DuetsBlog

Collaborations in Creativity & the Law

Is It a Clean Fight?

Posted in Advertising, Branding, Marketing, Mixed Bag of Nuts, Trademarks, USPTO

It is no wonder that two companies manufacturing detergents would want to use the word “clean” for their products and brand.  The Dial Corporation (“Dial”) owns the federally registered trademark PURECLEAN that it used to market its PUREX detergents.  To protects its mark, Dial sued the Procter & Gamble Company (“P&G”) to enjoin it from launching its TIDE “PURCLEAN” line of detergents.

The complaint contains numerous other examples of use of PUREX in ads, coupons, magazines, on products, displays at point of sale, and others.  For example, below shows Dial’s use of PureClean® with the PUREX branded product.

pic3

What do you think?

Specifically, Dial alleges that P&G’s use of the “PURCLEAN” mark to sell laundry detergents is likely to cause confusion, cause mistake, or to deceive.  Dial contends that it has already suffered irreparable harm to itself and its PUREX and PURECLEAN Marks, and if not stopped Dial and its Marks will continue to be harmed.  Money damages cannot compensate Dial for the harm to its reputation and goodwill and the loss of control over its famous PUREX trademark and the PURECLEAN marks that will result from P&G’s unauthorized use of PURCLEAN.

This is not the first battle between Dial and P&G.  The sudsy dispute started at the USPTO when P&G filed an intent-to-use application for the “PURCLEAN” mark.  The USPTO recently sided with Dial and issued a refusal of this application based on a likelihood of confusion with Dial’s registered trademark and slogan for PURECLEAN, PUREVALUE and PUREX marks.  The Examining Attorney found that the proposed PURCLEAN mark shared the “identical phonetic equivalent wording” with Dial’s Ma and that P&G’s and Dial’s goods were both laundry detergents.  Will the Arizona federal court agree with the USPTO?

Dial asserts that it’s PUREX trademark is famous.  It has sold many billions of dollars of products under the PUREX mark in retail stores.  The company and its predecessors have expended millions of dollars over the years advertising and promoting the PUREX mark.  Dial further asserts it had plans to further expand its already significant use by expanding its social medial in Facebook, Twitter and Instagram pages.

Dial also uses the PURECLEAN mark in connection with its popular RENUZIT brand of air fresheners and deodorizers.  It is an important brand for the company.

Dial asserts TIDE dominates the laundry detergent product category with 42.8% share of the U.S. laundry detergent market with TIDE and its TIDE Simply Clean products.  P&G’s massive advertising of TIDE “dwarfs Dial’s expenditures.”  “As a result, there is likelihood that P&G’s massive advertising and promotional efforts will saturate the market and dilute the distinctiveness of Dial’s PUREX mark.

Will the Court believe that this irreparable harm will happen and an injunction is needed?

A Missed Step in Branding Fitness Trackers?

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

Jawbone-UpI’ve been wearing one of these little guys on my wrist for almost a year now. Love it. The personal awareness it raises for me in the areas of sleep, diet, and activity, has been profound.

Can’t tell you how many times folks have asked, “Is that one of those fit bits?” “Nope,” I sometimes say lazily and admittedly without trademark rigor, “it’s a Jawbone, but same idea.”

Lazily because I think I’m tired of reminding folks that fitbit is actually a brand, not a generic, category name for a type of health tracking device, and Jawbone is a major competitor of Fitbit:

fitbitlogo

 

My Jawbone is pretty amazing. I’m probably not using all the bells and whistles available, but it automatically tracks my sleep and steps, and I’m easily able to record what I eat and do.

Meanwhile, back to the trademark point, my absence of trademark rigor might also be explained by my serious question of what the appropriate generic term is for this category of products.

So, taking a stroll through MOA with my daughter revealed this Lululemon sign, and more importantly, the answer to my question: “Fitness tracker” is or should be the category term.

lululemonsign

Yet, only steps ahead, as we passed Brookstone, it became apparent that Fitbit doesn’t appear to fully embrace the “fitness tracker” term, opting more broadly for simply “trackers”:

BrookstoneFitbitDisplayI’m doubting the USPTO will ever allow the term “trackers” as an appropriate generic term, it’s simply too indefinite. It does, however, allow “wearable activity trackers” and that category name was added to the USPTO’s Trademark ID Manual months ago in January 2016.

