Duets Blog : Creativity and the Law: DuetsBlog

It is probably safe to assume that Channel 45 obtained permission to use Jennifer Aniston's likeness and exploit her right of publicity in promoting viewership of syndicated Friends television programs. That's a deal where everyone appears to win, Channel 45, viewers, advertisers, Aniston, and the other Friends cast members who share in the syndication royalties along with Ms. Aniston.

Last August, I noted the irony of how one of the Friends, Ms. Aniston, appears to have been singled out from her co-star friends, despite their history of solidarity as a group, to serve as the primary marketing face on billboards in promoting viewership of Friends re-runs on television. Then, this month, the above revised billboard caught my attention since it is otherwise identical to prior Aniston billboards, with one key difference. For the past several weeks, Aniston billboards in the Twin Cities have not only promoted Friends, but they have leveraged other non-Friends programming on Channel 45 too.

So, given how often well-intending companies can misapprehend the scope of rights they have been licensed, and given how some are more inclined to ask for forgiveness than advance permission, at times, what I'm not inclined to assume is that Channel 45 obtained an advance license to expand the use of Ms. Aniston's likeness and intellectual property for the additional purpose of promoting viewership of the Minnesota State High School Tournaments on Channel 45.

Since a good portion of the above billboard promotes more than viewership of Friends re-runs, I'm left wondering about the scope of Channel 45's apparent license to use Ms. Aniston's likeness.

Recognizing how carefully celebrities control the use of their likenesses, do you think Channel 45's permission covered any use of Ms. Aniston's likeness beyond promotion of Friends re-runs?

Do you agree, additional permission is required to run the above billboard?

If not, where would you draw the line?

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  v.     

Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn't have to be toasted for the name to fit.

But, what if you're selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn't start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company's claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company's claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term's placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn't cut short and decided on summary judgment with a limited record, we'll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I'll have to say, at this point, "Texas Toast" sounds to me like a category of croutons -- those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza -- each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn't matter if you're the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant's use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant's first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn't likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti's mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti's claimed TEXAS TOAST mark for croutons, so it doesn't become registered prior to trial, but we'll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
3. Is Texas Toast suggestive of croutons, because, a consumer's imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti's suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff's own description of its croutons below the jump.

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Last week we explored how at least some of Seth Godin's trademark advice is a bit dated.

This week, let's take a close and careful look at his advice concerning trademark registration:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

Actually, I've never met lawyers who "demand" that their clients register their trademarks. Strongly recommend, yes, and for good reason, yes, but demand, no. That is not a lawyer's role. Even inexperienced trademark lawyers know to explain the costs, benefits, and associated risks of pursuing or foregoing federal registration. Unfortunately, Mr. Godin appears to misapprehend all three.

We already have discussed the many and substantial benefits afforded to those who federally register their trademarks. These go well beyond what you have, "by the time you get to court." Indeed, in some instances, having the ® will avoid the need to go to court altogether, since the registration is actual proof of the claimed right and may be enough to move a squatter off your mark without even resorting to formal legal action. Good luck with that, if all you have done is "just ™ it." Moreover, in other instances, having the ®, can be the difference between continuing to use or expand the use of your trademark and not, so this is certainly more than "some" minimal benefit.

As to the risks, those who don't appreciate the value of a federal registration or the importance of filing prompt registration applications likely aren't aware of or don't understand this significant risk:

Now, some realize the importance of the protection, but in an effort to save or defer cost, they have considered holding off on filing a federal trademark application -- to see how the product does -- before making a final decision on the filing. If you or someone you know falls into this category, while I sympathize with your and their efforts to manage a tight budget, understand another risk that goes a step further than the risks already covered in the above-linked Create Magazine article.

