DuetsBlog

Collaborations in Creativity & the Law

Pay Attention! Symbols Matter!

Posted in Mixed Bag of Nuts

A couple different events occurred this past week which ought to serve as reminders of the importance of symbols and the need to protect brand perception when dealing with symbols.

First, the State of South Carolina underwent a tremendous rebranding recently when South Carolina’s government eventually (and, in my view, somewhat surprisingly) agreed to remove the Confederate battle flag from state grounds.  Of course, this does not mean that the flag is “banned,” it simply means that it will no longer serve as a representative symbol of the government (and by extension, the people) of South Carolina.  Individuals, in exercising their freedom of speech, are still entitled to purchase and fly the flag, to the extent they can find it.  So, if you want to continue protesting that it’s “heritage, not hate,” they can go right ahead.  But foor all those that want to continue arguing the point, the simple fact of the matter is that the negative connotations associated with this symbol have, for a long time, outweighed any highly debatable positives associated with it.  That’s simply undisputable.  Regardless of whether you think the flag has positive symbolism (which is debatable), you can’t deny that it has become a symbol of racism and hatred.  When the negatives outweigh the positives, it should be a pretty easy decision for any brand-owner–in this case, the State of South Carolina–to cut ties with the symbol and move in a better direction.  When you’re dealing with symbols, perception is reality.

Second, Subway was  forced to undergo the cost benefit analysis in connection with its “Jared” branding campaign  when pitchman Jared Fogle’s home was raided by federal law enforcement just two months after one of his foundation’s employees was arrested on child porn charges.  At this point, any ties between the Fogle raid and child porn is speculative, but again, perception is reality, so Jared’s got to go.  (At least for now).  After all, the last thing Subway wants its customers thinking about when trying to pick a sandwich is child porn.

Because perception is reality and because symbols matter, those in charge of any branding campaign–whether it’s corporate, governmental, or even personal–need to be incredibly vigilant in both protecting their symbols, and in monitoring how their symbols are being perceived.  We received stark reminders of this during the past week.  Had South Carolina not taken down the flag, it risked being viewed as a state of backward hillbillies on the wrong side of history.  Had Subway not acted quickly when dealing with Jared, it likely would have risked an even further drop in sales and positive brand association than I’m sure its already experiencing.

Reimagining 3D printing

Posted in Guest Bloggers, Mixed Bag of Nuts, Technology

- Derek Mathers, Business Development Manager, Worrell

3D printing has the potential to be a disruptive technology because it is the first human manufacturing technique that emulates nature by growing complex structures additively, using only the required material. 3D printing gives engineers the freedom to design without the constraints of a mold, and carries with it the ability to switch production lines instantly with a new file uploaded.

image 1

The current 3D printing market is comprised of many machines that have been marketed as “3D printers,” but do not truly print in three dimensions; rather, they repeat two-dimensional layers over-and-over again. This layer-by-layer process creates mechanical weaknesses in the parts, and takes hours to print even the smallest components. In addition, the cost of 3D-printable materials is prohibitively high, driven by the fact that many companies are making aggressive growth numbers through exceptionally high margins on proprietary material.

In order for 3D printing to become a meaningful option for mass production, printing speeds need to increase significantly, while maintaining accuracy. Carbon3D’s CLIP (Contiuous Liquid Interface Production) printers seek to fill all of these requirements gaps – CLIP uses a light projection system that continuously “grows” parts at 100x the rate of current technology, with much higher resolution.

Because CLIP uses a continuous process, instead of the more common layer-by-layer approach, it is able to directly grow parts instead of having to mechanically re-set its print nozzle after each layer. This continuous process also addresses the issue of strength since it makes parts that are mechanically similar to injection-molded parts.

image 2

In addition to its technology, Carbon3D also has an amazing staff. Joe DeSimone, the CEO and Co-Founder, is one of a handful of individuals who have been elected to all three branches of the National Academies. The team also includes Apple’s ex-VP of Worldwide Marketing (as Chief Marketing Officer) and Tesla’s ex-VP of Software and Electrical (as VP of Engineering). They have also been working closely with DuPont – as the fourth largest chemical manufacturer in the world, DuPont will be able to provide Carbon3D with materials that are significantly cheaper than the proprietary materials used in current 3DP machines.

