Collaborations in Creativity & the Law

A vessel of trust.

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

Aaron Keller, Managing Principal, Capsule

Capsule, specifically Aaron and two co-authors, have been deep in the murky waters of writing a book on the physics of brand. Yes, physics, likely the only subject matter more complex than a conversation with your trademark attorney. Yet, we’ve been giving it a consumable tone and taking our readers deep into the history of brands. At this point it isn’t reading like a harlequin novel, but it is much easier than your high school physics textbook.

One of the insights from our discussions of putting brands through the meat grinder of physics is this: brands are vessels of trust traveling through space and time. I am not going to go deep into the space and time portions, you’ll have to read the book for those meatier bits of content.

So, back to these vessels. If you go way, way back to a period when there was no need for brands, it likely looked like this. “Hi, I’d like to trade you my sheep for your goat. We know each other because you’re in the next village and I trust you have a healthy goat to trade.” Brands were invented to be the vessel of trust as an extension of ourselves when we’re not there to say, “I trust you know how to raise a healthy goat.”

So, when managing a brand, consider the importance of that trusted relationship between your brand and the people who believe in you. If you break the trust, you break the relationship. If you break the relationship, you’ve broken the brand. And, you know what they say, “you break it, you own it.”

More on goats, vessels and physics in our upcoming book, “The Physics of Brand.” Co-authored by Renee Marino, Dan Wallace and myself.


Will Marketing Pitfall Lead to Sand Pounding?

Posted in Advertising, Almost Advice, Articles, Branding, Food, Genericide, Infringement, Loss of Rights, Trademarks

LingLouieMenuPreparing to send off to college my two oldest sons, led us to Ling & Louie’s Asian Bar & Grill’s rooftop patio on Minneapolis’ Nicollet Mall last week, and we found an interesting menu item.

Under the Sandwiches category: “Smashed Burger,” is treated generically as a type of sandwich burger, along with “Kobe Beef” and “Spicy Chicken” sliders, and “Red Snapper” and “Chicken” sandwiches. So, does SmashBurger have a case, where burgers are still “smashed fresh“?

Under normal circumstances, I’d say yes, but SmashBurger is that brand owner who refuses to heed marketing pitfall warnings, inviting others to treat “Smashed Burgers” as a type of burger, not as an indication of who is making and/or selling the smashed burger.

A while back we asked, can anyone smash a burger? Ling & Louie’s appears to believe so, and given SmashBurger’s misuse, it’s hard to argue otherwise. Perhaps SmashBurger plans to take solace in inventing the generic category name?

My preference would be to protect and respect the brand as a trademark, and encourage the marketing types to come up with a generic category name for public use, for that inevitable day when the brand owner has started something special and others want to join in and compete.

If you represented Ling & Louie’s, as a marketing type, how comfortable would you be to call a sandwich menu item, a “Smashed Burger”?

Trademark types, if you represented Ling & Louie’s, and you were asked to respond to a cease and desist letter, would you tell SmashBurger to pound sand?

Sony’s “Lens-Style Camera” Trademark: Shuttered by the PTO?

Posted in Infringement, Non-Traditional Trademarks, Product Configurations, Product Packaging, Technology, Trademarks

Here’s another fascinating pending application for the file of non-traditional product configuration marks — this time, an application from Sony for the configuration of an all-in-one lens/camera:Sony Lens

The drawing may look like an ordinary camera lens – cylindrical, familiar, and generally seen affixed to a fancy DSLR. But the application identifies “Digital cameras” in Class 9, not camera lenses. And the mark description reads: “The mark consists of the three dimensional configuration of a digital camera.” That’s no mistake — by my estimation, this drawing doesn’t depict an everyday lens, but Sony’s QX100 camera, a so-called “lens-style” camera that integrates a Carl Zeiss lens and digital sensor into one compact package. It has no LCD screen, viewfinder, our readout of its own — the camera is operated exclusively via a smartphone. It’s certainly a novel step in the evolution of digital photography, where smartphones have skyrocketed in popularity and have all but replaced the entry-level point-and-shoot cameras of the 2000s.


