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Collaborations in Creativity & the Law

Strategies for Owning Your Product Designs

Posted in Mixed Bag of Nuts

We are putting together a pretty special webinar you might want to consider experiencing: Strategies for Owning Product Designs. The live version will be aired Tuesday March 31st at 3 PM CST, sponsored by Minnesota Continuing Legal Education.

I’ll be joined by legendary designer Bob Worrell, founder of the Worrell design firm, Derek Mathers, Worrell’s business development manager (and guest blogger on Duets), and my partner Jeff Stone at Winthrop & Weinstine (another Duets guest blogger) who has shared his thoughts about the power of design patents before, herehere and here.

I’m looking forward to sharing some thoughts and strategies about how to own product designs forever, long after design patent protection expires, so we’ll be talking about the key role that marketing types play in realizing the goal of owning product design and trade dress: Calling Non-Traditional Trademarks By Name.

This promises to be a lively 90 minute discussion, to sign up, here is the link, we hope to have you join us in a couple weeks.

Fear the Brow, or Fear the Trademark Specimen?

Posted in Advertising, Branding, Famous Marks, Fashion, Infringement, Loss of Rights, Social Media, Trademarks, TTAB, USPTO

Celebrity has its advantages in the trademark world. Slogans and taglines are big business for famous athletes, which in turn has led to some entertaining trademark applications: JOHNNY FOOTBALL and LINSANITY, to name a couple. As Martha noted in 2012, Anthony Davis sought to capitalize on his distinctive appearance and “The Brow” nickname with four trademark applications: FEAR THE BROW, RAISE THE BROW, BROW DOWN, and AD23. Each application originally identified a litany of goods and services, including “book covers,” “bowls,” “facial tissue,” and — of course — “participation in basketball.”

Trademark rights in the United States rely upon use — and a federal trademark registration requires proof of use, or a “specimen,” for each class of goods or services listed in an application. A specimen “must show the mark as used on or in connection with the goods in commerce.” So it’s not surprising that, three years later, Davis has obtained registrations for all four marks — but only in connection with apparel items, including t-shirts. The remaining goods and services were divided from the now-registered mark, and remain pending at the U.S. Patent and Trademark Office. Davis filed his latest requests for extensions of time to prove use of each mark just last week.

In order to obtain these registrations, Davis submitted specimens for each mark (here’s FEAR THE BROW’s specimen) that purport to show photographs of t-shirts bearing each slogan/mark. Along with the photographs, Davis submitted what appear to be website screenshots from Nike’s online store. Notice anything?

FEAR THE BROW ShirtFEAR THE BROW Website

I don’t want to incur the wrath of The Brow, but as they say in those hip internet circles, “this looks shopped.” These do not appear to be photographs of actual t-shirts but, instead, renderings of text placed on the sleeve of a generic, blue shirt. And despite the impression conveyed by the website screenshot, as of this writing there are no listings for any of the registered marks on Nike.com.  As far as I can tell, you cannot purchase your very own FEAR THE BROW sleeve t-shirt today.  It doesn’t appear, then, that Davis is actually using these marks in commerce — or, at least not online and among the general public.

This may expose Mr. Davis to some problems down the line, particularly with zealous infringers. Fabrication of a “fraudulent specimen” is grounds for cancellation of the registrations, but the bar is quite high — a party alleging fraud must provide clear and convincing evidence, and must show that the errors in the specimens were more than simply an “honest misunderstanding.”

With all that said, there’s actually a certain genius to these specimens. By placing each slogan on the sleeve and breast pocket, Davis avoided a common pitfall for t-shirt specimens: if Davis had instead placed the slogan on the front and center of the shirt, the trademark office would have almost certainly rejected the specimen as an “ornamental” use of the slogan that does not function as a trademark.  As they say (or, as they should say), a catchy slogan does not a trademark make. According to the USPTO:

A small, neat, and discrete wording/design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods.

When registering a trademark for apparel, brand owners should keep in mind that the trademark needs to indicate source, and simply “appearing” on the shirt is not enough.  And while the PTO will often rubber-stamp certain trademark specimens, it’s important to ensure that the specimens faithfully depict of the mark as it is actually used among the relevant consumers.  In an infringement case, a savvy opposing party won’t simply take a registration certificate for its word — they will go through the filing history with a fine-toothed comb.  In the meantime, it remains to be seen whether infringers will ultimately FEAR THE BROW.