Carbon3D is poised to up-end not only the 3D printing industry, but also manufacturing as we know it. Expect to see Carbon3D machines in hospitals, vehicles, and all over your television within the next couple of years, and prepare your business model for these new opportunities.

A Smörgåsbord of Standard Characters

Posted in Advertising, Branding, Famous Marks, Marketing, Non-Traditional Trademarks, Trademarks

Strolling around the Mall of America last weekend, I was surprised not only by the rather low weekend crowds (everyone must have retreated to their respective lake cabin) but also the brand-new store for Swedish outdoor brand Fjällräven. What with my highly-attenuated Swedish ancestry, I couldn’t help but stop in.

The company’s perhaps best known for its Kånken backpacks - small and prominently-branded, you have almost certainly seen one regardless of where you’re located. They’re also have a line of excellent outdoor products, in the vein of The North Face and Columbia, like the Skogsö jacket.

Processed with VSCOcam with c1 preset

Photograph courtesy of MSPMag.com (http://mspmag.com/Blogs/Alishops/June-2015/Valkommen-to-Minnesota,-Fjallraven/)

What I couldn’t help but notice was Fjällräven’s prominent and frequent use of the Swedish language’s additional three letters – Å, Ä, and Ö. Perhaps you noticed the last paragraph was littered with them. It’s not only because of the Swedish words that litter the catalog (Fjällräven means “Arctic Fox”), but also a marketing technique to emphasize the outdoorsy Swedish-ness of the brand–and accompanying European import prices. So what do these letters have to do with U.S. trademarks? Well, these three letters are right at home in Göteborg, but do they have any place at the United States Patent & Trademark Office, the keeper of English-language marks?

We frequently recommend that trademark owners register their bread-and-butter word marks in a form known as “Standard Characters” — essentially, a format that claims trademark protection for the wording only, without any typeface style or other design elements. This requires entering the words into the PTO’s trademark application, which then converts the text into regular old Times New Roman. This provides the broadest possible protection for a word mark, as it allows the owner to prove up use regardless of the font or design elements that accompany the mark in actual marketplace use.

So if your brand’s logo changes from year to year (I’m looking at you, Facebook), a standard-character registration will do the trick.

But what about foreign words with a wider range of characters at their disposal? Are these nonetheless “standard” and acceptable by the PTO? It turns out that just about any Latin character you’ve accidentially pasted into a Word document is also probably acceptable in a standard-character trademark application. The Trademark Manual of Examining Procedure states that the PTO has its very own “Standard Character Set,” available here, that lists each of the letters and symbols a trademark applicant may use in a standard-character drawing. This includes the three additional Swedish letters as well as many known favorites like Æ, œ, and Ø.

Many applicants, however, (perhaps intentionally) substitute foreign-language characters with its more mundane A-Z analog (for example, MUNCHEN instead of MÜNCHEN or SMORGASBORD instead of SMÖRGÅSBORD). This isn’t necessarily a problem for the trademark applicant but it can raise confusion as to whether the mark is an “Americanized” version of a foreign word or is trying to use the word itself. Luckily, the PTO has provided a way for foreign marks to remain faithful to their true spelling while retaining the broad protection of a standard character registration. Skål!

Not a Soccer Fan But SHEBELIEVES

Posted in International, Marketing, Social Media, Television, Trademarks

Although I’m an avid sports fan, I rarely watch soccer and quite frankly I also rarely watch women’s professional sports.  I have some very logical reasons for my avoidance of soccer (in what other sport does the clock tick up and “extra minutes” are then magically tacked onto the end, no matter the score) and women’s professional sports (have you tried to watch an Azarenka tennis match?).