As so many other companies do with new products in the technology sector, Sony has sought to protect the uniqueness of its product through intellectual property. But trademark protection can be especially tricky for product configurations — and here, Sony has sought to protect the entirety of its product by filing its application with the above drawing. The lack of any dotted lines indicates a claim for trademark protection for the entire product – the lens opening, the shutter release, the on/off switch, the zoom slider, and the focus ring are all claimed as part of the mark, at least according to the drawing.

The PTO subsequently issued an office action for the mark (and later another office action continuing many of the cited issues). Aside from informalities regarding the identified goods, it has all the bells and whistles you could ask for in a product configuration refusal, and sheds some additional light on pitfalls to avoid in filing configuration trademark applications:

  • Drawing. The PTO quickly cited the dearth of dotted lines in the above drawing and requested that Sony provide an amended drawing that “features functional matter dotted out, such as the lens opening, the shutter, the buttons, the charge port.” This in and of itself seems extremely problematic for purposes of this application – nearly every groove, circle, and crevice on the lens has a function. Once it’s all dotted out, that leaves…a cylinder?
  • Nondistinctive Product Design.  As with every product design trademark, it is required to show some modicum of acquired distinctiveness to obtain registration on the Principal Register. According to the examiner, “consumers are aware that such designs are intended to render the goods more useful or appealing rather than identify their source.” Sony attempted to submit evidence in a response to support acquired distinctiveness under Section 2(f), consisting of advertising materials, sales figures, and a declaration. The PTO quickly deemed this evidence insufficient, stating that “applicant’s evidence shows nothing more than that the mark is the shape of the camera, which may have become a generic shape for cameras.” The examiner also sleuthed out a competing “lens-style” camera sold by Kodak to support its refusal.
  • Functionality / Request for Information. Finally, and perhaps most damningly, the examining attorney issued an advisory suggesting that the mark — or what’s left of it once an amended drawing is provided — may consist of unregistrable, functional matter (which we cover in spades on this blog). It’s only an advisory for now, because the office actions also contain a request for information. These requests are hardly benign – they mirror the Morton-Norwich factors for determining functionality. It’s akin to the police asking “Do you know how fast you were going?”

(1)       A written statement as to whether the applied-for mark, or any feature(s) thereof, is or has been the subject of a design or utility patent or patent application, including expired patents and abandoned patent applications. Applicant must also provide copies of the patent and/or patent application documentation.

(2)       Advertising, promotional, and/or explanatory materials concerning the applied-for configuration mark, particularly materials specifically related to the design feature(s) embodied in the applied-for mark.

(3)       A written explanation and any evidence as to whether there are alternative designs available for the feature(s) embodied in the applied-for mark, and whether such alternative designs are equally efficient and/or competitive. Applicant must also provide a written explanation and any documentation concerning similar designs used by competitors.

(4)       A written statement as to whether the product design or packaging design at issue results from a comparatively simple or inexpensive method of manufacture in relation to alternative designs for the product/container. Applicant must also provide information regarding the method and/or cost of manufacture relating to applicant’s goods.

(5)       Any other evidence that applicant considers relevant to the registrability of the applied-for configuration mark.

(6)       A written explanation of what, specifically, applicant has applied to trademark.

Sony’s first office action response addressed only the Section 2(f) issue and amended the identification of goods. And, perhaps charitably, the examining attorney continued the other refusals as non-final, rather than heading straight for a final office action. I’d keep an eye on this one for potentially some novel arguments in Sony’s favor, but it appears to be a tough road ahead.

So what do you think? Does Sony have a pathway to registration, or has the public already been overexposed to generic, functional cylinder-style cameras?

[Apologies for that last pun.]

Beer for Breakfast: Lessons in Co-Branding from General Mills

Posted in Branding

HefeWheaties Tableau

Yesterday General Mills announced that it had partnered with Fulton Brewery to create HefeWheaties: a limited edition brew. The beer is a Hefeweizen, which is traditionally a wheat-based beer, making it a perfect canvas for the Wheaties brand.

