Duets Blog : Creativity and the Law: DuetsBlog

The newest fare at the Minnesota State Fair is not Camel-on-a-Stick, Buffalo-on-a-Stick, or any other kind of Food-on-a-Stick, but rather, Trademark-on-a-Stick.

Earlier this week, the Minnesota State Fair (owned and operated by the Minnesota State Agricultural Society, a Minnesota State Agency) was hot to skewer the unauthorized use of its nearly three-decade-old and more recently trademarked logo, by incumbent Republican U.S. Congresswoman Michele Bachmann, in a political ad targeting DFL challenger Tarryl Clark's record on tax policy.

This trademark objection has generated quite a bit of publicity, with coverage being reporting by MinnPost, The Minnesota Independent, the New York Times (blog), Politics Daily, MPR News, TPM, and Politico. The Bachmann ad referenced the MN State Fair and used its official logo while suggesting that Clark has voted to increase taxes on what foodies covet at the fair, including their favorite corn dogs, deep fried bacon, and beer.

Central in the debate over the lawfulness of the Bachmann campaign's use of the logo is a question we have pondered on DuetsBlog before (e.g., here, here, and here), namely, whether the use of another's logo crosses the legal line and is likely to cause confusion as to sponsorship, affiliation, approval, or endorsement, or whether it may constitute lawful nominative fair use. So, it should be no surprise to readers of DuetsBlog, that in the end, it is consumer understanding of the use in the ad that controls whether or not it is lawful.

The Minnesota State Fair's objection certainly is not frivolous and is rooted in a common and traditional trademark concern over likelihood of confusion. Bachmann for Congress political ads begin with the statement: "I am Michele Bachmann and I approve this message." According to Minnesota State Fair officials, Bachmann's use of the above Minnesota State Fair logo is likely to lead viewers to incorrectly believe that the Minnesota State Fair approves Congresswoman Bachmann's message or has endorsed her campaign. What do you think, is that what viewers will believe?

Bachmann's campaign denies that the logo use was unlawful, but without explaining why no confusion is likely and without specifically articulating what would likely be a nominative fair use defense, it voluntarily has decided to drop use of the official logo and instead opted to switch to a more "generic" image. Apparently what the campaign means by "generic" is not that it lacks the look of a trademark and/or logo, but rather is one not specifically used or owned by the Minnesota State Agricultural Society.

Bachmann for Congress' revised television advertisement may be viewed here, showing no use of the trademarked official logo, but I'd hardly call the use "generic" -- it remains a  logo use, even if it is a fake one that swaps fireworks for a ferris wheel, and alters the color scheme and typeface. Do you think that consumers will notice or recognize the fake logo as being fake or just believe it is an additional logo used by the MN State Fair that they haven't seen before?

Interestingly, the change may not be enough to satisfy the MN State Fair. Apparently, it continues to have concerns about the revised Bachmann ad, and it has asked the Attorney General to look into the question of whether the change is sufficient to avoid confusion as to endorsement of the Bachmann campaign. Having said that, with only a few more days left before the close of the 2010 MN State Fair, one must wonder whether the campaign will move on and moot this lingering concern too, leaving the State Fair ads behind, as it continues to run new ads down the final stretch of the campaign.

Stay tuned, tomorrow I'll attempt to make the case for why the State of Minnesota needs to hire an experienced trademark attorney.

Bonus political speech consideration below the jump:

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Now that kids are back to school and summer is coming to a close, this billboard advertisement has disappeared from I-94 just outside of downtown Minneapolis. Before it vanished from the roadside, however, I thought to capture it to tell a little trademark tale here, one from years past, but one that remains relevant, important, and applicable to trademark claims involving the color black. 

As we have discussed before, a single color can function as a trademark and be the basis of exclusive ownership, so long as it is not functional and has acquired distinctiveness for the goods in question. As it turns out, however, and as the billboard reminds me, due to some unique attributes of the color black, it is a tricky one to own as a trademark.

The tale begins back in 1988, after accumulating 25 years of use and allegedly "substantially exclusive" use in commerce, Mercury-Brunswick commenced efforts to register, own and exclude others from using the color black on the surface of internal combustion engines for boats.

As can tend to be the case when claiming exclusive rights in single colors or other non-traditional trademark rights, others within the industry who are paying close attention to what goes on at the Trademark Office come to life and consider getting in the way of these efforts. 

