DuetsBlog

Collaborations in Creativity & the Law

Adblock, Generic for Ad Blocking?

Posted in Almost Advice, Branding, Genericide, Infringement, Mixed Bag of Nuts, SoapBox

AdBlock Plus doesn’t seem to think so. Though they apparently also do think so (more on that below). Adblock Plus was successful in registering the ADBLOCK PLUS mark. Now they’re using that registration to issue take down notices to people using Adblock in their name. That left me scratching my head. It all sounds rather generic to me. Of course, many people will just acquiesce because, really, Adblock? It’s probably cheaper to rebrand to Ad Blocker Ultimate from AdBlock Ultimate, as the people who were issued the take down notice in the story linked above did. Court and petitions to cancel a mark take time. I’m not sure why Adblock Plus doesn’t spend 30 minutes brainstorming something a little more creative. I’m sure it will cost them a whole lot of money to try to create any real trademark rights here. My gut tells me AdBlocker Ultimate would have been successful if they had decided it was worth it to fight.

If this was likely to cause confusion:

AdBlock Ultimateis this sufficient to avoid confusion:

Ad Blocker Ultimate

That got me wondering how much generic use of “ad block,” “adblock,” “adblocking,” and similar combinations were out there. Guess what, there is quite a bit. I even came across this interview with the communications and operations manager at Adblock Plus from a couple of weeks ago. Not only is the topic of conversation “the future of ad blocking,” but he actually refers to their product as “an ad blocker” around the 1:40 mark. If you’re still listening after that, a little after the 2:00 mark he says there are “about 200 other ad blockers out there.” It sounds to me as though he thinks “ad blocker” is the generic term for the product they offer. I actually stopped paying attention to how many times he uses “ad blocker” and “ad blocking.”

Oh, and guess what? Not only are they “a free ad blocker . . . that blocks ALL annoying ads . . . ” it’s also “the most popular ad blocker ever” according to their product page on Google Chrome.

Adblock blocks ads

If you happen to be their trademark lawyer, you may want to give them a call. You may also want to have them spend 30 minutes brainstorming an alternative generic term for their product if they hope to keep those trademark rights.

I’ll be checking up on this from time to time. I figure that at some point there will be someone else with enough interest in using the term adblock, or just upset enough that they are being told not to use the term, that we may see a petition to cancel. After all, there are 200 some ad blockers out there according Adblock Plus. If not, I’d be curious to know what alternative generic term they get to stick. Anybody have a good one?

 

 

 

Yet Another Trademark Based on My?

Posted in Advertising, Articles, Branding, Marketing, Trademarks

MYMellowYellowLove the new bold look of the Mello Yello can, and it’s hard to miss the prominent abbreviation to MY, along with the trademark assertion: This is My World.

Actually, as we have written before, there are more than a few operating within the world of MY, and that’s not limited to our writing about pillows and other such talk.

Yet, it looks like Coca-Cola was able to secure the stylized depiction of the MY abbreviation as a trademark for soft drinks, and the federal registration should issue any day now:

MYmelloyelloMy questions: Why no standard character trademark application for just the word MY too, or is Coca-Cola trying to avoid conflict with another MY in their soda space with a different style?

And, for our marketing types: Would you promote MY as an acronym or initialism, if you were Coca-Cola? And, would you eventually shed or diminish the originating words Mello Yello?

Seems to be a mixed message here: Coca-Cola appears to describe its mark as an initialism to the USPTO with “the letters ‘M’ and ‘Y’ in a stacked, stylized form,” but the message to consumers shown above in the billboard ad appears to invite seeing and reading the letters as an acronym and the word MY, meaning “of or belonging to” the speaker or writer.

Uber: Confusing the steering wheel for the car.

Posted in Advertising, Branding, Guest Bloggers, Marketing

-Randall Hull, The Br@nd Ranch®

There is an old branding adage: A logo is no more a brand than a steering wheel is a car. Yes, both are important components, but they are not the thing itself.

So, when I heard Uber, the ride-hailing service, was “rebranding” earlier this year I thought they would invest in the experience of interacting with and using their service. But it seems they left that in the trunk.

Their “rebranding” effort was driven by an in-house team with Uber co-founder and CEO Travis Kalanick personally steering the redesign. He attempted to explain the new look in a blog post justifying the months spent on researching local cultures, scenery and architecture in an effort to develop different pallets to decorate around the app. The company even created an Uber Brand Experience web site.