Normally when these situations arise, it is because one party is complaining (For example, Lucasfilms’ objection to STRIKES BOCK beer). Not this time. Instead, we have two companies that appear to be on the verge of launching a very successful co-branding venture (just check out the press already, here, herehere ).

Aside from the fact that I’m excited to try this beer, the news provides a number of insights into how to co-brand a product. The craft beer industry in particular lends itself to these experiments: craft breweries regularly create limited run products (aka seasonal beers). They also have a loyal fan base that is active on social media (free advertising!). Also, beer can tie in just about any product either through imitation of flavor, or finding a clever name and pairing it with eye-catching packaging. Yet the lessons that can be gleaned from the HefeWheaties announcement aren’t limited to breweries. Instead, the announcement provides insight for any business considering co-branding.

First, there should be a basis for the partnership. Fulton’s founder and a number of its employees are former General Mills employees. The companies have been connected long before this idea arose. As a result, there was a level of trust and collaboration that is difficult to create without a prior relationship. This doesn’t mean that you can only co-brand with current contacts; it just helps. If you don’t have an established relationship, build one! Collaborate on the co-branding idea rather than simply creating it yourself and then handing it off.

Second (or if you’ve failed lesson one above), the product should feel authentic. With HefeWheaties, consumers want to like the product: both companies are based out of Minneapolis; the wheat connection makes sense; and the past history between the employees and management all contribute to a feeling that the product is an idea, not a scheme. Plus, even though I never ate Wheaties as a kid, I feel some nostalgia for it (kudos to you, General Mills marketing team).

Third, make sure you consider the effect of the co-branding on your original market. We haven’t seen this play out yet with HefeWheaties, but there are appreciable (or at least vocal) numbers of people who don’t like seeing brands they purchase associated with alcohol. For example, Ben & Jerry’s announced earlier this year that it would be partnering with New Belgium Brewing to release a Salted Carmel Brownie Brown Ale. I can’t wait to try it when its released this fall. But Bruce Livingston, CEO of Alcohol Justice had a different view, calling it

[a] crass, corporate greedy move to put a brand name like Ben & Jerry’s on a beer. It’s bad for children — who will start looking at beer as the next step after ice cream.

For our purposes, the merits of the characterization of “ice cream” as a gateway drug are unimportant. A company that co-brands should be aware that its brand and company will be associated with the partnering company, its products, and its industry. Give some consideration as to whether there is any potential for the co-branding to impact your public image and, if so, think about how you’ll respond.

Fourth, and finally, get the legal side taken care of in advance. You’ll likely need a trademark license. Decide whether royalties should be involved and, if so, when and how much. Carefully define the time frame for the license and renewal (or termination) options for both parties. These types of arrangements don’t need to be complicated. However, they became much more complicated after you begin selling product.

Yes, I know, Lesson Number One is work with someone you trust and like. However, business can affect that relationship. The parties’ memories may be a bit fuzzy months or years after you agree to start working together. It is much easier to avoid a dispute if the terms are in writing.

Co-branding doesn’t work for everyone, but it seems like it may work for HefeWheaties. The beer is set to be released on August 26, so perhaps we won’t have to wait long to gauge its success. But what’s really on my mind now is which cereal is next? I think a Peanut Butter Crunch stout could be good. Or maybe a Frosted Flakes porter. If anyone out there can make either of those happen, get a hold of me and let’s figure this thing out.

What Does the Trademark Registration Say?

Posted in Articles, Branding, First Amendment, Trademarks, TTAB, USPTO

Remember a while back when many were humming to the tune “What Does the Fox Say“?

Today, I’m asking, what does the trademark registration say? Not, what does the trademark say — that is a different and more complicated question, depending on the specific mark, but at a minimum, answering that question involves the meaning and attributes of the underlying brand.

The trademark registration — as opposed to the trademark itself — is a piece of paper issued by the federal government with its literal and figurative signatures and fingerprints all over it.