British Seagull Ltd. did just that and filed an opposition lasting six years, ending with and resulting in the final rejection of Mercury-Brunswick's claimed trademark rights in black, based on the functionality doctrine. You might be wondering, how on earth is the color black functional when applied to the entire surface of internal combustion engines for boats? 

The longer answer can be found in two decisions: The decision of the Trademark Trial and Appeal Board (TTAB) in British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993), and the decision of the Court of Appeals for the Federal Circuit (CAFC), affirming the TTAB's registration refusal, in Brunswick Corporation v. British Seagull Limited, 35 F.3d 1527 (1994).

The shorter answer is "competitive need" as found in this excerpt from the TTAB's decision: 

[A]lthough the color black is not functional in the sense that it makes these engines work better, or that it makes them easier or less expensive to manufacture, black is more desirable from the perspective of prospective purchasers because it is color compatible with a wider variety of boat colors and because objects colored black appear smaller than they do when they are painted other lighter or brighter colors. The evidence shows that people who buy outboard motors for boats like the colors of the motors to be harmonious with the colors of their vessels, and that they also find it desirable under some circumstances to reduce the perception of the size of the motors in proportion to the boats.

And the CAFC's affirmance, here:

Turning to the present case, the Board determined that "black, when applied to [Mercury's] outboard marine engines, is de jure functional because of competitive need." British Seagull, 28 USPQ2d at 1199. The color black, as the Board noted, does not make the engines function better as engines. The paint on the external surface of an engine does not affect its mechanical purpose. Rather, the color black exhibits both color compatibility with a wide variety of boat colors and ability to make objects appear smaller. With these advantages for potential customers, the Board found a competitive need for engine manufacturers to use black on outboard engines. Based on this competitive need, the Board determined that the color was de jure functional. This court discerns no error in the Board's legal reasoning and no clear error in its factual findings

So, it's important to keep in mind this notion of competitive need when a business desires to own exclusive trademark rights in a color, and it is equally important to keep in mind as a defense when such rights are being asserted against your client's use of a color. 

And, when it comes to asserting or refuting a claim of exclusive trademark rights in the color black, it is well worth exploring competitive need by asking whether black's unique attributes of color compatibility and/or visual perception have any application to your facts, since those facts already have been found to support a successful functionality defense.

On a related note, I recently came across King Innovation's announcement of being "granted" a trademark in black underground waterproof electrical connectors. Of course, I'm left wondering whether color compatibility and/or visual perception might impact this claim of rights. I'm also hoping they aren't referring to this little guy right here, since the application to register this claimed mark was abandoned last year and appears to be deader than a doornail, following a functionality refusal:

 Oh, what do you know, here is another application, filed a year later, that matured to registration and  issued just months ago. Proof that persistence pays dividends!

Last, as I recall Dan's post entitled I See Black Labels, I'm left wondering what social science data might exist to support a functionality defense, if one was inclined to require such a defense.

Can you think of other unique attributes to the color black that might establish a successful functionality defense to a trademark claim in black?

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  Marketing maven, strategist, visionary, and best-selling author Seth Godin spent a day at Pantages Theater in Minneapolis last Thursday, providing much food for thought among not only the attending crowd, but those following the dialogue on Twitter too.

The sushi and cupcake lunch Seth selected, and that we enjoyed, on the roof of neighboring Seven, was pretty nice too.

Days before his appearance in Minneapolis, Seth had blogged about how he was moving on since Linchpin, his life's work, would be his final book published in the traditional way.

Spending the entire day in the third row, on the aisle, at Pantages, I found Seth to be engaging, insightul, charming, witty, gentle, real, and quite humble. Well worth the price of admission.

If you weren't able to make it, or if you didn't take notes, this Twitter stream will probably do the job: #SethGodinMPLS.

By the way, here is what Seth had to say about the Minneapolis airport just today: Don't forget about color.

Finally, here are links to some of my prior posts relating to Seth Godin, in case you missed them:

1. Seth Godin on Subtlety: The Trademark Perspective
2. More Godin on Trademark? The Sequel
3. Seth Godin on Trademark?
4. Just Verb It? A Legal Perspective on Using Brands as Verbs: Part I
5. Dr. No and the Parade of Horribles (DuetsBlog inaugural post).

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Last month I came across this enormous, larger than life, banner advertisement hanging from the exterior of a casino on our way to the backwoods of Wisconsin.