The response has been quite negative, as noted here, including criticism of the CEO for expending a significant amount of time on a corporate identity exercise — more than two-and-a-half years according to Wired Magazine. (http://www.wired.com/2016/02/the-inside-story-behind-ubers-colorful-redesign/)

Here is the before and after:

uber_before_after_logo

Say what you will about the elements of the new look, a design critique is not my point here. My point is this — let’s not confuse corporate identity systems or redesigns or “realignments” — or whatever a company decides to call the exercise — with branding, or rebranding, as in this case.

That is not branding.

As Marty Neumeier said in his excellent book The Brand Gap, “A brand is a person’s gut feeling about a product, service, or company…It’s a PERSON’S GUT FEELING, because in the end the brand is defined by individuals, not by companies, markets, or the so-called general public. Each person creates his or her own version of it.” Your brand is the aggregate of every experience your customers have with your product, service or company. That is where the rubber meets the road.

Amazon founder, Jeff Bezos, was quoted as saying: “Your brand is what people say about you when you are not in the room.” This is in sync with Neumeier’s statement “A brand is not what YOU say it is. It’s what THEY say it is.”

And what is the foundation of a brand? Trust. Trust should always be the goal. No product, service or company will ever succeed at communicating value — fundamental to a successful brand — without establishing trust first. Neumeier succinctly states, “Trust comes from meeting and beating customer expectations.”

No amount of “tailored colors and patterns, illustrations, and photos” from an internal team, even with the most clever designers or CEO at the wheel, will achieve this. The Uber brand was created and will continue to be redefined by its customers’ trust in the organization based on their experiences. And, these experiences are determined by every interaction with Uber, its employees, and, most of all, its drivers.

This is where Uber swerved. They were distracted by the sparkly hubcaps of a new corporate identity and took their eye off their customers’ experience. It would have been a far better investment in their brand to have pointed their high beams at the litany of incidents and complaints from drivers and customers rather than a multi-year ‘reupholstering’ project.

Examples of the problems can be found here, here, here, and here.

This doesn’t signal the end of the road for Uber, but it is a substantial s-turn they will have to negotiate. Do that and Uber will be steering in the right direction. Then a trustworthy brand will follow without a trailer hitch.

 


 

Links:

https://newsroom.uber.com/celebrating-cities-a-new-look-and-feel-for-uber/

https://brand.uber.com

http://www.underconsideration.com/brandnew/archives/new_logo_and_identity_for_uber_done_in_house.php#.Vw7zCWO3lBk

http://www.wired.com/2016/02/the-inside-story-behind-ubers-colorful-redesign/

http://www.amazon.com/The-Brand-Gap-Distance-Business/dp/0321348109

https://twitter.com/Faisal7HTX/status/694607350297001985

http://money.cnn.com/2016/02/01/technology/uber-nyc-protest/index.html?iid=EL

http://www.buzzfeed.com/charliewarzel/internal-data-offers-glimpse-at-uber-sex-assault-complaints#.dwbK0R0z37

http://www.huffingtonpost.com/entry/kalamazoo-shooter-uber-passengers_us_56ca6f97e4b0928f5a6c5612

The USPTO Says “Yes” But the TTB Says “No” To LSD

Posted in Almost Advice, Branding, First Amendment, Idea Protection, Marketing, Product Packaging, Trademarks, USPTO

Government approval of commercial speech has been a hot topic of discussion by trademark nerds here and elsewhere in light of recent decisions regarding the Redskins and The Slants marks.  As those decisions proceed up through the appeal channels to the Supreme Court, attention has been drawn to whether or not a trademark registration certificate should be issued by the USPTO for a mark that is immoral, deceptive, scandalous or disparaging – types of marks that were refused registration until the Federal Circuit released its decision in The Slants case, throwing out that restriction as unconstitutional.   Depending on how any further decision comes down, there may be implications not only on the USPTO, but also on government approval of commercial speech by any federal agency.

As discussed here before, a state agency refused to allow Raging Bitch beer to be sold because the mark was offensive and sexist, despite the mark being approved by the USPTO.  But even among federal agencies, the government has reached different conclusions about whether a trademark should receive approval or not, particularly in the beer, wine, and liquor industry.

Not to be confused with the TTAB, the TTB (the Alcohol & Tobacco Tax & Trade Bureau) regulates this industry, including product labels.  To sell any of these products across state lines, they need a certificate of label approval (COLA) from the TTB.  As many in the industry have experienced, the TTB has strict – and some might say “maddening” – guidelines for product labels.  In the labeling statute, you’ll see some of the same language found in the trademark statute:  labels are unlawful if they include deceptive, disparaging, false, misleading, obscene or indecent statements.