Protecting Your Bacon: Patent versus Trade Secret

Posted in Almost Advice, Food, Idea Protection, Law Suits, Loss of Rights, Mixed Bag of Nuts, Patents

While, generally speaking, copyright law protects art, and trademark law protects branding, patent and trade secret laws protect information.  In deciding how to best protect proprietary information, innovators and businesses often come to a difficult patent/trade secret crossroads: do we keep this as a trade secret, or apply for a patent application?  However a company chooses to protect its ideas, it’s important to make those decisions early.

Unitherm Food Systems, Inc. produces thermal food processing equipment.  Unitherm developed a special method for preparing pre-cooked, sliced bacon.  Here’s a look at their process:

Originally, Unitherm protected their mouth watering process as a trade secret.  (Okay full disclosure: I’m a vegetarian.  It’s not mouth watering to me at all.)  In 2007, Unitherm met with Minnesota-based Hormel Foods to discuss a pre-cooked, sliced bacon joint venture.  Both parties signed a confidentiality agreement.  Later, Unitherm discovered that Hormel had apparently disclosed the secret process to one of Unitherm’s competitors.  Worried about protecting their bacon process, Unitherm filed for a patent, which issued in 2009.  After further failed negotiations between the companies, Unitherm sued Hormel in 2014 for, among other causes, trade secrets misappropriation.

In a ruling dismissing the trade secrets claim, the federal district court judge stated, “While the process might have been a trade secret before July 2009, it is axiomatic that a thing patented cannot also remain a secret.”  Unitherm’s own patent disclosed their secret process to the world, rendering a trade secret misappropriation claim no longer enforceable.  Although Unitherm could theoretically maintain a trade secrets claim for actions prior to the patent date of 2009, the 3-year statute of limitations had already run for anything that far back.

At least Unitherm still has their patent.  The dismissal highlights the importance of a comprehensive plan for IP protection, without which, a company may unknowingly or unintentionally lose protections.

Both patent and trade secret systems have their advantages and drawbacks.  At their cores, the two types of protection have very different purposes.  Patent law is a quid pro quo. In exchange for a 20-year monopoly on your invention, you must disclose it to the public, so that it can be improved upon to promote progress.  Trade secrets had a less stable beginning and have been justified under various theories including property and unfair competition, but in either case results in rights to entirely secret information.  Following are a few advantages and disadvantages of each system.

Patent

  • Governed by federal law
  • No need to keep the idea a secret
  • Possibility for licensing and cross-licensing with other businesses/inventors
  • Easier to prove and enforce
  • Patent functions as a roadmap of know-how for potential infringers to copy
  • Expensive to obtain and maintain the patent for the full term
  • Patent not guaranteed, but application becomes public once the USPTO publishes it
  • May need to delay product launch while application is being prepared and filed
  • A single patent only lasts 20 years

Trade Secret

  • Governed by state law (some aspects can vary greatly by state)
  • Remains protected as long as it is a secret
  • But once secrecy is lost, so are rights
  • No rigid novelty or usefulness requirements – encompasses much larger range of information
  • No filing fees, maintenance fees, or applications necessary
  • Requires effort to keep secret
  • Harder for potential infringers to steal, but also harder to prove misappropriation
  • No protection if competitors independently develop same process

This list is not comprehensive, and the two types of protection may lend themselves best to different situations.  For example, a product that could be easily reverse-engineered may be best protected under patent law for easier enforcement of rights.  A process that is readily concealed behind closed doors, making theft of the process even more difficult to uncover, may be best protected by trade secret law.  Two of the most well-known trade secrets are the KFC 11 herbs and spices blend and the Coca-Cola recipe.  Some situations may even require both levels of protection.

However you choose to protect your bacon, make sure you have a comprehensive plan in place so you don’t end up fried.

 

What Do Gripe Sites Have to Do with SCOTUS’s B&B Hardware Decision?

Posted in Domain Names, Fair Use, First Amendment, Infringement, Law Suits, Trademarks, TTAB

In December, the Supreme Court heard oral arguments in B&B Hardware v. Hargis Industries. The case addresses the level of deference to be given to decisions from the Trademark Trial and Appeal Board, if any. We’ve discussed the issue a number of times at DuetsBlog. I’d love to provide you with breaking news, but still no ruling yet.