But on Sunday night, I found myself on the couch in the final minutes of the Women’s World Cup match holding onto a belief that they would win.   Oh no there it was again… “I Believe That We Will Win” stuck right back into my head where it thankfully had vanished since last summer’s Men’s World Cup hoopla.  Around this time last year, Tim and I wrote a couple posts on the trademark issues surrounding the I BELIEVE and the chant (see here and here).  We probably could have written even a few more.  There were a couple colleges fighting among each other, as well as many filings incorporating I BELIEVE and I BELIEVE THAT WE WILL WIN by individuals and companies seeking to use the mark.  So what about the Women’s World Cup?  They went with…#SHEBELIEVES.

SHEBELIEVES

In the often egocentric world of sports (no examples needed), it was interesting to see the US Women’s team on a global stage stand behind the outward slogan  “She Believes” to advance the goals and dreams of other women and young girls.   The team encouraged social media posts with the hashtag #SHEBELIEVES with women posting photos and tweets about their goals and dreams.

Even with all the attention to this, there are no trademark filings for SHE BELIEVES or #SHEBELIEVES.  Now as I write this post, it is the Monday after the Women’s Cup Final, and so maybe something was filed today, but the Women’s World Cup has been going on for weeks.  And no filings.  Nothing from the US Soccer organization, nothing from a Jane Doe down the street.  Nothing?  To the extent any filing even incorporates SHE BELIEVES, the only one is for AND AS SHE BELIEVES, SO IT IS FOR HER for various clothing by Girl Power, Inc. registered over six years ago.  Pretty surprising to see that nothing was filed in the last month – especially with growing popularity for soccer in the US and the women’s team’s success.

Can you imagine what a world this would be if every young girl or woman had a chorus of fans, family, friends, sponsors, and mentors cheering “SHE BELIEVES…”?   I think we would find a lot more women scoring hat tricks in life.

How would you capitalize on SHE BELIEVES?  Do you think it has some staying power?  Would you have sought trademark protection for this?

 

Absolut Apologies, Comparisons, Truncations

Posted in Advertising, Articles, Branding, Fair Use, False Advertising, Food, Marketing, Trademarks, Truncation

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

Will Your Brand Celebrate American Independence?

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

By Debbie Laskey, MBA

In the United States, July is the month when we celebrate Independence, specifically on the Fourth of July. While many retail stores promote “Independence Day” sales that last more than just one day, we can all recall automobile sales advertised on TV and radio called “Independence Day Sales” but start in June and last well into July

The reason behind this advertising strategy can be explained by a simple fact. Businesses want to capitalize on the buzz of the moment. In the case of June and July in the United States, that buzz is Independence Day.

Consider the following well-known brands. During June and July, they are uniquely positioned to take advantage of the “America” or “American” portion of their brand names for a myriad of advertising and promotional opportunities – check them out to see what they do differently this time of year to build brand awareness:

* American Airlines

* American Apparel

* American Broadcasting Company

* American Eagle Outfitters

* American Express

* American Greetings Corp.

* Bank of America

* TravelCenters of America

If your brand had “America” or “American” in its name, what would you do during June and July to capitalize on Independence Day or the entire month of July? Certainly, product or service discounts are an option, or maybe, the launch of a new product or service, or perhaps, the implementation of a new loyalty or referral program. But whatever announcement your business makes, you would definitely have an audience.

Another spin on this topic is if a portion of your brand name is tied to a national park, national monument, theme park, hotel, resort, etc. There is no doubt that your brand has a head start on brand awareness if the name of your business were Mt. Rushmore Cement Company or Yellowstone Coffee or Liberty Music. In all of these scenarios, the first goal of all marketing campaigns has been achieved. There is immediate brand interest during June and July.

It’s important, though, that you don’t get so caught up in the buzz of the moment that you lose sight of the core strengths of your brand. Your competitive positioning and overall brand promise should stay front and center – always, no matter what unique advertising opportunity presents itself.

So, will your brand celebrate American independence?

