Verbal Branding

Posted in Articles, Branding, Goodwill, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Sight, Technology, Trademarks, USPTO

A picture is said to say a thousand words, and ironically that is almost literally and exactly true when it comes to Apple’s focus on non-verbal icon branding.

A week before the 4th of July, Apple filed these three non-verbal trademark applications:

A

B

C

Clicking on each will take you to the detailed USPTO information for each application, but for our purposes here and the ease of discussion, let’s call them, A, B, and C, moving from left to right.

Clearly, each of the three contains a number of elements to form each of the claimed composite marks.

And, when design elements form the claimed mark or portions of the claimed mark, the USPTO recognizes that words are needed — at least behind the scenes — to explain and describe the claimed mark, even if those words are not part of the drawing for the claimed mark.

So, each individual piece of the mosaic must be identified and described in relation to each other piece that forms the whole collection of pieces.

Given that, how many words do you suppose were used by Apple to describe the claimed marks A, B, and C?

Sparing you the suspense, here is the answer: A = 1,008; B = 984; and C = 52.

Obviously, the more elements, and the more detailed the elements are, the more words are needed to accurately and fairly describe the claimed mark. What might that say about the scope of rights associated with each? Have a little patience on that question, please.

In the meantime, another question that arises might be, why file for all three?

My answer: To obtain layers of broad and narrow protection, to maximize the overall scope of trademark rights, and thereby keep the most competitive distance with newcomers.

Back to the question of the implications of using extremely wordy mark descriptions, although I’m certain there is not a linear formula that can be extrapolated from the number of words used to describe a non-verbal mark, it stands to reason that the more easily and efficiently a non-verbal mark is described, the greater the potential for enjoying broader and stronger rights.

In general, the more elements included in a claimed composite mark, the narrower the scope of rights, and the easier it should be to obtain registration at the USPTO without getting hung up based on potentially conflicting third party rights.

Imagine all the room for argument about the absence of likely confusion when only a few minor elements of a claimed mark overlaps with prior rights of another’s mark. The same principle should apply when it comes to enforcing those rights. When a newcomer only adopts a few of the many elements claimed in another’s prior mark, this opens the door for a healthy dialogue about peaceful coexistence without likely confusion, provided the only claimed mark is the entire mosaic as opposed to each piece or element that forms the whole.

I suspect this helps explain why Apple has either registered separately or sought to register each individual app icon as a standalone mark, and here are just a few of them to help make the point:

   

 

 

 

 

 

With all that in mind, going back to the mosaics claimed as marks A, B, and C, shown at the top of this post, I’d consider A to be the claimed mark with the most narrow scope (because it contains the most elements). Although you’d never guess it by the almost identical word count between A and B, I’d consider B to be a fair a bit broader than A because B is not limited by what surrounds it within A.

Of the three, C appears the most valuable and ground-breaking, if allowed. In my mind, it is the claimed mark with the broadest scope of rights, as may be evident by the relatively brief description of claimed mark C (but, stay tuned on whether the USPTO requires more verbiage in the required Description of the Mark section of the application during examination):

“The mark consists of of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.”

If this description survives examination at the USPTO, C will be a valuable registration for Apple as it will protect the layout of the icons without any limitations as to what the icons are, what they look like, or their various color schemes.

Curious readers might wonder why Apple didn’t provide close to the same 1,000 words for C, as it did for A and B – the answer lies in the fact that Apple used dotted lines for the internal detail of each of the twenty-two icons, so that detail is excluded from and not claimed as part of the overall composite mark shown in C.

Knowing that Apple’s efforts to obtain a federal trademark registration for the configuration of the iPhone have been opposed by Samsung and Microsoft, we’ll need to wait and see what happens with A, B, and C:

We’ll also have to wait and see whether any of them lead to any fireworks at the USPTO.

For other recent DuetsBlog coverage of Apple’s IP strategy, check out Martha’s posts, here and here.

By the way, given my word count for the day, I better wrap it up, at least for now.

Sugarpova: Does it taste as weird as it sounds?

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

- Laurel Sutton, Senior Strategist at Catchword Brand Name Development

Wimbledon is winding down and fifth-seeded Maria Sharapova has been eliminated from the competition, dashing her hopes for a combined 10th anniversary and second Wimbledon championship. But Sharapova, despite her long career as one of the top-ranked stars in women’s tennis, has been getting more press for her business interests than her game – specifically, for her own line of sweets called, almost-but-not-quite eponymously, Sugarpova.

Sugarpova, “a premium line of gummy candies”, launched in 2012 and is now sold in more than 30 countries (mostly in high-end candy shops and sporting goods stores), and is expected to sell more than 2 million bags of candy in 2014. Sharapova came in for a good deal of criticism during this year’s Wimbledon because one of its pop-up shops, the Sugarpova Candy Lounge, opened in the Wimbledon high street to take advantage of the tennis-loving crowds roaming the streets. Many felt that a sports celebrity endorsing squishy sugar bombs was somewhat at odds with government (UK and US) recommendations for ordinary people to consume less sugar, not more – and right in the face of a hugely visible sporting event no less. But then, the traditional strawberries and cream of Wimbledon aren’t really health foods, are they?

