DuetsBlog

Collaborations in Creativity & the Law

Hello, My Name Is Dave

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

-Mark Prus, Principal, NameFlash Name Development

Mark Cuban held a variety of jobs in his youth including selling garbage bags door-to-door and being a bartender, a disco dancing instructor, and a party promoter. But one thing that frustrated him was bank overdraft fees. Now he’s helping to fund an app that claims it can help people avoid them by predicting incoming expenses and comparing them with the person’s spending habits.

The app is called “Dave.”

“We named the company Dave because we wanted people to think of the app as a friend they can turn to when they’re in a financial bind,” said Dave’s CEO, Jason Wilk.

“Dave” is another example of people trying to anthropomorphize their brand. To anthropomorphize means to attribute human form or personality to things not human, and I noted this trend in my 2015 book The Science of Branding. Giving your product a name that enables consumers to attribute human qualities to it can be a very memorable way to develop your branding, and it is proven to be a successful branding technique.

Please note, this is not the same as using the founder’s name in the business name. The name Ben & Jerry’s reflects that name of the founders, not an attempt to attribute human form or personality to things not human. Some people might have a favorable opinion of Ben & Jerry’s because of the use of the founders’ names in the business name, but this was not a deliberate attempt to anthropomorphize the brand.

Alexa, Siri and Cortana are good examples of an attempt to anthropomorphize a brand name in technology. If you are going to launch a digital assistant, shouldn’t the name sound like a real person (albeit with a techie feel)? Wouldn’t you want a user to develop a relationship with the device/service in the same way that you would develop a relationship with a friend?

Of course this naming approach is not without risk. Developing a personal relationship with a consumer requires authenticity that leads to trust and a deeper connection. If “Dave” is able to develop that connection and build on it over time, then the approach can be a success. However, a few missteps along the way can cause Dave users to start thinking of Dave as their goofy brother-in-law rather than as a respected friend they can turn to when they are in a financial bind.

Do You Even Trademark, Bro?

Posted in Dilution, Famous Marks, Infringement, Law Suits, Mixed Bag of Nuts, Trademarks

Two Bros are competing over their Bro meal delivery services.

Jamie Giovinazzo is the owner of Eat Clean Bro, LLC, a meal delivery service providing “a convenient service that is designed to bring chef-prepared meals right to your front door.”  “Whether you are looking to lose weight, live a clean and healthy life, or build lean muscle mass through a natural diet, our service has a line of meals to fit your lifestyle.”  Giovinazzo has federal trademark registrations for EAT CLEAN BRO and POWERED BY YOU PROVED BY YOU EAT CLEAN BRO.  According to the website, Eat Clean Bro was founded in 2013.

Earlier this week, Giovinazzo filed a complaint in federal court against Bryan Calcott, owner of Ketoned Bodies. Through Ketoned Bodies, Calcott recently launched his own meal delivery service, Eat Keto Bro, delivering meals catered to a ketogenic diet.  A ketogenic diet is a low-carb, high-fat diet, recently lauded by fitness buffs.

According to the Complaint, Giovinazzo asserts, “Rather than engage in fair competition in the marketplace and allow consumers to exercise their own choice through the use of only the existing Ketoned Bodies trademark . . . Defendants have . . . recently resorted to promoting its EATKETOBRO Services and Products using a trademark eatketobro and domain name, EATKETOBRO.COM, that are confusingly similar to Plaintiffs’ EAT CLEAN BRO Trademarks and Plaintiffs’ EATCLEANBRO.COM domain name.”

Giovinazzo alleges both trademark infringement and dilution.

What do you think? Is Eat Keto Bro confusingly similar to Eat Clean Bro?  What about these other bro-related food services?

 

 

 

 

Titleist Trademark Tarnishment?