Counterclaims for Cancellation Are Like Yoga Pants for Your Infringement Defense

Posted in Advertising, Fair Use, Fashion, Infringement, Law Suits, Loss of Rights, Trademarks, USPTO

Here’s one piece of advice you’ll hear from just about any trademark attorney: apply to federally register your marks as soon as financially possible. It is a very important step to take in order to protect your brand. A federal registration provides nationwide rights over any third-party that begins use of a confusingly similar mark after you file the application. This, along with other reasons, is why it is much easier to prevent or stop third-parties from using infringing a registered mark than it is for an unregistered mark. However, a registration is not a guarantee of success against third-parties, which is something a small entrepreneur may find out as its lawsuit against Skechers moves forward.

Terri Kelly is an entrepreneur who sells her own flip-flops at http://terrikelly.com/. She advertises her wares with the slogan YOGA PANTS FOR YOUR FEET®, as shown from her website below:

ypforfeet website

As you might guess, that “little r” is very important to this story. Ms. Kelly applied to register the YOGA PANTS FOR YOUR FEET mark on May 23, 2014. It ultimately registered on May 5, 2015. Why does this matter so much? Because sometime in early 2015, Sketchers began promoting sales of its footwear identifying them as being “like yoga pants for your feet.” After a cease and desist letter went un-ceased and un-desisted (that’s a legal term, I think), Ms. Kelly filed a complaint against Skechers on May 13, 2015.

Ms. Kelly seems to have a pretty strong claim. Skechers has used the entirety of Kelly’s mark for highly related footwear products. It also appears clear from publicly available Skechers began using the mark only after Kelly filed its trademark application. Accordingly, that registration provides presumptions of validity, ownership, and priority of the YOGA PANTS FOR YOUR FEET. But what if the registration is invalid?

A registration is vulnerable to cancellation on a number of grounds for the first five years of registration: First, if the third-party actually used the mark before you, it may be able to cancel the mark based on priority. Second, the party may be able to cancel the mark claiming that the mark is merely descriptive and never should have registered. Third, an application may be void if the mark was not in use at the time of the application (for use-based application). And fourth, if the applicant commits fraud upon the Trademark Office (submits materially false statements with the intent to deceive the Trademark Office).

As you might have guessed, Skechers has asserted all of these grounds in its counterclaim for cancellation of Kelly’s registration. Skechers also asserted a claim of fair use, meaning that it is making legitimate use of the words in order to describe their products.

There is a thin and subjective line between suggestive trademarks and merely descriptive trademarks. While Skechers is correct in that “YOGA PANTS FOR YOUR FEET” has some descriptive significance, I’m not convinced that it is merely descriptive as a whole. The individual words may be, but that doesn’t render the entire mark as merely descriptive. A number of well-known marks consist of descriptive components. If the shoe was on the other foot, I would think Skechers would agree. After all, Skechers is the company owns the following applications and registrations:

  • 50% SHOE. 50% SOCK. 100% COMFORTABLE
  • SOCK-FIT
  • RUN HARD. LAND SOFT.
  • ALL AROUND COMFORT
  • RELAXED LIVING
  • ENERGIZE EVERY STEP
  • SHAPE-UPS
  • TONE-UPS

Kelly’s YOGA PANTS FOR YOUR FEET is at least as suggestive as all of these marks. I have to think that Skechers would take similar action against a competitor for using these same slogans. Also interesting was Skechers initial public response, which accused Kelly of “attempt[ing] to trade on Skechers’ long track record of success.”

We’ll have to wait and see what facts the parties come forward with to support and defend the claims of invalidity. In the event that the registration is considered invalid, it will be unfortunate. Many small businesses and entrepreneurs recognize the importance of protecting their brands, and invest the time and money to obtain a registration. The fact that you have a registration means little if the registration could be cancelled by a defendant. Unfortunately, parties often don’t find this out until after they’ve been harmed by another third-party’s infringement.