“Pedometers” has been around as a pre-approved goods identification within the USPTO’s Trademark ID Manual since April 1991, but that description, while accurate as to one feature, it seems under-inclusive overall.

“Wearable activity trackers” seems like a good one, but it hasn’t gotten a lot of traction yet, as it appears there are only 244 pending trademark applications using this term in the description of goods field, including this odd one for GARMARVR, filed by a Chinese company.

Hello, Garmin — another heavy-hitter in the “fitness tracker” or “wearable activity tracker” category — you might want to take note of that recently filed trademark application.

A review of Fitbit’s description of goods in its first trademark registration at the USPTO isn’t much help either, too much of a mouthful, even with the bracketed deletions from the original ID:

“Multifunctional electronic devices for displaying, measuring, and uploading to the Internet information including time, date, [ body and heart rates, global positioning, direction, ] distance, altitude, speed, steps taken [, ] * and * calories burned [, navigational information, weather information, the temperature, wind speed, and the declination of body and heart rates, altitude and speed ].”

Having said that, Fitbit’s most recent application includes a nice attempt at a bite size term capable of being embraced by the general public for this category of goods — “Personal fitness trackers” — but, the Examining Attorney contends even that is too indefinite, so stay tuned.

This whole discussion reminds me of a few points we’ve made multiple times here before, so let’s take a few more steps together down memory lane:

  1. When a new product category is being launched — as we learned from the Rollerblade example (taking an entire decade to come up with “in-line skates”) — creating a great brand name is obviously important, but it is just as important to also create a suitable generic category term for the public to embrace once inevitable competitors appear.
  2. When a brand’s visual identity utilizes and encourages an all lower case style and format, as fitbit does, it might find itself on our Genericide Watch some day.

What do you think? Is fitbit flirting with disaster by using its all lower case branding style?

Also, has it lost an early opportunity to donate a suitable generic category name to the generic public so it doesn’t have to relinquish its trademark for that same purpose?

Trademark Litigation Keeps Getting Cheaper (If You Win)

Posted in First Amendment, Law Suits, Trademark Bullying, Trademarks

Slowly but surely, the extension of the Supreme Court’s 2014 Octane Fitness v. LLC v. Icon Health and Fitness, Inc. decision to trademark claims is gaining traction among federal appellate courts. The Octane Fitness decision addressed the standard for determining whether a case is “exceptional” under the Patent Act and therefore eligible for an award of attorney fees. Earlier this week, the Fifth Circuit jumped on the bandwagon with its decision in Baker v. DeShong, Case No. 14-11157 (May 3, 2016)(available here).

Baker operates the HIV Innocence Group, which provides medical, legal, and investigative services for individuals in criminal and civil suits who have been accused of intentionally or recklessly infecting another person with HIV. Baker owns a trademark registration for the HIV INNOCENCE GROUP mark. He also does not like to be criticized. When Jeffrey DeShong created a website criticizing the HIV Innocence Group, Baker sued him for trademark infringement.

The District Court granted DeShong’s Motion to Dismiss on the ground that the allegations failed to support a claim of likelihood of confusion (discussed in more detail here). Following that ruling, DeShong requested an award of attorney’s fees, arguing that the case was “exceptional”. However, the District Court denied the motion, citing prevailing precedent that to qualify as “exceptional,” a case must be brought in bad faith.

The Fifth Circuit reversed the decision, ruling that the Octane Fitness Court “provided clear guidance” that to be exceptional does not require a claim to be brought in “bad faith.” Instead, an exceptional case is a case that “stands out from the others with respect to the substantive strength of a party’s litigation position” or with respect to “the unreasonable manner” of a party’s actions in litigation.