Posted in Advertising, Branding, Dilution, Famous Marks, Fashion, First Amendment, Squirrelly Thoughts

During today’s first round of the Open Championship at Royal Birkdale, many a golf ball bearing the famous TITLEIST cursive script will be lofted into the heavens – meanwhile, back on the ground, the brand’s owner is attempting to stamp out a lewd parody of its trademark.

An online golf apparel company, I Made Bogey, has been sued by Acushnet Company (the owner of the TITLEIST brand) for its sale of a line of lewd apparel and headwear that clearly appropriates the Titleist cursive script to – well, I’ll just let you see the images (and the products remain for sale online):

The Titleist logo has become an icon in the golf world, despite its humble beginnings:

It all starts back in 1935 when Phil Young and Fred Bommer, the founders of the Acushnet Company, were ready to launch the first Titleist golf balls into the market.

Having spent the better part of three years designing, developing and perfecting the ball, the team now needed to add the finishing touch – the logo.

Knowing that their office secretary Helen Robinson had beautiful penmanship, Young and Bommer asked her to write the word ‘Titleist’ on a piece of paper. And as the saying goes, the rest is history.

The way Helen penned the word on the page that day was used for the original branding and the Titleist script, one of the world’s most recognized marks, is still based on this initial lettering today.

Reports on the lawsuit have commented that Acushnet’s prospects for clear-cut trademark infringement are not ideal. After all, classic infringement will require consumer confusion as to source, affiliation, or sponsorship between I Made Bogey and Acushnet / Titleist. And here, most golfers who “get the joke” will clearly differentiate the lewd T—–S hats from the TITLEIST hats worn by the pros.

And dilution by tarnishment will prove to be another challenge for Acushnet. It’s ostensibly an intuitive fit for this type of lawsuit, but parody is not necessarily encompassed by a tarnishment claim. Tarnishment generally requires the defendant to be using the same mark for unrelated goods or services, but for low-quality goods or otherwise in a manner that might degrade the distinctiveness of the famous trademark. Here, a different mark is being used, and if consumers can understand the difference, and lean away from any confusingly-similar association with the TITLEIST mark, then the argument would run that tarnishment is not, in fact, taking place.

Will the #1 Ball in Golf come out the victor here? Above all, trademark lawsuits are a pricey affair, particularly for a relatively small online business – but I Made Bogey’s continued sale of the allegedly infringing products seems to indicate this battle may not be resolved for quite some time.

MLB to Oppose (maybe) Blizzard’s Overwatch League Logo

Posted in Branding, Mixed Bag of Nuts, Sight, Trademarks, TTAB, USPTO

If you’re a video game fan like me, you’re probably familiar with Blizzard Entertainment and their assortment of popular games, such as Starcraft, Diablo, and World of Warcraft. One of Blizzard’s newest games is Overwatch, a multi-player, first-person shooter game. One aspect of this game is the Overwatch League, a series of tournaments and live events involving Overwatch players around the world, eventually culminating in the Overwatch League World Championships.

Blizzard recently applied to register an Overwatch League design mark, shown below, for various goods and services, including entertainment services in the nature of organizing and conducting eSports and video game contests and video game tournaments.

Major League Baseball Properties, Inc. (I’ll abbreviate as “MLB”) decided to file a request for an extension of time to oppose Blizzard’s application, presumably based on their various Major League Baseball design marks, such as the one below.

Significant press coverage has followed this development, which is somewhat unusual, as this is merely an extension request, i.e., it simply buys MLB more time to consider whether to file a Notice of Opposition and/or to reach out to the applicant to attempt to resolve a dispute informally. Filing extensions of time to oppose are relatively routine in the trademark field. Often times, in borderline cases where a party might not necessarily follow through with an opposition proceeding, simply filing an extension of time to oppose slows down the prosecution of an application and provides extended leverage during informal negotiations between parties.