There is no question that a trademark communicates information about an underlying brand, but the Certificate of Registration communicates something quite different — the piece of heavy stock paper with the words in fancy script “United States of America” and “United States Patent and Trademark Office,” across the top, and the golden Official Seal of the USPTO (including a reference to the Department of Commerce) located in the lower left hand corner of the Certificate of Registration, also appearing above the signature of the Director of the USPTO (who is also Under Secretary of Commerce for Intellectual Property), an employee of the federal government and principal advisor to the President of the United States — what this valuable piece of paper communicates is an official act of the federal government that it has examined and approved the trademark for federal registration and exclusive protection in United States commerce.

By way of example, in all its glory, remember this little gem from the archives:


Although the USPTO certainly got it right with our registration, there are times when the USPTO makes a mistake and is asked later to correct it. The United States District Court for the Eastern District of Virginia recently corrected the USPTO errors from decades ago in improperly issuing federal registrations for a racial slur, in violation of Section 2(a) of the Lanham Act. So, as we know from the Washington football NFL franchise’s continued fight to keep the R-Word, the USPTO hasn’t always gotten it right from the outset, and since we’re talking about important matters of public policy here, Congress determined long ago that there is no statute of limitations on getting it right, petitions to cancel on these public policy grounds can be brought “at any time.”

So, when the issuance of a trademark registration would violate public policy, on disparagement, deceptiveness, or other public policy grounds, under current law, the federal government (i.e., The United States Patent and Trademark Office, part of the United States Department of Commerce) is required to refuse registration under Section 2(a) of the Lanham Act. Issuing a Certificate of Registration is the federal government saying, the trademark in question, doesn’t violate any of these statutory bars. And, when the statutory bars are violated, the federal government must refuse registration on Section 2(a) grounds, yet the trademark applicant is free to continue using the trademark in commerce, the right to use is not negated.

As you will recall, some are working hard to have the disparagement bar on federal registration of trademarks found unconstitutional on First Amendment grounds, contending that revoking the government-issued trademark registrations chills their freedom of speech. Those arguments failed in the Eastern District of Virginia, so let’s all stay tuned for how the Court of Appeals for the Fourth Circuit handles them, as it reviews the Eastern District of Virginia decision, and let’s all stay tuned for when the same arguments are made in another case involving another racial slur involving Asian Americans, before the Court of Appeals for the Federal Circuit later this year.

In the end, because the federal government’s act of registration and issuance of a Certificate of Registration, communicates the federal government’s approval of the trademark as being suitable and appropriate for federal registration and protection, the trademark registrations in question involve no speech by the trademark owner, the valuable pieces of paper are purely and 100% governmental speech, taking them outside First Amendment scrutiny. I’m thinking that efforts to conflate the communicative value of a trademark and underlying brand (admittedly the trademark owner’s speech) with the trademark registration itself (the government’s speech about the trademark) will prove unsuccessful.

What do you think?

Peace, Love, and Trademark

Posted in Mixed Bag of Nuts

- Draeke Weseman, Weseman Law Office, PLLC

Bandwagoners everywhere have reason to celebrate following a recent opinion out of the Court of Appeals for the Federal Circuit. In Juice Generation, Inc. v. GS Enterprises LLC, Appeal No. 2014-1853, (Fed. Cir. July 20, 2015), the Federal Circuit reviewed the Trademark Trial and Appeal Board’s assessment that consumers were likely to be confused between the mark “Peace Love and Juice” for a juice bar and the mark “Peace & Love” for a restaurant. Sending the case back to the Board for further review, the Federal Circuit determined that the Board failed to adequately consider the weakness of a mark where there are numerous registered and unregistered third-party marks that incorporate similar phrases. For example, the Federal Circuit listed the following marks it considered as evidence that the combination of “peace” and “love” is a weak mark when used in connection with food:



























That’s a lot of peace and love and . . . food! This led the Federal Circuit to conclude that consumers may be accustomed to distinguishing “peace love blank” marks in the food service industry on the basis of minute distinctions. As a result, these marks deserve only a very narrow scope of protection.

As some readers may know, the enthusiasm for “peace love blank” marks comes from a 1970’s song written by Nick Lowe and performed by Elvis Costello called “(What’s so Funny ‘Bout) Peace Love and Understanding.” You can see it performed here. Apparently, besides being funny it made people hungry.