Although DeShong requested that the Fifth Circuit also find that the claims qualified as an exception for an award of attorney fees, the Fifth Circuit remanded to the District Court to decide the issue. With this ruling, the Fifth Circuit joins the Third Circuit (Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303 (3d Cir. 2014)) and the Fourth Circuit (Georgia-Pac. Consumer Prods. LP v. von Drehle Corp., 781 F.3d 710 (4th Cir. 2015). The Sixth Circuit has not squarely addressed the issued, but remanded a case to the District Court to “assess the applicability” of Octane Fitness to the request for attorney fees (Slep-Tone Entertainment Corp. v. Karaoke Kandy Store, Inc., 782 F.3d 313 (6th Cir. 2015)).

While no circuit court has reached a contrary decision, there has been disagreement among district courts. Most district courts have applied Octane Fitness to trademark infringement claims, but at least one district court has rejected the applicability of Octane Fitness to non-patent claims (Romag Fasteners, Inc. v. Fossil, Inc., 2014 WL 4073204 (D. Conn. Aug. 14, 2014)). There the court concluded that Second Circuit precedent requiring “bad faith” was still good law and therefore binding upon the court.

Although it is possible other courts may choose to reject the applicability of Octane Fitness to trademark infringement claims, this seems unlikely in light of the trend among the circuits. The Fifth Circuit’s decision lends further support to this notion.

Of course, the standard adopted in Octane Fitness does not guarantee that it will be easier to obtain an award of attorney’s fees. We previously discussed a Washington district court decision refusing to grant an award of fees under the Octane Fitness standard.

At a minimum, however, these decisions caution trademark infringement plaintiffs to objectively examine the strength of their claim. They also provide victims of unreasonable or meritless claims of infringement with some potential leverage: the threat of forcing the plaintiff to write a check for the defendant’s legal fees.

Another Pom Case

Posted in Advertising, False Advertising, Food

No, this one isn’t about uniforms. The Supreme Court has refused to hear POM Wonderful’s appeal of FTC findings that claims in POM’s advertising were misleading. POM’s ads claimed that its juice could help prevent heart disease, prostate cancer, and erectile dysfunction.

Unsurprisingly, the FTC thought that POM should have some proof of those claims before making them. POM apparently disagreed and appealed all the way up to the Supreme Court. POM was claiming, among other things, that the restriction was an impermissible infringement of its First Amendment rights. The D.C. Circuit Court of Appeals disagreed. Apparently they thought some evidence of specific health benefits should exist before a company makes such claims. And while the Supreme Court obviously didn’t address the issue, it seems they must have agreed.

I’m a pretty big fan of pomegranate (for the flavor, not the health benefits), but I’d have to agree that if you’re going to claim specific health benefits, you should have some support to back up the claim. Claiming benefits related to actual diseases goes a beyond puffery. Pomegranate juice may not be snake oil, but treating it as a panacea warrants at least a reference.

POM

(I hope they can back that up)

Interestingly enough, the last time POM Wonderful knocked on the doors of the Supreme Court, they won. In that case they were the ones taking issue with someone else’s advertising.

I also find myself questioning their decision to appeal this to the Supreme Court. I don’t remember this issue, even though the legal wrangling has been ongoing since 2010, and I’m pretty sure I wouldn’t have heard of it if they didn’t appeal all the way up the ladder. Of course, if they believe their claims are legitimate (and hopefully believe they have evidence to support that belief), I understand the desire to fight all the way. However, the D.C. Circuit Court of Appeals reduced the requirement originally imposed to a single randomized clinical human trial before POM could make such claims. That seems reasonable if you are going to claim your product has specific health benefits. Perhaps they should have taken that as a victory and gone home rather than bringing the issue back up in front of the nation.

This highlights a branding and marketing issue. If your product is a bottled juice, you don’t think like company making supplements or drugs. Juice is good for your, everyone knows that. Here POM has been marketing itself as the healthy refreshment, but it doesn’t think like a company that provides products purely for health benefits. Those companies tend to realize that some level of evidence is required before you make claims about health benefits. But if your product is a beverage readily available in most gas stations, you don’t necessarily realize that support is required. Claiming your juice is healthier than that soda someone might buy is a logical way to get people to purchase your product over some of the others along the six to twenty feet of beverage options available in any given gas station. But there are many juices available too. It’s probably best not to go further by claiming your juice helps fight diseases unless you actually have some evidence to back it up. And that seems fairly reasonable to me.