To do so, after you have conducted the appropriate due diligence to clear use of the new name and mark, ask yourself how long it will take to get your product with the new name and brand in the stream of commerce and in the marketplace. Without the important benefit of constructive use relating back to the filing date of the federal trademark application, it is important to realize that your investment in preparing for the product launch may be lost altogether if another person or company files an intent-to-use trademark application, for a confusingly similar mark, even one day before you get to market with your newly named product. If this happens you and they may very well "see how the product does" with another name.

Now, as to the issue of cost, given the substantial benefits conferred and the substantial risks avoided, when those are recognized and understood, the financial cost of a federal trademark application seems well worth the $275 governmental filing fee toward the creation of an intellectual property asset of national scope.

Last, as to Mr. Godin's assertion that federal registration "doesn't actually increase the value of your trademark," he is simply wrong, so there you go. It stands to reason that national rights are worth more than local rights. Ask any party to a franchise agreement or even their informed bankers who loan money based on them.

Without a federal registration, rights are limited in geographic scope to those areas of operation where the use has been substantial enough to generate common law trademark rights. With a federal registration the trademark owner is deemed to have used his or her mark in every sliver, corner, and county of the U.S., as of the filing date, even though the trademark may never blanket the country with their goods or services. So, one need only consider the world of franchise relationships and trademark licenses to appreciate the enormous power and value a federal trademark registration brings to the table and to the bank.

Some other time, I'll explain some of the reasons for using the ™ symbol, but suffice it to say for now, doing so confers no legal rights. So, "when you come up with a great name" and you want to use it and have the best chance of expanding that use over time, as your business continues to grow, don't "just ™ it", instead, seek federal registration at the earliest possible opportunity.

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DuetsBlog celebrated its first birthday today, so that means Duey the squirrel is one year old. He has made a lot of friends over the past year (as have we), and he has come a long way (as have we) despite his exhaustion hording nuts (we haven't done any of that) for the long cold winter we had (hopefully this remains past tense).  

This is some of what Duey has observed since our inaugural post entitled Dr. No and the Parade of Horribles:

1. Some 350 posts (part of the reason for his exhaustion);
2. Some 530 comments (part of the reason for your exhaustion);
3. Some 840 followers on Twitter;
4. Some 250,000 visits; and
5. Us, having a lot of fun . . . .

Here is a snapshot of where we were back in July 2009, and here is one from December 2009.

Thanks to our wonderful and growing group of talented Guest Bloggers, and thanks to you for your comments and interest in the conversation we have started here on DuetsBlog.

May all collaborations between trademark types and marketing types be early, often, personable, smart, enjoyable, graceful, and mutually beneficial.

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Seth Godin has an amazing knack for creating and spreading ideas that matter, mostly really good ones, by the way. I always look forward to his daily riffs and I have been known to spread some of his important ideas too when they overlap with things I happen to care a lot about.

When it comes to Mr. Godin's trademark advice, however, I'm not feeling it, sorry (that wasn't an apology either). Some of it is, well, lacking an indispensable quality. Even when it is accompanied by this witty disclaimer: "I'm not a lawyer. I don't even play one on TV. If you rely on my legal advice, you're getting exactly what you paid for."

The problem is, sometimes you end up getting much less than you anticipated and actually end up much worse off, when you follow down even a "free" path based on misunderstandings and misconceptions, at least as they relate to one's legal rights.

I'll never forget one evening watching Geraldo Live during the O.J. trial, more than fifteen years ago, as a young trademark lawyer. There was quite a stir about some trademark applications Mr. Simpson had filed for O.J. Simpson, Juice, and O.J., around the time of O.J. Simpson being charged with the murder of Nicole Simpson. I recall one of Simpson's defense lawyers, the brilliant constitutional lawyer Alan Dershowitz, rebuffing criticism about the trademark filings, unwittingly contending that Simpson never intended to use or benefit from those applications, he simply filed them to make sure no one else could. My jaw dropped when I heard this, because it provided a legal basis to immediately invalidate each one of the applications. In addition, had anyone followed this defensive "legal advice," their trademark filings would have been wasted money and considered invalid and void ab initio, since U.S. trademark law requires that an applicant must have a bona fide intention to use the mark on each and every good and service listed in the application.