However, the Fifth Circuit provided us with an interesting decision regarding potential liability for use of trademarks as part of gripe sites. A gripe site is a broad term that essentially means a website created for one purpose, to criticize a company or individual. Many of these gripe sites utilize the trademark of the target of the criticism both on the website and as part of the URL. The target’s first impulse is usually to send a letter to get the website taken down. However, as former and founding Duetsblogger Dan Kelly reasoned, pursuing these website owners can cause more harm than good. On Monday, the Fifth Circuit provided a good example of why brand owners should be cautious in pursing gripe sites.

Clark Baker is an investigator with the Office of Medical and Scientific Justice (“OMSJ”). If you’re like me, you’ve never heard of either Mr. Baker or the OMSJ. The OMSJ identifies itself as an investigation agency which runs the HIV Innocence Group. According to the website, the group assists defendants who have been charged with HIV related crimes by exposing the failures and inadequacies of “HIV junk science.”

Unsurprisingly, not everybody agrees with some of the beliefs and statements of the OMSJ. Among these critics is Jeffrey Todd Deshong. Mr. Deshong runs the website HIV Innocence Group Truth, where Mr. Deshong critiques Mr. Baker, the OMSJ, and the opinions and scientific theories they utilize. The website incorporates the entirety of the OMSJ’s mark, but adds the word “truth” to the end. Equally unsurprising, the OMSJ does not like Mr. Deshong’s website and filed a federal complaint alleging trademark infringement on July 9, 2013.

The District Court for the Northern District of Texas granted the Defendant’s Motion to Dismiss on June 30, 2014 (order available here, h/t to Public Citizen). While many gripe site defendants prevail on First Amendment grounds, the court here ruled that the plaintiff failed to allege any facts that could support a claim for trademark infringement.

The court relied upon the Fourth Circuit’s decision in Lamparello v. Falwell, 420 F.3d 309, 313, for the proposition that:

when dealing with domain names, a court must evaluate an allegedly infringing domain name in conjunction with the content of the website identified by the domain name.

The court examined the allegations of the complaint, noting that (1) the websites do not look like each other; (2) Deshong’s website does not advertise any product or service: and (3) the sole purpose of the website is to criticize Baker and the OMSJ. The court concluded that none of the factual allegations could be construed as alleging that a person, upon viewing the content, could be confused as to the source of the website. The Fifth Circuit affirmed the district court’s opinion without additional analysis.

But what does this have to do with B&B Hardware? Substantively, not much. But what if Deshong had applied for a trademark for HIV INNOCENCE GROUP TRUTH in connection with “providing a website featuring information on HIV?” And what if OMSJ opposed, citing prior rights in the mark HIV INNOCENCE GROUP in connection with “providing a website featuring information on HIV?”

This hypothetical demonstrates the problems that could arise if Trademark Trial and Appeal Board decisions are considered conclusive as to the issue of a likelihood of confusion. Unlike a district court, the Board would not consider the content of the website unless it was referenced in the identification of services. It is likely that the plaintiff prevails in this hypothetical. However, in the district court, not only did the defendant win, but he won on a 12(b)(6) motion to dismiss. This isn’t due to a mistake made by either the Board or the district court, but instead the limited nature of the jurisdiction, legal issues, and discovery for proceedings before the Board.

Unfortunately, we’ll have to wait to see how B&B Hardware plays out, but there may be a few more gripe sites to discuss depending on the outcome.

Where is the Line?

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

- Brent Carlson-Lee 

It appears spring has sprung. Time to dust off the Weber®, bicycles and the maple syrup tapping kit (maple sap runs best this time of year given its cool nights and warm days).

As the primary grocery shopper in our household, I long ago bought into the notion that high fructose corn syrup is not a good thing. As a result, I pay prices for real maple syrup that make me wince. I wince even more as I watch my four year old pour “just a little more” (i.e. a lot more) on his pancakes. So when I saw this jug, I thought I may have found a more economical alternative.

syrup jug

It’s in one of those maple syrup jugs. It’s all natural. It contains no high fructose corn syrup. Yet it costs 50% less than the straight-from-the-forest-to-your-table-with-love varieties. But let’s take a closer look.

The jug looks legit. Right shape albeit plastic.

It is all natural, although I think we can all agree that doesn’t mean much.

It contains no high fructose corn syrup, but it’s replaced primarily with brown rice syrup.