Today’s generation may not have its appetite satisfied so easily. Just look at recent moves taken by Taylor Swift. Last fall, she applied to register trademarks across a wide variety of merchandise for popular lyrics off her album, 1989, including “Cause We Never Go Out of Style,” “Party Like its 1989,” and “This Sick Beat.” It doesn’t take much imagination to see the trademark opportunities for hungry bandwagoners that may have been thwarted, for example: “Cause Cheeseburgers Never Go Out Style,” “Eat Like its 1989,” and “This Sick Beet.”

Anyway, all of this talk about food reminded me of another trademark dispute involving a common message telling us to eat more of something. And, in case you didn’t notice it on the long list above, Chick-fil-A happens to own a registration for the mark “Peece Luv Chikin.” So, Bo, how about a little “Peace Love and Kale” for your next t-shirt? I’d buy one!

In the meantime, I guess we’ll just . . .


Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB

Posted in Articles, Branding, Law Suits, Marketing, Trademarks, TTAB

In case you missed the webinar from last year, we’re having another Strafford IP webinar on “Navigating Trademark Oppositions and Cancellation Proceedings at the TTAB,” next Tuesday August 18, at noon CST. Here are the details for the webinar.

This year, we’ll have the benefit of knowing how the Supreme Court decided the B&B Hardware case, so please join us. I’m presenting again with two very capable TTAB practitioners: Linda McLeod of Kelly IP in Washington, D.C., and Jonathan Hudis of Quarles & Brady’s D.C. Office.

To brush up on the impact of the B&B Hardware decision, you might want to review these posts beforehand:

Likelihood of Preclusion: Fallout From the Supreme Court Ruling on Likely Confusion

On Unintended Consequences: Will the B&B SCOTUS Ruling Encourage Trademark Bullies?

Channeling Justice Ginsburg of U.S. Supreme Court on the Right to Register a Trademark

(Just) the Right to Register a Trademark

The first three to post a comment here may attend for free, as my guests, without paying the typical registration fee — we hope you can join us!

Justice Delayed or Justice Denied?

Posted in Mixed Bag of Nuts

Many college sports aficionados are likely aware of the long-raging debate about whether college athletes in high revenue sports, like football and basketball, ought to be paid for their services. After all, college sports have become big business where top schools are routinely able to generate revenues exceeding $100 million dollars.  (See Business Insider Article here).  Those of us with an inherent and nagging sense of fairness and justice have felt that the athletes contributing to such riches should receive something for their efforts aside from a “free” education.  (For the brilliant John Oliver takedown of the NCAA position, see here.)  No doubt the free education is valuable, but it is a relative pittance to dollars we’re talking about here.

With this background, many of us were heartened to read the August 8, 2014 opinion by the United State District Court for the Northern District of California which required the NCAA to allow schools to pay athletes modest sums for their contributions on the athletic fields/floors.  The trial judge originally ordered that her ruling would be effective pending an appeal.  Unfortunately, on July 31, 2015, the United States Court of Appeals for the Ninth Circuit stayed the district judge’s ruling pending the decision on appeal.  This means that we will continue at least a little longer on the “no pay for athletes” model.

The Court heard oral argument on March 17, 2015 and is presumably working on a decision about whether it will affirm the district court’s ruling.  However, the Ninth Circuit’s most recent order is not a positive sign.  Although the order said that it was being entered “without expressing a view as to either party’s likelihood of success on the merits,” it seems unlikely that the appellate court would have entered this stay unless it was planning on reversing the district court decision.  We should soon know whether this case, which has been ongoing since 2009, was all in vain.


The Great Presidential (logo) Debate

Posted in Advertising, Branding, SoapBox, Social Media, Squirrelly Thoughts, Television, Trademarks, Truncation

The day has finally arrived – the beginning of 2016 presidential debate season!  The best reality TV showdown around!  Democrat or Republican, I don’t discriminate, political debates are probably the only fighting “sport” in a ring that I enjoy watching.  Fox finalized its debate card for the first debate of the season and, with the number of candidates, settled on an opening showdown and a prime-time main event.  So I thought why not have a DuetsBlog logo smackdown!