Back to Godin on Trademark*, and even more recently, a couple of months ago Seth Godin wrote about how to protect your ideas in the digital age:

One way is to misuse trademark law. With the help of search engines, greedy lawyers who charge by the letter are busy sending claim letters to anyone who even comes close to using a word or phrase they believe their client 'owns'. News flash: trademark law is designed to make it clear who makes a good or a service. It's a mark we put on something we create to indicate the source of the thing, not the inventor of a word or even a symbol.

While there are certainly some greedy trademark lawyers in the world, and some that overreach on behalf of their client brand owners, even honorable and ethical trademark attorneys worth their hourly rate know that federal protection against dilution for truly famous marks was added to U.S. trademark law about fifteen years ago. At least for marks satisfying the difficult fame standard, these kinds of trademarks come darn close to owning the brand name in gross, that is, in connection with any goods or services.

For the garden variety and non-famous trademark, the scope of rights is defined by whether or not there is a Likelihood of Confusion.

With respect to what trademark law was designed for, and while I don't consider this to be a news flash any longer, well prior to dilution protection being added, U.S. trademark law was amended to make clear that much more than confusion as to source is covered. All the way back in 1962 the Lanham Trademark Act was amended by striking language requiring confusion, mistake or deception of "purchasers as to the source of origin of such goods and services." Moreover, a much broader scope of confusion protection was codified in 1989 in Lanham Act Section 43(a), which protects against trademark likelihood of confusion not only as to source, but as to affiliation, connection, sponsorship, association, and/or approval. This additional scope of trademark protection makes perfect sense given the current commercial realities of trademark licensing, franchises, co-branding, affiliate marketing, and OEM relationships.

I'm not saying Seth Godin's opinions about trademarks are Out of Bounds, I'm simply saying some of them are out of date.

With a little luck, and assuming I can get in enough time in front of my Stuart Smalley mirror between now and next week, I'll explore another misconception or misgiving it appears Mr. Godin has about the registration of trademarks:

Some lawyers will get all excited and encourage (demand!) that you register your trademark. This involves paying a bunch of money, filing a bunch of forms and earning an ® after your name instead of the ™. While the ® does give you some benefits by the time you get to court, it doesn't actually increase the value of your trademark. And you can wait. So, when you come up with a great name, just ™ it.

So, stay tuned.

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More on single color trademarks today. Eighteen months ago, Wolf Appliance obtained a federal trademark registration in connection with "a red knob or knobs" of "domestic gas and electric cooking appliances, namely, ranges, dual-fuel ranges, cooktops, and barbeque grills."

Wolf put its registration to the test a couple of weeks ago in a federal trademark infringement action, venued in the Western District of Wisconsin, in which it asked the court for immediate injunctive relief to stop arch-rival Viking Range from offering a Red Knob Kit as an accessory for its competing high-end residential cooking ranges (typically equipped with standard black knobs).

Here is a pdf of the decision, granting Wolf's request for a preliminary injunction. The Wisconsin State Journal reported on the decision. Last December, ApplianceAdvisor.com shared a rather cynical view of Wolf's single color claim of exclusivity when the lawsuit was first filed.

So, how did Wolf pull it off? Well, here's the short answer:

1. Before bringing the lawsuit, Wolf obtained a federal trademark registration for the knobs, entitling it to a presumption of validity when the time came to enforce exclusive rights;
2. To demonstrate secondary meaning in its red knobs, Wolf made good use of "look for advertising" on its website: "Choose black knobs, or let everyone know it's a Wolf with our distinctive red knobs;" in catalogs: "Knob appeal. This is, perhaps, the first thing one notices about a Wolf product. The red knobs serve as a reminder of its distinctive nature"; and in advertising: touting the red knobs as "distinctive" and an "exclusive Wolf feature";
3. Viking apparently stopped selling a range with red knobs back in 1993, and since 2000, Wolf had made "substantially exclusive" use of red knobs on domestic cooking ranges; and
4. Greatly assisting its secondary meaning claim to the red knobs, Wolf enjoyed the benefit of significant media attention and stories, specifically mentioning Wolf's "distinctive," "iconic," "classic," "recognizable," "status symbol," "trademark," and "signature" red knobs.