So this extension of time might not lead to any formal dispute. One might question how likely it is that MLB would really follow through with an opposition here based on the differences in the marks. Both marks have a two-tone background (though in different colors), split diagonally by a white silhouette of a figure. However, the figures are quite different, one being a baseball player about to hit a ball, the other being a figure leaping forward with some type of gun, apparently about to shoot someone (the species of the Overwatch figure is also unclear–Overwatch has a variety human and non-human characters, such as a genetically engineered gorilla).

On a quick search, I’ve come across several design marks with two-tone, diagonal color splits, and white figures in the middle, some of which are in related sporting or entertainment fields. As one obvious example, see the NBA’s well-known logo:

As another example in the video-game field, see the MLG (Major League Gaming) design mark:

I wonder whether the Overwatch League design will end up being of any significant concern to MLB. Perhaps the extension of time to oppose simply provides some leverage over informal talks between the parties towards modifying the Overwatch League design? What do you think?

The Brand With 3 Stripes, Bands, or Stitches?

Posted in Articles, Branding, Famous Marks, Fashion, Infringement, Look-For Ads, Marketing, Non-Traditional Trademarks, Sight, Trademarks, USPTO

We’ve written a lot over the years about Adidas’ three-stripe non-verbal, non-traditional trademark. Turns out, Adidas actually owns a federally-registered trademark for the verbal, spelled-out, look-for advertising equivalent too, called: The Brand With The 3 Stripes®.

We haven’t until now probed the meaning of “stripe” though: “A long narrow band or strip, typically of the same width throughout its length, differing in color or texture from the surface on either side of it.” Synonyms include, lines, bands, belts and bars, among others.

See where I’m headed? What is a reasonable scope of rights for this likely famous mark?

Interestingly, whether by strategic design or unintentional lack of consistency, Adidas has called versions of its three-stripe device mark at the USPTO, three parallel bands, three diagonal quadrilaterals, and three slanted quadrilateral bars too.

 

 

 

Whatever the verbiage though, the first time I encountered the competing Lululemon brand, my eyes were drawn to the consistent application of three parallel lines positioned on the upper chest/shoulder area of the shirt, leaving me to wonder why Adidas tolerates this non-functional marking and symbol, especially given its heavy enforcement appetite:

Turns out, Adidas spoke up a few years back when Lululemon applied to federally register a non-traditional trademark described as “three parallel bars applied to the front left-hand seam of the upper chest/shoulder area of the shirt, t-shirt, sweatshirt, sweater, tank-top or jacket,” as shown in the drawing below:

 

It’s curious that Lululemon chose to call the three parallel lines, “bands,” (Adidas verbiage) especially since during prosecution it described a “Three Stitch Design mark,” which seems more accurate, yet after convincing the USPTO that Lululemon had a distinctive non-traditional mark, Adidas came knocking and opposed anyway.

Having said that, Adidas knocked only so hard, as its mission appears to have been focused on preventing registration only, not use, since the use persists several years later. Wouldn’t you enjoy the opportunity to view the apparent settlement and coexistence agreement?

Had Adidas not opposed, or had Lululemon been able to defend the opposition, perhaps Lulu would be in a stronger position to do something about these Reef shoes that I initially mistook for an extension of the Lululemon brand (until spending more time handling them):

 

What do you think, do you suppose Reef shoes felt more comfortable adopting the three stitch device on shoes because Lulu has no non-traditional trademark registration and would have to establish non-functionality and common law rights to enforce, or perhaps, because Lulu has apparently stopped selling footwear and shoes?

Do you suppose that Reef shoes has focused on the registration of other non-traditional marks and refrained from seeking federal registration of its three stitch design because it doesn’t want to hear from Adidas?

Is it fair to say that the Adidas’ stripes, bands, and quadrilaterals don’t cast a shadow on stitches, at least when it comes to use, as opposed to registration?

Hello, B&B Hardware, and what do you have to say for yourself?