Indeed Brewing Company sells a beer called LSD Honey Ale.  Lavender. Sunflower honey. Dates.  It owns a federal trademark registration for the mark LSD for beer.  Here is the specimen that was submitted with that trademark application:

LSDlabel

As you can maybe see from this label, the description on the back included the letters L S and D in bold within the text, linking the letters to the ingredients.

Last year, Indeed updated its packaging and needed to submit at least some of its labels to the TTB.  Recently, the TTB refused to approve LSD appearing on the labels, so the brewery dropped the acronym (and the bolded letters) from them.

(Courtesy of Indeed Brewing)

Branding agencies can add value by familiarizing themselves with the nuances of TTB labeling laws and regulations when developing new packaging for their brewery, cidery, winery, and distillery clients.  Some labeling changes do not require the client to re-apply for TTB approval, but it is important to know what those are and what implications any such changes may have on approval.  Additionally, trademark applicants should consider applying for a COLA during the trademark process to confirm that both of these important federal agencies approve use of the mark.

Do you agree with the TTB here?  Should this agency be able to reach a different conclusion on the suitability of use of a mark than the USPTO does?

 

When Can You Show Real Fruit on a Package?

Posted in Advertising, Articles, False Advertising, Food, Marketing, Product Packaging

The short answer is, when it’s not false or misleading about the product inside the package.

This past weekend, my daughter and I found ourselves in Costco, picking up some provisions, and this bag of non-provision somehow happened to land in our shopping cart:

BrooksideChocolate

Almost protesting, based on a prior experience with Hershy’s Brookside dark chocolates, I chose instead to simply let it remain in the cart, because someone knew she really wanted them.

What struck me when we got home and I looked at the bag more closely is the honesty of this packaging, there is clearly only fruit flavoring, no actual or real fruit inside these chocolates.

The package struck me because it was in stark contrast to what I remembered from my prior experience that almost had me protesting this Brookside purchase, so I decided to do a little digging and test my memory, sure enough I was on to something.

What am I saying? Well, the first time I encountered Hershey’s Brookside dark chocolate brand, I recall the packaging looked something more like this, with a load of berries adorning the package:

brooksidepackage

And, in my initial encounter and experience with the Brookside brand, I recall actually believing that what I’d find in the bag would be chocolate covered fruit, apparently and thankfully I’m not the only one who ended up feeling duped.

While I was frustrated for not reading the fine print on the packaging, which likely would have highlighted the disconnect with the whole fruit images, for impulse products, thankfully we have competitors like Mars who will bring NAD complaints to keep competitors honest.

BrooksideAcaiPomGojiThe above 2014 packaging also shows whole fruit as the one I remembered, but it was an improvement of the previous packaging that omitted any prominent use of the word “Flavors,” still the NAD rightfully condemned it as misleading, which presumably is what led to the package at the top of this post — bearing no fruit, with prominent mentions of flavors — the one that we purchased at Costco this past weekend.

Coming on the heels of my Fuse experience in Miami, where authenticity, transparency, and honesty in brands are regularly praised, I’m left wondering why it took Hershey’s this long to get it right, and I’m also left wondering how forgiving consumers will be.

Mine?

Posted in Branding, Copyrights, Fair Use, Law Suits, Technology

Recent developments have brought to the forefront the ongoing debate about what rights, if any, gamers should have or own in their online personas or in the contributions that they make to games through their gameplay contributions (i.e. is the participation by the player an act of “authorship”)?

On April 7, 2016, Mike Futter at Game Informer reported that Blizzard had sent cease and desist letters to the ISP of an unauthorized World of Warcraft server that allows users to “capture older game states.”  He concluded (probably soundly) that:

The Nostalrius petition essentially asks Blizzard to forego revenue related to its brand and products so that people can circumvent subscriptions. The document admits that there might be copyright issues while the group also claims it didn’t see itself as a threat to the publisher. I don’t expect Blizzard to budge on this, nor should it for the sake of protecting its brand.

In January of this year, Patrick Klepek at Kotaku noted that Nintendo had been deleting Mario Maker Stages that were created by players, without advising as to the reason.