Trademark types, doesn't the court's recognition and reliance on this very helpful media attention evidence make you want to collaborate with your favorite PR type the next time your client is pursuing a single color trademark or some other form of non-traditional trademark rights?

With respect to the question of likelihood of confusion, the Court was moved that there could be initial interest confusion through this hypothetical scenario:

"Suppose a potential range customer is at a dinner party and the hostess tells the potential customer how much the hostess enjoys her range. The range happens to be a Wolf range with red knobs. Several weeks or months later, when the potential customer enters a retail store to browse ranges, he or she sees a stainless steel Viking range displayed with red knobs that looks similar to the red-knob range he or she has seen in the past. There are no other ranges displayed with red knobs. The customer does not remember the brand of the hostess' range, but the customer knows that Viking is a well-known manufacturer in the high-end range market. The red knobs look familiar, so the customer thinks this is the range to which the hostess spoke so highly. . . . Such a situation could qualify as 'initial interest' confusion, because defendant would be reaping the benefit of the goodwill that the plaintiff has developed in its mark."

Are you concerned? Do you find this hypothetical scenario plausible?

What remains to be seen is whether the case continues to conclusion for the entry of a permanent injunction after a full trial. While it is true that the grant or denial of a preliminary injunction often results in an amicable settlement of the lawsuit, this case may not end that way.

Even though Viking lost the first round in this bout, it has brought a counterclaim to cancel the red knob trademark registration issued by the U.S. Trademark Office in 2008. Moreover, if Viking determines that it has a commercial and competitive need to offer the Red Knob Kit, it would be rather easy to resume distribution of the kits at a later time, provided it is able to either invalidate the registration or win on the ultimate issue of whether there is a likelihood of confusion in the marketplace for residential cooking ranges. 

To the extent Viking Range decides to continue its defense and counterclaim to invalidate Wolf's red knob registration, I predict that discovery will vigorously probe functionality as a possible basis for invalidation. A win on functionality would be complete, it would knock out the registration, and make it unnecessary to even consider the likelihood of confusion question of infringement.

In case you're wondering about scope, it would appear that both commercial ovens and toy ovens having red knobs are outside the scope of Wolf's registered trademark.

Stay tuned for more on this interesting case.

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Putting aside the questions of whether Tiger Woods needed to or should have made a public apology, the timing of it, and even the content of it, now that Brand Tiger made the decision to do so and did so last Friday, I'm interested more with how Tiger conveyed it and the likely impact it will have on his personal brand going forward.

What struck me most about Tiger's 14 minute public apology (actually Tiger worked in more than an apology during this time) was the fact that he read it, word for word, rather stiffly, from a prepared script, and from behind a podium. Doing so begged for me the question of who wrote it, in the same way we might ask who a famous politician's speech writer is. Reading from a script or teleprompter behind the security of a podium works well for politicians, I'm not sure it is the best way to convey a heart-felt apology, ok, I am sure, it's not.

After seeing the entire 14 minutes, I had to check with the U.S. Trademark Office to determine whether Brand Tiger had any registered protection for trademarks in Int'l Class 35 for the "production of public service announcements." But, I couldn't find any . . . .

So, why the script, why the podium, why the presidential-blue backdrop? No doubt, this was a carefully controlled message with nothing left to chance, and no chance for surprise. So, that probably answers that. However, it seems to me the tightly controlled format squandered an opportunity to create a more meaningful connection, or perhaps reconnection, with Brand Tiger.