Fictitious Versus Fake Branding

Posted in Advertising, Branding, False Advertising, Food, Guest Bloggers, International, Marketing, Taste

– Mark Prus, Principal, NameFlash

Creating fictitious names for products is standard practice in many industries. Creating a brand that evokes a certain image or feeling is so commonplace that most of us don’t think twice about it.

jhgh

Consider Genova Tonno. In the Italian language, Genova is the city of Genoa, and Tonno is tuna. So you might infer that a can of Genova Tonno contains tuna caught in the waters off Genoa. Actually, Genova Tonno is a specialty brand of tuna owned by Chicken of the Sea. The label says:

Genova Tonno© Premium Yellowfin Tuna. Wild caught from deep waters, Genova Select Yellowfin is all natural with no additives or preservatives. Genova is packed in the Mediterranean tradition with olive oil, which provides a rich and delicious flavor.

Chicken of the Sea is owned by a Thai-based company called Thai Union, which has its own packing facilities in Thailand. While the source of its tuna is never identified beyond “deep waters” it is believed that those deep waters are not off the coast of Italy, but rather are off the coast of Thailand.

By all reports, this is very tasty tuna. Do you really care that the manufacturer is positioning its product as being Italian when its heritage is clearly not Italian? If so, perhaps you should buy Asdomar which claims that its tuna is “100% processed in Italy.” Note: even this does not mean that all of their tuna is caught near Italy

Need another example? Would you be upset to know that Häagen-Dazs was born in the Bronx, New York in 1961? Its creators were not Scandinavians but rather two Polish immigrants, Reuben and Rose Mattus. Why did they choose the name Häagen-Dazs? The name was created to look Scandinavian for Americans because the European cachet radiates craftsmanship, tradition, and wholesomeness, thereby justifying the higher price.

Recently in the UK, Tesco has been drawing flak from consumers because they created seven fictitious farm names and are using them in marketing their products. Fake farm names such as Rosedene and Nightingale now provide a cachet to their product lines.

“Authenticity” is a traditional buzzword for marketing. Studies have shown that brands should be authentic to build trust among consumers. At what point does a “fictitious” name cross the “authenticity line” and become a “fake” name?

The Tesco example shows one flash point is food sourcing. Consumers want to know where their food comes from and apparently once people discover that “Rosedene Farms” isn’t a real place they no longer trust that those apples sold under that brand name are of high quality. Critics in the UK are calling this practice “legal deception.”

The US Patent and Trademark Office has a fairly broad definition of what they consider to be “legal deception” in geographic names. The policy of a name being “geographically deceptively misdescriptive” would prevent the registration of such a trademark. According to the USPTO website, “A mark will be refused as primarily geographically deceptively misdescriptive if: (1) the primary significance of the mark is geographic; (2) purchasers would be likely to think that the goods or services originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place or services/place association; and (3) the goods or services do not originate in the place identified in the mark.”

That would seem to indicate that Tesco might be facing some storm clouds on the horizon if they try to register their set of “fake farm names” in the US.

Perhaps I am immune to this issue because I am a professional name developer with 25+ years of experience as a consumer products marketer. I long ago stopped losing sleep over the fact that Betty Crocker isn’t a real person!

Heading to Orlando Later This Month?

Posted in Articles, First Amendment, Mixed Bag of Nuts, Trademarks

DuetsLettersAfter returning from a great set of collaborative meetings with other members of the Executive Leadership Board at the University of Iowa’s College of Pharmacy, let’s say, we’re now looking forward to AIPLA’s Spring Meeting, located in our own Minneapolis backyard and playground.

My perspectives on the potential-U.S. Supreme Court-bound First Amendment challenges to Section 2(a) of the Lanham Trademark Act will be shared.

On the heels of AIPLA — we’ll descend upon Orlando for INTA’s Annual Meeting, to visit with our trademark colleagues from around the globe.

Of course, everyone who’s anyone, will be at the highly anticipated off-the-grid UNTA event appropriately dubbed “Meet the Bloggers XII.