Sorry Justice Alito, “The Slants” is Not Okay

Posted in Branding, Famous Marks, First Amendment, Guest Bloggers, Law Suits, Mixed Bag of Nuts, Trademarks

– Jason Voiovich, Virtual Chief Marketing Officer, Vojvdec & Sigma

According to the unanimous ruling by the US Supreme Court handed down last month, failing to allow registration of trademarks such as the “Redskins,” “Fighting Sioux” and “The Slants” violates the free speech clause of the First Amendment to the US Constitution. Writing for the court, Justice Samuel A. Alito Jr. wrote that the ban, “offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

According to those of us charged with building a marketing strategy grounded on those trademarks, this has nothing to do with free speech.

Filed under the category of “just because you can jump off a cliff doesn’t mean you should,” just because you are able to register a “disparaging trademark” does not mean it makes any sense to do so. Putting aside the issue that commercial speech is not the same as free speech in the legal sense of the word, marketing strategists hoping to use the ruling to build their brand strategy are misguided.

The marketing argument to employ a disparaging trademark seems to boil down to two key points: Continue Reading

The End Times for Brands?

Posted in Non-Traditional Trademarks, Trademarks

Several years ago I wrote a post about Selfridges’ “No Noise” campaign, featuring de-branded items from brands like Heinz, Clinique, and Levi’s.  In that post, I asked whether de-branded design would soon become a new trend.

It looks like we might be there at least in theory with Brandless, a startup retailer that, as today’s Wall Street Journal article stated, “is betting it can get American shoppers to break up with big brands from Colgate to Heinz.”

The premise with Brandless is that everything – soap, pasta, and even a pizza cutter – is $3 and everything is labeled with the generic product name.  As they say on their blog, they also “hacked the BrandTax™, the hidden costs you pay for a national brand often associated with production and retailer margin.”

But isn’t Brandless doing arguably the opposite of its name and establishing its own brand?  You can see their smart attempts to cultivate their own brand by the consistent use of a bordered, white, label-like background with a TM next to it.  In addition to filings for their BRANDLESS mark and even BRANDTAX, they also filed an application last month for the following  “white rectangle with rounded edges” mark.

This label-like mark seems like the Gene Simmons “devil horns” trademark equivalent to the packaged good industry.

In a crowded field of online retailers chasing Amazon dreams, can a brand like Brandless break away from the bunch with de-branded products?  Unlike Target’s Up & Up line of private labeled products, consumers have little to no experience or knowledge of the source of these products to confirm their quality.  Will this be a hard sell?  Maybe not if the price of $3 and the consumer engagement is right.

Trick or Trademark? Mars Says Hershey’s Can’t Own “SCARY” Candy.

Posted in Advertising, Branding, Fair Use, Food, Idea Protection, Marketing, Trademarks, TTAB, USPTO

Sandwiched between 90 degree days in a Minnesota summer, the idea of Halloween wasn’t on my radar – until I learned about the latest dispute between candy giants Mars and Hershey’s.

Mars and its subsidiary own many well-known candy brands, including M&Ms, Snickers, Twix, Skittles, Life Savers, and others. Not to be outdone, Hershey maintains its own stable of popular brands in addition to Hershey brand, including Kisses, Reese’s, Twizzlers, and others. Even though the parties are major competitors, it appears the two bonbon behemoths don’t frequently compete in proceedings at the Trademark Trial and Appeal Board, except for extensions of time to oppose and a handful of oppositions settled quickly.

In light of the history, Hershey may have been spooked when it first learned that Mars filed a Notice of Opposition last month against Hershey new application to register the mark SCARY in connection with “Candy.” The Notice of Opposition (available here) claims that the term SCARY is “highly descriptive” and “generic” in connection with candy, especially candy sold or promoted during the Halloween season. Mars alleges that “SCARY is like ‘HAUNTED’ ‘SPOOKY’ or ‘BOO,’ only SCARY is more frequently used.” In light of this, Mars alleges that “SCARY is no more capable of being a trademark for candy than is TRICK OR TREAT.”