This morning I saw an interview on ESPN with one of the golfers on tour who thought it would have gone better if Tiger had not read a script, but instead spoken from the heart, perhaps guided by a few bullet points in some notes. I tend to agree and believe doing so would have conveyed far more emotion, truth, and authenticity. So, who recommended or chose this format for Brand Tiger?

I'm thinking it was a left brainer, not a right brainer, because striving for a more natural, emotional, and authentic expression from Tiger seems like a no-brainer to me, at least, if the goal is to resurrect, or at least begin the resurrection of Brand Tiger. Or, perhaps a right brain advisor recognized that the target audience for Brand Tiger's apology skewed toward left brainers who would feel themselves more comfortable with this controlled format too? By the way, if you're not sure which of your hemispheres is dominant, here is an interesting and brief online 18 question test.

Left brain dominant Accenture was the only sponsor mentioned by name, do you suppose they had any say in the chosen format?

For further guidance on my hemispheric brain hypothesis, I consulted Al & Laura Ries' most recent and highly acclaimed book War in the Boardroom, which explains the conflict and divide between management and marketing types by their respective emphasis on left and right brain thinking:

If you're the CEO of a major corporation, chances are good you are a left brainer. Before you make a decision, you want to be supported by facts, figures, market data, consumer research. It couldn't be otherwise in a world where the ultimate measurement is the bottom line and the stock price.

If you have a job in marketing, chances are good you are a right brainer. You often make decisions by "gut instinct" with little or no supporting evidence. It couldn't be otherwise in a creative discipline like marketing.

Another striking difference: left brainers have a strong preference for verbal thinking, while right brainers favor visual thinking.

When a management type makes a speech, he or she usually stands behind a podium and reads a script or the words on a teleprompter.

When a marketing type makes a speech, he or she usually stands in front of a screen using dozens of visuals.

Again, all signs seem to point to the left side of the brain on the format. Now, I'm not suggesting that Brand Tiger would have benefited from a Ross Perot style speech complete with charts and graphs, but I do think that Tiger would have chipped his personal brand out of the rough far more effectively without a podium, without reading a speech, and he wouldn't have needed 14 minutes to do it. No doubt, this was only the first public step toward resurrection of Brand Tiger.

As Laura Ries blogged last December on Ries' Pieces, and as I suspect will always be the case, It's What Tiger Does Next That Counts . . . .

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Twelve more days until an all-star panel of speakers share their insights during an in-depth focus on arguably the most important trademark issue to brand owners, marketers, naming consultants, and their trademark counsel. The seminar will focus on the many faces of trademark confusion, with a special focus on initial interest confusion, reverse confusion, survey evidence, and post-sale confusion theories.

Promises to be a good program, we hope you join us, special guests Ron Coleman and Nancy Friedman will be in town, Paul Mussell from Wells Fargo, Lora Mitchell Friedemann from Fredrikson & Byron, Tony Zeuli from Merchant & Gould, survey expert Ivan Ross, and Michael Olsen, Peter Gleekel, and yours truly from Winthrop & Weinstine, P.A., see here for the link on the Minnesota Continuing Legal Education website. See here for a pdf of the brochure, please check it out.

We hope you join us.

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Last week we blogged about the dreaded D-Word and how some marketers unwittingly undermine trademark rights in a brand name by explaining that the name "describes" or is "descriptive" of the goods or services sold under the brand.

We also have blogged about the danger of "taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet," because doing so "unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive." This particular marketing pitfall was illustrated by probing the Gatorade label last May.

Today, we continue the similar theme of common marketing pitfalls that can render an otherwise strong and suggestive mark merely descriptive, and weak, if protectable at all.

Icon Burger Development Company launched the Smash Burger franchise a couple of years ago, and it recently found its way to the Twin Cities. Great food and concept, by the way. The founders are really on to something here, but the marketing efforts have a few, let's say, trademark issues.