Come one, come all, we look forward to spending some quality time together.

What do you mean(s) we lost?!?

Posted in Law Suits, Patents

Tomita Technologies USA, LLC was handed a devastating loss earlier this week in its long-enduring battle with Nintendo over stereoscopic (i.e. 3D) image technology.  Back in 2013, Nintendo lost a patent infringement jury trial in the Southern District of New York and was ordered to pay $30.2 million in damages to Seijiro Tomita, the inventor of United States Patent No. 7,164,664.  Roughly speaking, the ‘664 Patent provides a way to display 3D images without the need for 3D glasses.  Tomita had accused Nintendo’s 3DS system of infringing the patent.

Nintendo appealed the original jury verdict to the United States Court of Appeals for the Federal Circuit.  The Federal Circuit then reversed the construction of a critical claim term underlying the original judgment, which required a new trial in the district court.  The district court concluded in the new trial that Nintendo did not infringe the patent because the means by which the 3DS accomplished its stereoscopic image was different (and frankly, more sophisticated) than the means disclosed and claimed in the ‘664 patent.

Ultimately, Tomita lost in this case as a result of something known in patent law as “means-plus-function” claiming.  Dennis Crouch over at Patently-O previously did a nice summary of the what “means-plus-function” claiming is, and why such claiming is starting to fall out of favor with patent applicants.  When you draft a patent claim that identifies a functional attribute of your invention, the protection of the patent is generally limited to the particular structure you have used and disclosed to accomplish this function.  Tomita’s invention depended primarily on hardware components to accomplish the image offset function, whereas Nintendo relied primarily on software algorithms.

Aside from resulting in a bad day for Tomita, this lawsuit highlights again the difficulties that we are currently facing with regards to intellectual property protection for functions that are accomplishable with software.  As it currently sits, the United States does not have any clear protection scheme for protecting software rights.  Rather, software is “protected” through a mishmash of patent, copyright, trademark, and trade secret law, none of which were truly designed to work for software.  (See here.)

Our intellectual property regime also has problems with trying to protect inventions in a world where technological capabilities are expanding at break-neck speed.  Often times, important inventions from the “analog” world can be replicated through software or digital means and in the case of a “means-plus-function” patent, that will frequently be sufficient to avoid infringement.  At some point, we need to make a policy decision as to whether we think this is okay.

To be clear, I’m not suggesting that the differences between the Nintendo and Tomita functions were merely one using software while the other used hardware; there appeared to be additional differences as well.   However, I think a case like this presents a good opportunity to ask the questions about how intellectual property rights should be considered in our environment of constantly evolving technological capability.  We need to find a new balance between incentivizing invention without creating undue obstacles to innovation.

Who’s Got PRINCE Control?

Posted in Copyrights, Idea Protection, Patents, Trademarks

My home state of Minnesota prides itself primarily on three things:  our ability to withstand our winters, our 10,000 lakes, and our dearly beloved Prince.  While we take a beating when it comes to our sports teams, all of his purple life we had Prince.  Just like you might do for your neighbors, he opened his Paisley Park doors to any one of us to come hang out and dance until the wee hours of the morning.  Minnesotans kept a respectful distance from him and honored his desire for privacy, even though Paisley Park borders a well-traveled highway in the western suburbs.  Maybe it was just that we all knew we weren’t cool enough to talk to him, but honestly what would you even try talk to him about?!?   After I moved out of the state for college, Prince was often a symbolic rock when I was feeling a little homesick.   When my freshman year roommate decorated her side of the room with dozens of photos of my two least favorite things (Brett Favre in a Packers uniform and Dave Matthews) to mark her territory, I blared Prince from my side of the room.   When the Vikings “set a new mark for futility” and lost the NFC to the Packers, Chappelle’s True Hollywood Story skit about Prince aired.  My Wisconsin-born friends suddenly found being from ‘Sota to not be so pitiful.  “Where is Lake Minnetonka?”   “Did he really have parties like that?”  “Wait, he still does?!”