And what about the product name? When I first saw the jug I thought it read “maple syrup.” Turns out it reads “table syrup.” I can’t help but to suspect an attempt to put a “head fake” on consumers with the prominent use of “table” which has obvious similarities to “maple,” keeping in mind most people can read this quite easily.

wordsTo be fair, table syrup is a term of art to describe this category; however, the term is not used on the label of any other table syrups in the line. See “Original Syrup” as an example.

log cabinAm I just over analyzing this or does this cross a line into questionable marketing practices? In this case, I think the line has been crossed and others seem to agree. In fact, Rep. Peter Welch of Vermont sent a letter to major retailers voicing concerns. The Agency of Agriculture also contacted the FDA.

But it doesn’t appear that a bright-enough line was crossed. Log Cabin ® All Natural Table Syrup was launched in 2010 and remains on store shelves as pictured above.

Is it shoppers’ responsibility to identify this head fake? I mean James Harden didn’t get fined by the NBA for what he did to Ricky Rubio.

 

 

Easy as 1, 2, 3, 4, 5 — and Functional Too?

Posted in Articles, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

Welcome to another edition of newly filed configuration trademark applications at the USPTO, here is the latest; it is quite a specimen:

numberedtubeThe question for the day though is whether the claimed mark actually functions as a trademark to indicate that the goods come from a single source.

The claimed mark is described this way: “The mark consists of a configuration of numbers 1 through 5 situated in a vertical orientation in relation to one another with each number 1 through 4 positioned in the center of four equally opposed horizontal lines and the number 5 positioned in the center of three equally opposed horizontal lines.” It appears that the shape of the sample tube is not being claimed as part of the mark, just the numbers and horizontal lines, given the liberal use of dotted lines.

The claimed goods are described this way: “Plastic disposable products for laboratory use.” First use is claimed back to June 30, 2013,  not even two years ago.

Once again, I’m thinking this one will receive a functionality refusal, a lack of distinctiveness refusal, and a failure to function as a trademark refusal . . . .

Back in the day, as a pharmacy student, I worked in several professors labs, and I had the opportunity to handle test tubes, vials, beakers, sample containers, and pipettes, etc.

Many of these types of laboratory items are graduated, meaning they are marked for purposes of rough measurement, even if not highly precise, the markings are still helpful for estimation.

So, what possible purpose or meaning can this configuration of numbers represent beyond estimations of liquid volume measurement?

The specimen of use submitted with the application tells the story: “Eppendorf now offers the >>missing link<<: The Eppendorf Tube 5.0 mL. This product fills the gap between existing tube versions and enables the simple of safe processing of sample volumes up to 5.0 mL.”

Mystery solved, now we know what the numbers mean, big surprise. And just to make sure there are no other mysteries here, mL means milliliter. A thousand of them make a liter. Five of them make a teaspoonful. Oh, and one mL = one cc (cubic centimeter).

Good thing the goods are disposable, because I’m thinking this trademark application is too.

What do you think?

Don’t Forget About Domain Names

Posted in Domain Names, Law Suits

One aspect of intellectual property law that doesn’t get as much attention as it maybe should is domain names.  For those of you internet-savvy readers out there (who I assume is most of you), you already know that domain names provide the virtual address where customers and others can hopefully find your goods and services.  But did you know that there exists a Uniform Domain Name Dispute Resolution Policy (“UDRP”) which requires appropriate and specified treatment of trademark-based domain name disputes.  (See here.)  In pertinent part, the Rules provide:

You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

This process can provide a quick and relatively inexpensive process for recovering domain names that trademark holders believe could be infringing their rights.

Another thing that may not be known about domain names is that they can also be considered be “property” subject to attachment and garnishment by creditors in court proceedings.  That was the  result in a Minnesota Court of Appeals case that recently decided the issue for the first time.  See Sprinkler Warehouse, Inc. v. Systematic Rain, Inc., A14-1121 (Feb. 2, 2015).  This result appears to be uniform across all U.S. jurisdictions that have addressed the issue.

Domain names were seemingly more important prior to the proliferation of quick and accurate search engines.  Nowadays, people can start a Google search from their address bar and quickly find the site they are looking for without knowing the actual domain name.  However, these little online domiciles are still important markers as they are the primary business address in the virtual world.  There is significant value associated with these domain names, and it is important to keep that in mind.

Single-Letter Trademark Battles: Who Gets the W for “W”?

Posted in Advertising, AlphaWatch, Articles, Branding, Fair Use, Infringement, Social Media, Trademark Bullying, Trademarks, TTAB, USPTO

How much trouble can a double-U make?  If you’ve been following this blog over the years, you know the answer: quite a lot.