Smash Burger, at the outset, had the potential to be a strong and smashing (i.e., wonderful, impressive) brand with strong and inherently distinctive trademark rights. Indeed, the U.S. Trademark Office registered a number of different SmashBurger variants, each without a showing of acquired distinctiveness or secondary meaning, here, here, here, and here. It has even federally registered the word SMASH standing alone, and the tag-line: SMASH. SIZZLE. SAVOR.

When your unique and valuable brand name is SMASH BURGER, and you want to own and continue to own rights in SMASH, and related SMASH marks, best not to use "smash" and "smashed" as words to describe the type or name the category of burgers you sell. For example, the website explains why people love SmashBurger: "Fresh, never frozen 100% Angus Beef smashed, seared and seasoned on the grill." As part of the SmashBurger story, it is told: "We start with 100% Angus Beef smashed, seared and seasoned on the grill . . . ." The homepage further reads: "Smash Burger is a great new burger place for a better burger made with 100 Angus Beef that is smashed, seared and seasoned on the grill."

Perhaps most devastating from a trademark perspective, the SmashBurger drink cups read: "Where SMASH means we literally smash 100% Angus beef at a high temperature to sear in all the juicy burger goodness":

Sounds good, if you're dining, but ouch, if you're the patty, or perhaps a trademark type. It appears the Examining Attorney never combed the SmashBurger website, as many will do, in search of descriptiveness admissions that can and will be used against the brand owner and trademark applicant. It remains to be seen whether these issues are raised at some point in the future.

When marketers are tempted to use their brand name in a descriptive way, my suggestion is to consult a thesaurus in search of alternate terms to use in copy that share the same meaning as the branded and trademarked term. This helps avoid a trademark invalidity challenge by the Trademark Office or competitors. 

Would the effective marketing story be lost if words like "smacked," "pounded," "pressed," "crushed," or "slapped" were substituted for "smashed," and terms like "smack," "pound," "press," "crush," or "slap" were substituted for "smash" in the copy, leaving SMASH for use only as a trademark and brand name? I'm thinking that consumers will exercise a little imagination and still get the marketing point, without doing harm to the trademark.

What do you think?

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We're not talking the foamed footwear Crocs® that Randall Hull wrote about in his What a Croc! post from a couple of weeks ago. Instead, we're talking slow cookers -- on this snow-capped Valentine's Day in the Twin Cities.

Every once in a while a stroll down the grocery store aisle leaves me surprised when I spot a federal registration symbol next to a word that I thought was a generic term for the goods or services in question. Today was such a day, when I noticed Sunbeam's Crock-Pot® The Original Slow Cooker appliance on the store shelf. Apparently I'm not alone in my surprise at the trademark status, given Wikipedia's acknowledgment that Crock-Pot is a trademark "often used generically in the USA" -- and Slo-Cooker is a trademark "often used generically in the UK."

It appears the Crock-Pot® trademark was originally registered back in 1972, and a couple of years ago federally-registered protection for the trademark was extended into a number of different classes of goods at the U.S. Trademark Office for a variety of different products, including food, and some cooking accessories. Last June, this logo was federally registered by Sunbeam, but it specifically disclaimed any exclusive rights in the descriptive phrase "The Original Slow Cooker":

I'm left wondering whether this is like the Rollerblade example, where it took the owner of the Rollerblade brand an entire decade to battle genericide by developing a commercially acceptable generic term (in-line skates) to couple with the brand.

Here are a few questions for marketing types to ponder and discuss: If you're Sunbeam, owner of the federally-registered Crock-Pot® trademark, do you care if retailers and your direct competitors call their competing products a Crock-Pot too? What about Search Engines selling Crock-Pot as a keyword, do you care about that? If so, how much do you care? Is it important enough to spend dollars on stopping these kinds of actions?

Just so no one is left out, here, for you trademark types out there, what steps would you take to avoid having the Crock-Pot® trademark invalidated on genericness grounds?

Same drill for the Bundt® trademark that Dan wrote about prior to the holidays.

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