Too, anyone who spends $6 for a 5 ounce bag of gummy bears is unlikely to be buying anything but the prestige of eating them out of the package in public. (You can buy a three pound bag of Haribo bears at Walmart for seven bucks if you’re looking for maximum quality and value – Haribo is universally acknowledged as the gold standard for gummy bears.) It’s another smart branding move for Sharapova, the most recent in her expertly managed career; the result has elevated her to the status of world’s highest paid female athlete. That’s some brand.

The name Sugarpova is oddly chosen, however. It’s obviously meant to play off her name, but it fails on a couple of levels:

- the surname Sharapov (Sharapova, with the added –a ending, indicates a female bearer of the name) is derived from the Turkish word sharap, meaning “wine” + ov, “belonging to”. So the proper way to substitute “sugar” would be sugarova, which unfortunately sounds like some kind of candy egg. (Maybe an idea for Cadbury’s?)

- Although every sports announcer pronounces it SharaPOva, the stress really should be on the preceding syllable: ShaRApova. Again, substituting the word “sugar” is all wrong: SuGARpova – an interesting word, but pretty useless when it comes to promoting overpriced gummy Porsches.

The woman is nothing if not committed to her brand: there were reports that she was going to (temporarily) change her legal name to Sugarpova in 2013 for the US Open just to promote the candy. The official releases said she changed her mind when she realized “the procedure would take a long time”, or perhaps when she actually realized it was a ridiculous idea and would have real-life consequences that even Liz Taylor wouldn’t go through for a line of tennis-ball shaped gumballs. Or maybe it was all just a PR stunt dreamed up by her management to keep her in front of the media – in which case, well played, Sugarpova PR!

You’ve got to admit that there is something refreshing about a brand that comes out and says what it is – this is candy, dammit, and it’s made from SUGAR. No artificial sweeteners, no stevia, no agave or other hippie ingredients; it’s the real stuff, guaranteed to give you a rush. And you know what? I admire Sharapova a little bit more for calling it Sugarpova when I see that the first ingredient is corn syrup. That’s the way to sell candy to the hoi polloi.

It’s ‘MERICA Weekend

Posted in Branding, Famous Marks, Trademarks, USPTO

July 4th weekend usually makes me think of three things:  the cabin, my favorite random historical facts about Presidents (did you know this?), and the Declaration of Independence.  In fact, I always encourage people on July 4th to read the Declaration of Independence, which includes one of the first usages of one of the most famous marks in the world, UNITED STATES OF AMERICA, and one of my favorite passages about government:

We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness.  That to secure these rights, Governments are instituted among Men, deriving their just powers from the consent of the governed.  That whenever any Form of Government becomes destructive of these ends, it is the Right of the People to alter or to abolish it, and to institute new Government, laying its foundation on such principles and organizing its powers in such form, as to them shall seem most likely to effect their Safety and Happiness.

What if the founders, after establishing the Patent & Trademark Office, would have filed for the trademark UNITED STATES OF AMERICA?  As we have seen recently with the mark MORMON, trademark protection for UNITED STATES OF AMERICA may have had a chance – even many years after its initial use.

It’s a generally fair assumption that the first use date for  UNITED STATES OF AMERICA as an indicator of source of governing and protective services was 07/04/1776, in the Declaration of Independence.  However, some evidence suggests that the phrase was first used to refer to the states as a collective authoritative unit in newspaper writings earlier in 1776 by someone known only as Planter.  The specimen of use could have been the Declaration of Independence, signage, or some marketing materials bearing the mark in connection with governing and protective services.  The owner could have been listed as a federal agency with the president as the signatory.

But have no fear, Section 2(b) of the Lanham Act is here.  Section 2(b) prohibits federal trademark protection for marks that “comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  Still, this doesn’t prevent people from trying to protect marks related to America or government organizations, and often slang derivations thereof. Your best bet may be using ‘MERICA.

This logo was allowed, but unfortunately the owner failed to provide a suitable specimen of use.

 

However, often times these filings incorporating government related marks and insignias are met with a 2(b) refusal by the Trademark Office, and  in the case of the logo below, a refusal for disparagement under 2(a).  If this is considered disparaging by the USPTO, surely the Redskins mark should be.

So don’t plan on getting a federal trademark registration using any government insignias anytime soon, and enjoy your bar-b-que and your fireworks this weekend.  ‘MERICA!

 

Update: Ikea Voids the Warranty on its Demand Letter

Posted in Articles, Branding, Fair Use, Famous Marks, First Amendment, Goodwill, Infringement, Marketing, Social Media, Trademarks

A few weeks back, we discussed IKEA’s claim of trademark infringement against the popular website, IKEAhackers.net, and the resulting online backlash.