Mars’s arguments have some bite. I don’t recall the specific brands from my candy hauls on the streets of my Iowa hometown, but I remember a lot of Halloween imagery: ghosts, pumpkins, monsters, and others. Yet I’m not sold on the idea that SCARY is descriptive, let alone generic, for candy. To be descriptive, a term must immediately describe “an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (according to the Trademark Manual of Examining Procedure). Scary doesn’t seem like it describes the candy, but instead merely the marketing used to advertise the candy. Establishing that SCARY is generic is even more difficult, because “generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services” (TMEP). If there is a genus specifically for candy marketed for trick or treating, the genus is probably “Halloween Candy,” not “Scary Candy.”

A claim that might have a better chance of success, however, is that the term SCARY does not function as a trademark, but instead is understood by consumers as conveying information about the goods. Consumers might perceive the term scary as indicating the candy is meant for use in the Halloween season, or that the term SCARY is somehow ornamental or informational. Unfortunately, Hershey filed the application on an intent-to-use basis, so Hershey has not yet used the mark. As a result, it is difficult to evaluate whether Hershey’s use constitutes use as a trademark.

While Mars has a colorable claim, I don’t see SCARY as crossing the line into the descriptive category of the marks. I think SCARY is likely used by a number of third-parties, but I think this means that consumers perceive SCARY (and similar variations) as being a weak designation of source, but not necessarily descriptive. Notwithstanding, Mars has legitimate concerns. If Hershey obtains a registration, Hershey could take a broad view of the scope of its rights, seeking to prevent others from using SCARY or similar terms, even against third-parties who may be making a non-trademark use in connection with Halloween candy. For example, Mars uses the term SPOOKY on the candy below:

Mars might be fighting to protect itself and others in the industry from the potential of Hershey wielding a SCARY registration as a sword to unfairly inhibit competitors from using certain Halloween imagery. This goal seems reasonable under the circumstances, even if the claim of “mere descriptiveness” has some weaknesses. It would not be the first time a trademark owner relied on a registration to push competitors away from non-infringing uses.

Notwithstanding Mars’s good intentions, it might be difficult for Mars to claim a “white hat” in this battle, at least with a straight face. Mars owns its own registration for SPOOKY SHAPES for “candy” (disclaiming SHAPES). With that in mind, Mars might be wishing it hadn’t alleged that “SCARY is like . . . SPOOKY” in the Notice of Opposition. If SCARY is like SPOOKY, then it is hard to see why Mars’s use of SPOOKY is a legitimate trademark use, but Hershey’s use of SCARY is not. While the statement doesn’t prevent Mars from prevailing, it does suggest that the purported harm to the industry may be exaggerated. But who knows, perhaps Mars has a few tricks up its sleeve.

You Get A Golden Ticket! You Get A Golden Ticket!

Posted in Advertising, Almost Advice, Branding, Famous Marks

Now that the Fourth of July has come and gone, the bigger holiday is approaching – at least for Chicagoland expatriates in the Twin Cities. That’s right, next week marks the grand opening of Portillo’s Hot Dogs in Woodbury, Minn. For those not aware, Portillo’s is a chain of Chicago-style hot dogs, sandwiches, salads, and healthy chocolate cake shakes to wash it all down. Sorry, Aquatennial – you have been upstaged this year.

As a particularly avid fan of their artery-clogging Italian beef sandwiches, I signed up for a “Sneak Peek Training Meal” a couple of days beforehand – and received confirmation that Portillo’s is just as excited for the occasion – a Golden [Hot Dog] Ticket:

Be still my heart, and my cholesterol.