Prince’s death last week rocked Minnesota pretty hard.   That cool, funky vibe that emanated from his small 5’2″ frame felt noticeably absent in Minneapolis over the weekend.   His aura made you want him to drop some insane, sexy, humorous, wise, out of this world one-liner on you (pay attention heirs, I hope a desk calendar compilation of these is forthcoming).  As much as the world may have been surprised by stories coming out of Minnesota about our state’s relationship with him, I was equally surprised by the extent of all of the Prince tributes worldwide.   As the video from the SNL 40th anniversary party makes clear, even the cool people at the lunch table thought he was too cool for them.  When you grow up thinking of him as your neighbor who floats on purple smoke, threw great parties, and oh also happened to be a musical genius, I never really noticed the true extent of his international stardom.

While he was known for his privacy, he also was known to be strict about his copyrights in his works – probably even more so than Kanye West.  But…he did not have a will,  which means the ownership of his copyrights in his works will certainly be called into question.  The copyright term for an individual’s work is “the author’s life plus an additional 70 years.”   Assuming that he owns them personally, rather than as an asset of some corporate entity, that would give his heirs ownership rights in these works for another 70 years.  The ownership of the copyrights in his songs, and what “heirs” get to lay claim to them, is certainly going to be a hotly contested battle.

And then there are the trademark rights for a guy who once was only referred to by a symbol or The Artist Formerly Known As Prince.  Even before it was confirmed by a judge yesterday that Prince had no will, his trademark filings gave subtle hints that maybe his affairs were not fully in order.   All of the applications that I found appear to be owned by Paisley Park Enterprises.  The maintenance filing for his registration for PRINCE (registered after his Love Symbol period) for “entertainment services, namely, live musical and vocal performances by an individual” was not filed when due in 2004, so that registration was cancelled.  It was refiled in 2005 by a different firm, and again the maintenance filing was not timely filed and so that registration was cancelled in 2013.  It was refiled in October 2014 by yet another firm and just scheduled to publish two days ago.  Meanwhile, his iconic “Love Symbol” is handled by yet another firm — that seems to have even handled simple recent filings in paper filings, which is a rather unusual practice in the last few years due to a preference for electronic filings by the USPTO.  It makes you wonder what actually was going on behind the scenes here.

With one more verse to the Prince IP story, I need another piece of your ear.  You see not only was Prince a musical genius, he was also an inventor of this keyboard design and had a design patent for this, which expired a few years ago.

princeWho will end up owning Prince’s IP rights – and controlling his legacy – remains to be seen, but as I just overheard someone say while I  finished drafting this post “the people of Minnesota should own it.”

 

 

Trademark Lessons for New Businesses from a Lawsuit Against a Colorado Juice Bar

Posted in Articles, Dilution, Fair Use, Infringement, Law Suits, Trademark Bullying, Trademarks

It is a big, exciting, and dangerous risk to start a new business. There were approximately 400,000 in 2014 (continuing a recent downward trend, according to Gallup). Most entrepreneurs know that the odds are stacked against them, as about 50% of new companies fail during their first five years (dig deeper into the numbers here.).

There are countless reasons why new businesses fail and so many are out of the owner’s control. However, a business’s name and trademarks are within its control. Unfortunately many new businesses don’t learn of the risks associated with trademarks until it is too late. A recent lawsuit against Sol Kitchen juice bar and café provides some cautionary lessons for new businesses.

Sol Kitchen opened just the second week of April in 2016.  The company has already been sued. The plaintiff is Baja Management, owner of the Sol Cocina Mexican restaurant chain. Baja Management has locations in California, Arizona, and recently announced last January that it would be opening a location in Denver, Colorado. Reportedly, Baja Management sent a cease-and-desist letter to Sol Kitchen in January, but the discussions stalled when Baja Management would not agree to pay Sol Kitchen for it to change its name. Sol Kitchen had already invested at least $10,000 into its website, logos, and other items.

Understandably, many new businesses are shocked when they receive a cease-and-desist letter. The owners of Sol Kitchen noted that state or federal officials did not object to their name. Recipients of cease-and-desist letters often feel like they are being “bullied” or unfairly singled out. While these reactions are normal, the reactions reflect a misunderstanding of U.S. trademark law (which, admittedly, doesn’t always align with common sense).