This blog has written extensively on the trials and tribulations that may accompany single-letter trademark applications, and the letter “W” in particular.  You may then conclude, quite correctly, that a whole lot of businesses lay claim to the letter “W” in one form or another.  A quick check of the Patent and Trademark Office database yields no fewer than 1,092 applications or registrations for the letter “W” (or, in some cases “WS” where the letters are intertwined).  Of those, there are 919 live registrations for “W.”

The latest chapter in the saga of our alphabet’s 23rd letter sets an app developer on a collision course with two of Major League Baseball’s most iconic franchises.   Evolution Finance, Inc. applied to register the stylized W mark shown below, featuring a sans-serif “W” on a rounded square with a green gradient.  It uses the mark in connection with WalletHub, a “personal finance social network.”

The WalletHub application claims the colors green and white and identifies, among other services,  “creating an on-line community for users seeking financial information” that allows users to “compare financial products” and “engage in . . . social networking services in the field of personal finance.”  After amending the identification of services in response to an Office Action, the mark was published in October 2012.  Smooth sailing, right?

Enter the Chicago Cubs and the Washington Nationals.  The two ballclubs lay claim to the letter “W” as part of their team heritage.  For the Cubs, a blue “W” (for “Win”) flies on a white flag atop the Wrigley Field scoreboard when the Cubs are victorious, ostensibly so commuters riding the “L” train on the north side of Chicago can see whether their team won.   The Nationals, as we have previously detailed, use a loopy, cursive “W” as their primary logo, and also lay claim to a variety of more basic, sans-serif “W” marks as vintage or throwback logos.  Interestingly, it doesn’t appear that the Nationals are currently selling any “throwback” caps on their official store’s website — they all bear the cursive “W.”

The Cubs’ “W” Flag

In the opposition, the Cubs cited its registration for the W mark in standard characters for “fabric flags,” and the Nationals cited its registration for a stylized W mark that identifies “clothing, namely, caps.”  Of course, the clubs’ notice of opposition claims additional common-law services, “including but not limited to, baseball games and exhibits services and a variety of goods as services.”  We’re left to assume the “variety of goods and services” most closely overlaps with WalletHub’s offerings.

The Nationals’ Registration for the W (Stylized) Mark

A brief disclosure: I am deeply and irretrievably biased as a lifelong Chicago Cubs fan.  In college, I was among the many who draped that very white-and-blue “W” flag in my apartment.  But given their travails into free agency during that time, I would be hesitant to seek financial information from the Cubs, except for the price of a bleacher seat this season.  (as much as $66 for a Saturday in June, if you were curious).

The opposition has been fairly dormant since its filing in early 2013.  The last filing on record is an extension of time from December 2014, containing a lengthy report on the back-and-forth(-and-back-and-forth) settlement discussions among the parties.

Things must have turned south since then.   WalletHub turned to the court of public opinion last month and penned a blog post entitled “Major League Bullies: Teams Seek Hypocritical Trademark Ruling.”

WalletHub considers the pending opposition to be “frivolous corporate bullying” and “pure hypocrisy” given the myriad of coexisting trademark applications and registrations that identify the letter “W.”  WalletHub then takes a swipe at the Cubs, quipping that “very few people would associate the Cubs with W’s these days.” Ouch.

In a way, you can understand where the ballclubs are coming from — sports teams are among the nation’s most iconic brands.  And remember those 919 live registrations for the letter “W”?  It turns out that only four of those are for the “W” mark in standard characters — among them, the Chicago Cubs.   A standard character registration conceivably encompasses every possible stylization of the letter.  The Cubs also seem to be very cognizant of the importance of trademark rights — as the blog Uni-Watch has noted, they may be the only professional sports team to embroider the ® symbol onto the logo of its on-field jerseys.

So where will this one come out? Who gets the “W”?  It seems the WalletHub application is more than just a letter – its background shape and color gradient form a stylization onto themselves separate from the letter.  This gives WalletHub’s mark features that distinguish it from a standard-character “W.”  When combined with the difference between the identified services, WalletHub has a fighting chance — if it can stomach an opposition.  Otherwise, here’s hoping for an amicable settlement — after all, it’s just two “U”s put together.  What harm can it do?