It got me thinking, how ubiquitious have golden tickets become as a brand? They’re essentially synonymous with contest winners in the modern day. First coined in the 1964 book Charlie and the Chocolate Factory, when little Charlie found a golden ticket in a Wonka bar, the golden tickets are everywhere – from messenger bag companies to hockey teams to electronic dance music festivals. And business executives now have the added fringe benefit of the “golden parachute.” According to Grammarist, “the term golden ticket is often used figuratively to describe a qualification, circumstance or decision that gives someone a chance to achieve something lucrative.”

And a search of the USPTO finds no less than 13 live registrations and applications for GOLDEN TICKET, covering all manner of goods and services from “live plants” to “providing medical information.”

It’s such a common idiom these days, it completely belies how arbitrary a golden ticket actually is – after all, it’s only 53 years old as a term, and contest winners could simply receive a piece of paper that says “YOU WIN!” and get the same information. What is it about the “golden ticket” that is so attractive for brands to include in their contests?

Is it time for something new and innovative? Perhaps if this year has been any indication, a Unicorn Ticket isn’t far behind?

PayPal v. Pandora: Is Music Streaming Related to Financial Services?

Posted in Branding, Dilution, Famous Marks, Infringement, Law Suits, Mixed Bag of Nuts, Technology, Trademarks

PayPal, one of the world’s largest online payment companies, has brought a trademark infringement suit against Pandora Media, Inc., the provider of an online music streaming service and application. PayPal alleges that its blue “PP” design mark (below, left) is infringed by Pandora’s recently re-designed blue “P” design mark (below, right).

The complaint alleges federal claims of false designation of origin and dilution, as well as similar state-law claims. False designation of origin is a trademark infringement claim based on an unregistered trademark (Section 43(a) of the Trademark Act), which requires a showing of a likelihood of confusion.

In the likelihood-of-confusion analysis, one factor is the similarity of the marks, on which PayPal’s complaint and media coverage focus heavily. Clearly there are some striking similarities between the marks as a whole, which may weigh in favor of a likelihood of confusion. However, another critical factor is whether the parties’ goods and services are “related” in the mind of consumers. Even identical marks can co-exist without trademark infringement if the goods or services associated with those marks are not related, such that consumers would be unlikely to be confused as to the source of those goods or services (see for example, DELTA airlines, DELTA faucets, and DELTA books).

Case law makes clear that relatedness is not necessarily established as between certain goods and services merely because they all involve software, computers, or the Internet in general. Rather, courts recognize that software is an enormously expansive field that may involve entirely unrelated goods or services. Thus, even where parties with similar marks offer software in a similar format, such as an iPhone app, the parties’ goods and services are not necessarily related if, for example, they involve distinct industries or fields of use. See, e.g., M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1383 (Fed. Cir. 2006) (holding that, despite similarity of parties’ marks containing “M2” for software, it would be “inappropriate to presume relatedness on the mere basis of goods being delivered in the same media format” given “the pervasiveness of software and software-related goods in society,” and “especially where, as here, the goods … are defined narrowly, along distinct industry lines,” namely, pharmaceutical and medical fields versus music and entertainment fields); Elec. Data Sys. Corp. v. Edsa Micro Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) (“[T]he fact that both parties provide computer programs does not establish a relationship between the goods or services, such that consumers would believe that all computer software programs emanate from the same source simply because they are sold under similar marks.”).

It may be difficult for PayPal to establish relatedness as between its payment and money-transfer goods/services versus Pandora’s music streaming goods/services. If relatedness is established here, where is the limit for software? For example, Progressive Insurance also offers a mobile app with a blue “P” logo, shown below. Are insurance services related?

PayPal’s complaint focuses predominantly on the similarity of marks. But the lack of relatedness of the parties’ goods and services may carry the day. On the other hand, PayPal also brought a trademark dilution claim, which does not require the parties’ goods and services to be related. We’ll save discussion of dilution for another upcoming post, with an update on this dispute as it further develops.

What do you think about PayPal’s trademark infringement claim? Do you think consumers would be likely to assume incorrectly that Pandora’s music streaming application and services originate from or are affiliated with PayPal?