In both cases, its likely that the dry, fun-hating intellectual property attorneys (*sarcasm*) representing the game developers adequately zipped up the situation in the terms of service or terms of use accompanying the games.  For example, it appears that the terms of service for World of Warcraft specifically precluded unauthorized servers, and it appears Nintendo effectively gave itself complete control over any courses uploaded by players.  But while Nintendo and Blizzard both likely have the law on their side in these instances, its reasonable to debate whether that should be the case.  As I’ve mentioned previously, video games and other media are moving beyond passive consumptions.  In many cases,  consumers or gamers are making real contributions to the popularity and value of the games.  As a video gaming community, should such people have rights to their contributions, notwithstanding the fact that the contribution was enabled by someone else?

Whose Intent Matters in an Abandonment Claim?

Posted in Advertising, Loss of Rights, TTAB

The Trademark Trial and Appeal Board (TTAB) granted a Petition to Cancel based on an abandonment claim involving a parent-subsidiary relationship. Floorco Enterprises applied for and received a registration for the mark NOBLE HOUSE for “furniture.” Noble House Home Furnishings later applied for the NOBLE HOUSE HOME FURNISHINGS mark for “on-line retail store services featuring furniture and home furnishings.” Unsurprisingly that application was denied registration based on a likelihood of confusion with the NOBLE HOUSE mark owned by Floorco. Noble House Home Furnishings then petitioned to cancel Floorco’s registration based on abandonment.

The two elements of abandonment are non-use of the mark and and intent not to resume use. After showing three years of non-use to create a rebuttable presumption of abandonment, the issue became whether Floorco intended to resume use of the mark. Floorco, a wholly owned subsidiary of Furnco International Corporation, put forth evidence of marketing, advertising, and several attempts to make sales as evidence of its intent to resume use. The TTAB took issue with the fact that the attempts to make sales were made by Furnco, the parent, not Floorco, the mark owner.

Furnco is a company based in China that created Floorco to conduct its operations in the United States. As is often the case with smaller, related companies, some employees appear to hold positions in both Furnco and Floorco. Emails that were sent in relation to sales pitches came from Furnco email addresses. Employees trying to make sales referred to themselves as employees of Furnco. The TTAB found that, with one exception, none of the activity involving the mark even mentioned Floorco as the source of the products. This led the TTAB to find that customers would view Furnco as the source of the products.

Furnco

Their sales material doesn’t even mention Floorco.

A representative of Furnco/Floorco testified and all Floorco’s major decisions were made with the consent and approval of Furnco. Furnco exercised complete control over Floorco and no agreements existed between the two companies relating to the NOBLE HOUSE mark. While use of a mark by a subsidiary will often inure to the benefit of a parent, this is not necessarily a two way street. Control over the nature and quality of the products is an essential part of trademark ownership. A parent company may not need a licensing agreement to accomplish this if they exercise sufficient control over the subsidiary (though a licensing agreement is generally a good idea anyway).

The pivotal issue that the TTAB had to resolve was whether the parent company’s use of the mark would inure to the benefit of the wholly owned subsidiary. The Trademark Act allows for registrants and applicants to rely on use by related companies. However, the definition of “related company” makes clear that the use of the mark must be controlled by the mark owner. This is why a parent company can often claim benefits from a subsidiary’s use.

The TTAB found that Furnco not only controlled Floorco, but also the use of the mark and the nature and quality of the goods. Importantly, no licensing agreement providing Floorco any authority over Furnco’s use existed. Floorco’s only role in the entire affair was to own the mark and act as directed by Furnco. It appears the TTAB would have found an intent to resume use and no abandonment had Furnco been the owner of the mark. But the relevant intent here is that of Floorco. Because Floorco had no control whatsoever over the use of the mark and customers viewed Furnco as the source, the TTAB found no intent to resume use and deemed the mark abandoned.

So what’s the lesson here? First, it’s important to figure out who the owner of a mark should be. You can’t just blindly rely on the fact that the companies are related (which is a defined term). And second, when in doubt, a licensing agreement that gives the mark owner control is probably a good idea. A licensing agreement alone may not be enough but its one less bad fact if nothing else. Oh, and its not a bad idea for customers to view the products as coming from the mark owner, at least absent a licensing agreement.

Hope Springs Eternal – Even for Baseball Trademark Disputes

Posted in Branding, Infringement, Law Suits, Trademarks, USPTO

Across the United States this week, fans rejoiced as baseball returned. Teams took to the diamond and played the first games to count since last year’s World Series. Players, coaches, and fans all turned the page on last season, starting with a clean slate and an undefeated record. But while the players battled on baseball diamonds across the country, a different type of “diamond” battle is taking shape in a New York court.