Here are three common misunderstandings regarding trademark disputes that may help your business avoid a similar situation:

  1. Registering your entity name does not provide protection for your trademark. When you incorporate your business or obtain a federal tax number, the state and federal officials do not evaluate the availability of your name as a trademark. Most states will examine only whether there is an identical business name (meaning, you could probably register Starbux Coffee House, Inc., but it doesn’t mean you can legally use the name). If you want legal advice regarding the availability of a trademark, you need to consult with a trademark attorney.
  2. Just because another company is not in your city or state, its rights are not necessarily limited. If a company obtains a federal trademark registration, that company has the right to use that trademark nationwide, except against third-parties who have established valid common law rights prior to the filing date of the trademark application.
  3. The fact that other companies are using the same word in their business doesn’t always justify another third-party use. The issue is whether there are so many third-parties using a particular term in U.S. commerce in connection with the same or related goods or services such that the trademark should be entitled to a narrow scope of protection. This is a fact intensive, legally complicated, and ultimately very subjective analysis. If you’re relying primarily on third-party use as a defense, you’re facing an expensive legal battle, and one that you may end up losing.

Avoiding these three misunderstandings can help reduce the risk that your business finds itself on the receiving end of a cease and desist letter. Ultimately though, every business should consult with a trademark attorney before crossing the line to where it would be cost-prohibitive to change the name of a business or product.

A preliminary clearance search of the records of the U.S. Patent and Trademark Office (or a “knock-out” search) can quickly and relatively inexpensively identify clear problems with a new trademark or name. A trademark attorney can also equip you with some knowledge in how to select a new or modified name that carries less risk.

While a search cannot identify every potential problem, it can significantly reduce the risk of being the target of an infringement lawsuit. Such a search can help avoid legal fees and rebranding costs and, perhaps more importantly, provide you with a little peace of mind. With all of the other unknown challenges facing small businesses, evaluating the risk of a possible trademark dispute, while there is still time to change course, is an opportunity that every new business should use.

Is the Taste as Sweet?

Posted in Guest Bloggers, Mixed Bag of Nuts

–James Mahoney, Razor’s Edge Communications

An upscale little bistro/bakery with two Boston-area locations serves terrific pastries and lunches. The ambiance is delightful, the service is good; and the waitstaff nicely uniformed. All in all, an enjoyably classic “sidewalk café” experience.

In the blink of an eye, that all changed for me recently. An item in the Boston Globe noted that a national chain had bought a majority share in the business. In that moment, it went from being a cool local joint to a cog in a big wheel.

Now I have nothing against the bigger company. In fact, I’m an occasional customer there, and have never had a complaint about the food or the service.

Nevertheless, to my mind, the bistro/bakery just flipped from being an entrepreneur’s genuine small-business dream to being a gimmick. It’s quite possible that nothing may change—though I doubt that—and I may be accused of being a shallow snob. But I’m betting that you’ll see this brand start to pop up all over.

And as it does, those chain-made pastries won’t taste quite so sweet to me.

I’ve noticed the same type of response in others when this sort of thing happens. Craft beer and organic packaged foods are two examples. In both cases, I’ve heard identical reactions to the news that they’d been acquired by national/international conglomerates: “Arghhh. Well, that’s it for them as far as I’m concerned.”

Musicians suffer similar slings and arrows, accused of selling out if their tunes become soundtracks to ads.

Other businesses—software development, for example—typically don’t trigger the same reaction. It’s a given that those folks are in it precisely to make something of value that they can then sell for big bucks before moving on to their next big idea.

But the arts, including comestibles, are different.

Part of this, and perhaps the biggest part, is that people who gravitate toward start-ups, small businesses, and “discovered” gems of limited availability find value and personal satisfaction in helping people who are just like us, except that they had the vision and the drive to do the hard work of getting the thing off the ground.

Supporting them feels like you’re personally contributing to the success of something that you value. However ephemeral that connection might be, it’s lost the moment the entity gets sucked up into the borg.

There’s no logic to any of this. But then, logic isn’t where this kind of brand affinity lives; emotion is.