The early draw (with strong potential for gaffes and oopsies) features candidates that aren’t polling as high as the 10 candidates in the main event.  (Jim Gilmore doesn’t appear to even have a logo yet.).  Definitely some points here for thinking outside the box when it comes to some of these logos.

In the main event, we have this following group of presidential potentials.  While Trump has been getting much attention, he doesn’t seem to have a logo or an established campaign website, so I included the logo below that seemed most fitting.



Then, on the Democrats’ side we have these declared candidates:


Hillary’s logo has been the subject of much ridicule, including an arrow pointing directly towards “the right” and seemingly similar to a hospital sign.   To me, her logo seems basic, cold, square, and rigid.  I’d like to see the other logo options were presented to her that she turned down in favor of that one.

Your brand is your promise to your consumer, and your logo is the key way that you communicate your brand and your identity to your consumer.  Without overstating the obvious, presidential campaigns are brands too, but given the logos above, are they selling hope, change, or really anything?  Or are they really just more of the same?  Why in the high stakes road to 2016 do we seem to not yet have something akin the Obama “O” logo?  Start your own debate below and let us know what you think of these presidential logos.

Why Is The Trump Brand Doing So Well?

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

- Mark Prus, Principal, NameFlash

Donald Trump is the leader in the race for the Republican nomination for President. A CNN/ORD national survey (conducted after his comments about John McCain) puts Donald Trump ahead with the support of 18% of Republicans, Jeb Bush at 15% and Scott Walker at 10%.

Why is the Trump brand doing so well?

Donald Trump is a celebrity and he has the highest name recognition of any of the candidates by far. A recent Gallup poll puts Trump’s name identification among Republicans at 92%. In fact, a poll by CNN found that only 1% of Americans had never heard of Donald Trump. Is his celebrity fame and name recognition driving his lead in the polls?

As a branding expert, I must say that celebrity fame and name recognition are certainly good. However, everyone has heard of Caitlyn (aka Bruce) Jenner and Kim Kardashian and you would not see them at the top of the polls if they were running for President. Clearly there is something more than just awareness.

I believe it is caused by Trump’s superior execution of a classic marketing technique: understanding your Target Audience. Trump knows he is not going to win over the politicos or the Washington Insiders. Instead, he speaks to the “common man.” His campaign features themes that the common man talks to his buddies about at the bar (but they never mention when they are in public). Trump has even branded this group as “the silent majority.” Trump is a smart marketer who understands his Target Audience!

For example, Trump constantly rails against the “Washington Insiders.” He says he’s fed up with Congress and is tired of “…being pushed around, kicked around, and acting and being led by stupid people.” Attacking the incumbents is often a good election strategy, but Trump has taken that tactic to a new level. Only 16% of Republicans feel like they’re being well represented in Washington (CNN poll), so Trump speaks to the other 84%.

Trump is appealing to what Victor David Hanson of PJ Media calls the “fed-up crowd.” “The fed-up crowd likes the payback of watching blood sport in an arena where niceties just don’t apply anymore,” he writes. “They enjoy the smug getting their comeuppance, as an uncouth, bull-headed Trump charges about, snorting and spearing liberal pieties and more sober and judicious Republicans at random.”

The Washington Free Beacon’s Editor Matthew Continetti calls Trump’s supporters the “radical middle”, who in years past embraced Ronald Reagan, Pat Buchanan, Newt Gingrich and Ross Perot. “That Trump is not a conservative, nor by any means a mainstream Republican, is not a minus but a plus to the radical middle,” he continues. “These voters are culturally right but economically left; they depend on the New Deal and parts of the Great Society, are estranged from the fiscal and monetary agendas of the Economist and Wall Street Journal. What they lack in free market bona fides they make up for in their romantic fantasy of the patriotic tycoon or general, the fixer, the Can Do Man who will cut the baloney and Get Things Done.”

Trump is a smart and powerful businessman who understands Marketing 101. Understand your Target Market and give them what they want. It is a pretty straightforward formula for success in the marketplace. Is Trump a “lock” for the Republican nomination? It is pretty early in the game to call it, but I’m not betting against him!