Deck Stacked Against HOUSE OF CARDS

Posted in Television, Trademarks, USPTO

No spoilers here, I promise.  Like many Americans since it was released on Friday, I’ve been binge-watching Season 3 of House of Cards.  If you haven’t watched the program, available only on Netflix, it’s a riveting drama of political intrigue with stellar acting featuring Kevin Spacey and Robin Wright.  The promise of another House of Cards season certainly makes wintry February in Minnesota more palatable.  And if you need more than 13 episodes a year, there’s a British version (which much like history precedes the American reign).  You know something’s become a cultural phenomenon when Sesame Street even parodies it. 

frankunderwoodDB

Given the celebrity monsoon of trademark filings for various slogans, nicknames, and important marks for singers, professional athletes, and actors on a slew of goods and services, I was surprised that a trademark search yesterday revealed hardly any filings for “Frank Underwood,” “Underwood 2016,” and most surprisingly HOUSE OF CARDS.  It’s clearly an incredibly valuable brand for Netflix, changing the course of the company from just an internet Blockbuster to a blockbuster maker.

There’s even a recent third party registration for a House Of Cards wine.

But, as for the popular program, no registrations.  Not for entertainment, not for apparel, nothing.

There’s a pending application for the mark covering the program but it looks like someone is standing in the way of Frank Underwood obtaining of a trademark registration.  As Frank would say, “It only takes 10 seconds to crush a man’s ambitions.”  Here’s the specimen:

DBHouseOfCardsNetflix

The U.S. Trademark Office has refused registration of Netflix’s HOUSE OF CARDS on the basis of a previously registered trademark for HOUSE OF CARDS.  To this, Netflix might say, in the words of Frank’s wife Claire, “you don’t want to make an enemy out of me.” The Netflix show’s application, filed by MRC II Distribution Company L.P., is for:

  • entertainment in the nature of ongoing television programs in the field of drama;
  • entertainment services, namely, an ongoing series featuring drama provided through Internet transmission and streaming services;
  • entertainment, namely, a continuing dramatic television show broadcast over Internet websites and streaming services.”

The prior HOUSE OF CARDS registration owned by Douglas and David Weischadle is for some seemingly overlapping services which include:

  • entertainment in the nature of visual and audio performances, and musical, variety, news and comedy shows;
  • entertainment services, namely, a multimedia program series featuring comedy, action and adventure distributed via various platforms across multiple forms of transmission media.

In use, it appears to be for radio, podcast and video programs relating to poker.  But the registration has broad applicability to the services applied for under the application for the Netflix program, even though its services are tailored to drama or dramatic performances.

No response has been filed to the refusal from late December, and the owners of the Netflix registration have six months to respond.

While the publicly available U.S. Trademark Office records certainly don’t tell the whole story, and perhaps there’s been some scheming and behind-closed-door negotiations,  it is remarkable that the trademark application for Netflix’s powerhouse HOUSE OF CARDS series (produced by David Fincher and starring Kevin Spacey) was filed just 6 months ago, even though the program debuted in February 2013.  The filing was also made just weeks after the Weischadles filed their Section 8 Declaration of Use, to maintain the registration.

We can certainly speculate like political talking heads on This Week or Meet the Press.  Was it a savvy move to wait?  Who might prevail? What’s their next move? Are we headed for a protracted debate?

But if you don’t want to opine on that, who’s your favorite character and what’s one of your favorite HoC quotes?   I really like Jackie Sharp, and although there are many one-liners that I really like from the show, one of my favorites (without a season 3 spoiler, so this is from season 2) is “generosity is its own form of power.”  Share your favorites in the comments below.

Thoughts on the New Mitchell|Hamline Law School

Posted in Branding, Famous Marks, Guest Bloggers, Mixed Bag of Nuts, Trademarks

- Draeke Weseman, Weseman Law Office, PLLC

Naming is a tricky business with important marketing and trademark considerations.  Recently, two Minnesota law schools, William Mitchell College of Law and Hamline Law School, took up this daunting task when they decided to merge into Mitchell|Hamline.

On February 13, 2015, William Mitchell Dean Eric Janus announced the newly named law school, with the following statement:

. . . The combined school will be named Mitchell|Hamline School of Law and will be located primarily on William Mitchell’s existing campus in Saint Paul. Mitchell|Hamline School of Law will be an autonomous, non-profit institution governed by an independent board of trustees, with a strong, visible and long-lasting affiliation to Hamline University.