In what’s become an increasingly common result, IKEA has reportedly backed off from its demand letter:

We want to clarify that we deeply regret the situation at hand with  IKEAhackers. It has of course never been our ambition to stop their webpage. On  the contrary, we very much appreciate the interest in our products and the fact  that there are people around the world that love our products as much as we do.  We are now evaluating the situation, with the intention to try to find a  solution that is good for all involved.

According to the website owner, Jules, Inter IKEA Systems BV called to discuss a new dialogue with different settlement terms. Jules rightfully thanked the fans of the website for their support:

 

Jules notes in the announcement that this is no guarantee that there won’t be any changes. The parties still need to agree on the terms on which Jules may continue to keep using the IKEA hackers name, domain, and logo. I guess we’ll all just have to take a ‘wait and see’ approach.

In the meantime, the development is just one more example of why attorneys and companies need to be careful with enforcing trademark rights. Contrary to a number of other bloggers and fans of the site, I believe IKEA has legitimate complaints regarding the IKEA hackers website and its use of the IKEA mark. This is another example of social shaming (as Steve has discussed before, and before), where the supposed “trademark bully” actually has legitimate legal claims.

Demand letters are a valuable tool both for the sender and the recipient. Obviously, the sender can save time and expense by obtaining voluntary compliance with some or all of its demands. And yes, the recipient benefits in some situations too, I’m certain that most people would rather receive a demand letter rather than being served with a complaint in federal district court. Shaming through social media also serves an important function by leveling the playing field. IKEA may have lots of money and great lawyers, but IKEA hackers has Facebook.

But just as companies can misuse demand letters, the social media shaming can be abused too. Even companies with legitimate complaints regarding misuse of their trademark rights can be backed into a corner by social media, as the IKEA situation demonstrates. Attorneys and companies need to recognize situations where this can occur and do their best to minimize the risk before sending a demand letter, and then have a plan in place to respond quickly in the event the ‘social media shaming wagon’ begins.

 

Is it Roomba or is it Rosie? A New World of Co-Created Identity

Posted in Branding, Guest Bloggers, Technology, Trademarks

- Jason Voiovich, Vice President, Marketing, Logic PD

80% of owners name their Roomba.

Colin Angle, CEO of iRobot (the maker of said autonomous vacuum cleaners) dropped this unexpected bomb during an interview with Celeste Biever from New Scientist.  The subhead of the article asks the obvious question (why do consumers name inanimate objects) without really answering it to any satisfaction.  And aside from a few far-slung examples, the article doesn’t help us appreciate just what the implications might be if this were to happen much, much more often.

I’d like to take a crack at answering those questions.  Why do consumers name their Roombas?  How is that unique from other technology?  And more importantly, what could this mean for all of us in the creative and legal business?

To address the first question, naming a Roomba is a uniquely different psychological experience than naming any other intimate object: The Roomba is autonomous in a way other devices simply are not.  In other words, it acts with – what appears to be – its own consciousness.  That perceived independence is strikingly and materially different than other personalized technology.

That is different than the minority of people who name their cars.  Cars do very little on their own (parking assist and other features notwithstanding).  As such, they do not complete any functions without direct human intervention.  As car technology advances, and more cars begin to drive themselves, this could begin to change.  However, today, most cars are simply drivable computers.

That is also different than devices (primarily toys) with an explicit personalization purpose.  Pet rocks, Cabbage Patch Kids, and Tomodachi watches all fall into the category of highly-personalized objects, but fail to perform any significant tasks without direct instruction.  Cute.  But still dumb.

Siri, Google Now, and Cortana (Microsoft’s personal assistant) start to knock at the door here, but they still – primary – passively wait for instructions from their human overlords.  Until these get to the level of the fictional JARVIS from Marvel Comics fame, I doubt they will have the same emotional attachment.

It’s more useful to think about a Roomba like you might think about a dog or a cat.

A Roomba may not become a part of our lives the same way a dog or a cat might, but they do share a common set of interactions (independent action and usefulness, specifically) that drive the unique psychological attachment.  The name is simply evidence of the deeper relationship.

All that leads us to the more important question: Who cares?

Roomba might be a fun product, but it accounts for a tiny fraction of the overall vacuum market.  Why should it matter to the creative or legal profession that the identity for this product is *co-created* between the company and its customer?  Is it really that important to understand, definitively, who owns a trademark when the customer creates part of the identity?  Wouldn’t it be true that any trademark issues that may arise from this interaction would be limited and quirky enough not to raise too much trouble?

It really doesn’t matter all that much today.  But what about tomorrow?

From where I sit at Logic PD, we see companies integrating artificial intelligence into all sorts of consumer and industrial products.  This next generation of products don’t simply show you information, and don’t only tell you what it means, but in many cases also perform the action on their own.

For a huge swath of products on the market today, near-future iterations will operate much more independently.  And when they do, our emotional relationship with them will change fundamentally.

It seems to me that we might want to think through the branding and legal framework to not only allow this creative exercise, but also encourage it.