Cooperstown Bat Co. makes and sells bats with the mark PRO DIAMOND. Both the COOPERSTOWN BAT mark and the PRO DIAMOND mark appear on Cooperstown’s bats, as shown in the photograph below.

Cooperstown Diamond Pro Bat

On June 9, 2015, Cooperstown filed an application register its PRO DIAMOND mark with the U.S. Patent and Trademark Office. However, on Sept. 27, 2015 the Examining Attorney issued an Office Action refusing registration, finding that the PRO DIAMOND mark was likely to create confusion with prior registrations comprising the term DIAMOND in both standard character form and stylized variations, all owned by Diamond Baseball Company (doing business as Diamond Sports). Diamond Sports’ registrations covered other baseball equipment, including baseballs, gloves, protective gear, clothing, and bags.

On December 1, 2015, Diamond Sports sent Cooperstown a cease and desist letter, demanding that it withdraw the application. When the parties were unable to reach an agreement, Cooperstown filed a declaratory judgment action in U.S. District Court for the Northern District of New York, requesting a ruling that Cooperstown’s use of PRO DIAMOND does not infringe upon Diamond Sports’ rights in its DIAMOND mark.

The complaint alleges that the term is generic for “baseball fields” and that the word has a well-known association with baseball generally. Due to this meaning, Cooperstown claims that a number of third-parties use marks that include the word DIAMOND in connection with baseball-related goods and services. Cooperstown included the table reproduced below as a sample of these third-party marks (some of which are registered). Relying on this evidence, Cooperstown alleges in its complaint that DIAMOND “is generic and/or descriptive when used in association with baseball-related goods and services” and that the term “is not a strong or distinctive mark in the field of baseball.”

Third-party marks - DJ Action

Cooperstown also argues that there is no likelihood of confusion due to Cooperstown’s use of its COOPERSTOWN mark on the bats. Notably, the term is not included in its application to register the PRO DIAMOND mark and therefore would not be considered as part of the likelihood of confusion analysis as to the mark identified in the application (as opposed to the mark as used in commerce).

Cooperstown’s arguments have some merit. The term “diamond” is, at a minimum, highly suggestive of a baseball diamond. It could potentially be descriptive in the sense that DIAMOND describes the intended purpose of the goods – to be used on baseball diamonds. But the evidence is not overwhelming. A quick search of the U.S. Patent and Trademark Office database revealed a number of third-party registrations that contain the term DIAMOND in connection with some type of baseball product or service. However, only two registrations identify sporting equipment.

Further complicating matters is that Diamond Sports’ registrations for their standard character marks have been registered for more than five years, meaning that they cannot be challenged on the ground that the marks are merely descriptive. As a result of the foregoing, Diamond Sports’ also has a reasonable basis for its objections to Cooperstown’s attempt to register the mark. Even if Cooperstown were to ultimately prevail, the disparity between the parties’ legal positions is unlikely to justify an award of attorney’s fees.

If Cooperstown prevails, it could obtain a registration for the PRO DIAMOND mark, a mark which Cooperstown considers to be so descriptive and potentially generic that “it is not strong or distinctive.” In light of this, is the investment in a federal court action worth the potential payoff?

A preliminary clearance search prior to filing the application likely would have identified Diamond Sports’ registrations, and would have confirmed that, while there was an argument that the term DIAMOND is weak in the field of baseball generally, there was not significant evidence that the term DIAMOND was week in connection baseball sporting equipment specifically. The records of the U.S. Patent and Trademark Office suggst that an application was likely to receive a refusal. Would Cooperstown have been better off not applying to register the mark at all and instead “fly under the radar?” Filing the application and receiving a refusal ran the risk that Diamond Sports could learn of the Cooperstown’s use and send a demand letter (is it too late for a spoiler alert?).

While “hope springs eternal” is perhaps the most popular baseball quote at this stage of the season, I’m reminded of an equally well-known baseball maxim: never make the last out at third base. For those uninterested in baseball, it simply means don’t take unjustified risks. Even if you make it to third, you still need the batter to get a hit to score a run. Maybe by the end of the season we’ll know which maxim is more applicable to the PRO DIAMOND mark.

UM, It’s the New Vikings Stadium?

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

This image was captured from my office window last Friday, just before I left town for Miami to speak (again) at FUSE (I’ll be back here later with my FUSE thoughts, but in the meantime):

StadiumUM

Looking back, I guess it must have been an April Fool’s Day prank, simply intentionally stalled work in progress, not evidence of any hesitation or re-thinking the full name: U.S. Bank Stadium.