Here are three tips to consider when applying for a trademark to decrease the risk you’ll find yourself in this situation:

  • If you or your client has any inkling that the mark is merely descriptive, consider picking a new one. It is better to change the mark before you invest more money.
  • Make sure you can support your filing basis of the application. If you file on an intent-to-use basis, have documentation that shows your efforts and intention to sell the products or services identified in the application. If the application is based on use, make sure you’ve made a bona fide use in commerce of the mark.
  • If you ever see any issue regarding use in commerce (or if the Trademark Office refuses your specimen of use), don’t just try to find a way around it. If the specimen is refused, it may mean you haven’t made actual use in commerce. If this is the case, you can amend the application to an intent to use basis to possibly address the issue.

While these steps can’t guarantee that your registration will be valid, they can help you prevent some easily avoidable (but often overlooked) mistakes.

That Google Image Search Could Result in Trouble

Posted in Almost Advice, Branding, Copyrights, Fair Use, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Technology

One aspect commonly associated with building and maintaining a business is the company website. Establishing an online presence can be an important tool for connecting with customers. While website creation can be a delightful distraction for some and perhaps a frustrating obligation for others, platforms such as WordPress and Squarespace make it relatively simple for company owners to design and run their own websites. A business may choose to broaden its online presence even further with social media networking and blogging. On any of these platforms, businesses may wish to incorporate images into the design. Unfortunately, the Internet’s open atmosphere renders unknowing copyright infringement an easy trap.

Despite the ease of downloading images from a Google image search, businesses must be especially careful in using images found from other sources. Images on the Internet, just like photographs and artworks, are subject to copyrights. The owner of the image generally has the right to prevent others from making or distributing copies, including digital copies. Even if the image appears in a Google or other images search, it is usually not freely available to download a copy or paste it on a different website. Of course, there are exceptions:

  • Options such as Creative Commons allow image owners to make their images available to others for limited uses and for free or for nominal licensing fees. This can be a great source for finding usable images.
  • Fair use is a legal defense to copyright infringement, which provides that copyrighted material may be used for such purposes as criticism and comment. The doctrine is limited, and typically does not apply where the alleged infringer is using the material for commercial purposes.

Aside from these exceptions, use of an image found on the Internet, without the owner’s permission, typically infringes the owner’s copyright. Since the passage of the Digital Millennium Copyright Act (DMCA), image owners have a useful tool at their disposal for addressing infringing copies. The DMCA provides for “takedown notices,” which a copyright owner may submit to an Internet service provider, requesting that the infringing copy be removed. (See one attorney’s account of her own experience submitting a DMCA takedown notice to Google.) In other cases, a copyright owner may choose to send a cease and desist letter, or in some cases even a demand for licensing fees, leading to what some refer to as copyright bullying.

The intersection of copyright law and the Internet is often difficult to define. For this very reason, many argue for a relaxing of copyright laws with respect to online content. However, for at least the time being, an awareness of the potential copyright issues may in some cases help prevent them.

“Of All Time”

Posted in Branding, Marketing, Mixed Bag of Nuts, Social Media, Squirrelly Thoughts, Trademarks

Those three words are pretty bold, especially when we’ve only been around just over 6 years:

“‘Of all time’ is used to make a comparison, stating that something is the best throughout the ages.”

We’re pleased to report that DuetsBlog continues to be recognized as one of the top twenty-five intellectual property law blogs “of all time” — or, we might way, “throughout the ages.”

Hat tip to the Copyright Litigation Blog:

“Justia’s Blawgsearch Ranks the “Most Popular” intellectual property law blogs.  Out of 461 intellectual property law blogs listed in total by Justia, here are the top 25 of “all time.”  Visiting each one shows you just how alive thinking is in patent, trademark, copyright and related fields and how the blogosphere opened up this field of interest to public scrutiny and healthy debate.”

And another hat tip, to our friend Ron Coleman over at his Likelihood of Confusion blog.

We’re honored, as the graduating-kindergartner among the bunch, to be included in such impressive and adult company of lawyers . . . .

We’re not too shabby when it comes to rankings in the branding world either (top thirty “at the moment”) . . . . and no worries, we have no intention of resting on our laurels.