According to Janus, the new law school will benefit students by giving them access to three nationally-ranked programs – alternative dispute resolution (Hamline), clinical education (William Mitchell College of Law), and health law (Hamline) – and more enrollment options than any other law school in the country, in part, due to the new online hybrid enrollment option pioneered by William Mitchell College of Law.  It will also create opportunities for dual degrees and give law students access to more robust university facilities, like an athletic center.

As an alumnus of William Mitchell College of Law, all of this sounds like good strategy under the circumstances facing law schools today.  Nationally, for several years now, law school enrollment has been in steep decline; and, here in the Twin Cities, the presence of four law schools just seems redundant.  (For out-of-towners, the law schools at the University of Minnesota and the University of Saint Thomas are the other two in Minnesota).  In such a tight marketplace, it became increasingly obvious that two schools with complementary offerings in close geographic proximity should not compete for the same students.  Furthermore, both schools have important historic and contemporary alumni, and the merger will create a new network of 18,000 alumni between the schools.

As a brand enthusiast, though, I have some apprehension about the new name.  In particular two things standout: the vertical bar between Mitchell|Hamline and the brick-red coloring for Hamline. (If you initially thought the coloring was for a hyperlink, you weren’t the only one!)  If, as school officials have indicated, the merger is a true combination of schools, why the visual barrier – the equivalent of a punctuation wall –  between Mitchell on the one side and Hamline, on the other.  Why the distinct coloring for Hamline?

I think these elements hinder the presentation of a new, unified brand.  And I think naming experts would agree.  Take for instance, the general advice of Laurel Sutton in her Fast Company article, “What’s in a Name? The Ability to Make or Break a Merger:

“A [merger] is a chance to re-evaluate and redefine two brands that may be on their way down. Everyone loves a comeback, and it’s an opportunity to either build a new brand or build upon existing, if slightly tarnished, brand equity. Think of it as repurposing and upcycling for capitalism, taking old brands and making them brand new again. But this whole process of evaluation is often delicate, because it means dealing with the very marrow of what makes a brand: its culture and people—and ultimately making a value judgment on what to retain and what to reject.”

To me, the vertical bar and the coloring suggest an incomplete evaluation of what to retain and what to reject.  They risk creating that the perception that the two schools don’t want to completely unite.  I would remove both.

As a trademark attorney, I have additional concerns.  Trademarks benefit from a long, established history of widespread use, and the new Mitchell|Hamline name eliminates that, unless tacking is available. Tacking – the ability to attach the history of an old mark to a new mark for legal purposes – is available when a new mark is the legal equivalent of the old mark.  As Tim blogged about last month, the U.S. Supreme Court recently unanimously affirmed a lower court’s decision that tacking applied between the marks Hana Bank, Hana World Center, and Hana Overseas Korean Club.  For Mitchell|Hamline, tacking would be unlikely because the new name is so different from either earlier mark.

This would not likely be true if, for example, the merger had resulted in the name “William Mitchell College of Law at Hamline University.” In that instance, both the Hamline University brand and the truncated William Mitchell brand would continue, and both are protected incontestable registered trademarks.  For a trademark attorney, this would be preferable to the possible abandonment of the mark William Mitchell.

Why didn’t the two schools go this route?  One explanation might be the economics of the deal.  According to the Star Tribune, Mitchell|Hamline is a financially independent entity from Hamline University.  Another related reason might be the perception that one brand had more equity than the other.  As Ms. Sutton suggests:

“Quite naturally, companies want to keep the name of the mightier brand. . . . Sometimes, it’s the acquisition that has better brand recognition. . . . More often, it’s the acquirer who bestows their name, perhaps to signify that they’re the victor.”

So what’s Mitchell|Hamline to do?  In addition to dropping the vertical bar and coloring, one strategy might be to immediately, at least in some contexts, further truncate the name to “Mitchell,” the nickname already in use for William Mitchell.  For the past four years, the truncated name Mitchell was used in a very successful fundraising campaign branded “If Not For Mitchell,” where more than $25 million was raised to support scholarships, faculty, and innovation.  In a bit of irony, this “new” truncated Mitchell nickname would have a date of first use earlier than Mitchell|Hamline (which isn’t in use yet and won’t be until the ABA approves the merger).  Whether this nickname would create an opportunity for tacking is a more difficult conclusion to reach, but not an unreasonable one.

What do DuetsBlog readers think of the new name?  How would you advise these two schools, or others that might be contemplating a similar merger?