Of course, this promotional piece took me back to my early childhood and called to mind my long lost enormous collection of Matchbox brand Hot Wheels toy cars and racetrack, but it appears there is no connection with the miniature toy vehicle maker -- the winning prize was not a toy replica, but a genuine 2011 Ford Mustang.

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Welcome to another edition of AlphaWatch (the next one in our queue), where we explore the reach of single-letter trademarks, this time focusing on the letter Q and the single-letter branding cues it might suggest to consumers:

Are you able to name the un-truncated version of this single-letter mark and brand?

My daughter could. The answer is below the jump.

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Years ago I recall hearing a veteran trademark lawyer warn intellectual property continuing legal education attendees, "When your toolbox only has a hammer in it, everything in your world starts to look like a nail."

Fair enough. It's time for all of us to revisit the contents of our professional toolbox.

Last week, following the firestorm of criticism surrounding Best Buy's cease and desist letter to a Catholic priest in Wisconsin, Dan provided some balanced and helpful Thoughts on the God Squad Matter, ending his post by indicating an interest in "hearing the thoughts of others on the question of how best to approach a potentially sensitive enforcement situation like this."

In further support of my admittedly Monday morning quarterback efforts and Dan's suggestion that Best Buy probably was better off picking up the phone on this one, I offer legal and PR types one of Matthew Broderick's most memorable and applicable lines from Ferris Bueller's Day Off: "Ringy dingy":

Yes, the telephone (not the shower-head) definitely needs to be one of the tools in any trademark lawyer's toolbox, especially when it comes to delicate enforcement efforts like the one Best Buy faced with Father Luke Strand's use of a God Squad logo that appeared to be inspired by Best Buy's Geek Squad logo.

It is always important to keep in mind the ultimate goal of the particular enforcement effort, and, in many cases, a successful enforcement effort is when the trademark owner convinces another to stop doing what the brand owner finds to be objectionable, with as little effort, hassle, and expense as possible. If this can be accomplished without sending a formal cease and desist letter, all the better.

Taking it a step further, after a phone call, why not consider a face-to-face meeting for the delicate kinds of enforcement efforts that have the legal department consulting with the PR folks before sending any cease and desist letters in the first place? For example, how might this have played out differently for Best Buy if someone from the PR or marketing department had reached out to and even met with Father Luke Strand to offer the placement of a couple of year's worth of Geek Squad ads in the weekly bulletin of the Holy Family Parish in Fon du Lac, Wisconsin, and in return, obtain a modification of the appearance of the God Squad logo on Father Strand's one vehicle?

In the end, Best Buy's explanation that sending the cease and desist letter "was a really difficult thing for us to do," implies that the PR and legal teams discussed the pros and cons before sending the demand letter, but it also begs the question of why a more creative and less routine approach to their trademark concern wasn't pursued, especially since Best Buy also has expressed that "we appreciate what Fr. Strand is trying to accomplish with his mission."

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Seth Godin's recent post entitled Subtlety, deconstructed, struck a chord with me, and should strike a chord with all trademark types and the brand owners they represent. Here is my favorite excerpt:

Subtle design and messaging challenge the user to make her own connections instead of spelling out every detail. Connections we make are more powerful than connections made for us. If Amazon and Zappos had been called "reallybigbookstore.com" and "tonsofshoes.com" it might have made some early investors happy, but they would have built little of value.

As you may recall, I have been tough on Seth Godin's trademark advice in the past, but I couldn't agree more with his view set forth above on naming and building powerful consumer connections and a resulting asset of significant value, by utilizing subtle design and messaging.

We have spoken and written about not "hitting the consumer over the head" in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.

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Someone who is in the business of repairing Volvo brand automobiles has the right to say so, in advertising, and elsewhere -- without obtaining advance permission from Volvo -- provided consumers aren't likely to understand the advertisement or communication to mean that the repair services and/or the business providing them is authorized by, affiliated with, or otherwise connected to the Swedish automobile manufacturer. So, as is often the case, the devil is in the details of the advertisement or communication and how it is likely to be perceived by consumers.

Indeed, over the years, there has been much litigation over the trademark fair use right and defense of independent repair shops, but suffice it to say, for our limited purposes here, using the Volvo logo on signage or in advertising would most likely cross the fair use line. (Interesting history of the Volvo logo, here). Doing so takes more than necessary to communicate the simple truth and probably implies authorized status. Of course, other activities that fall short of logo use may too, but activities simply and truthfully representing that one repairs Volvo automobiles, without more, should be fair use -- nominative fair use of a trademark, that is.

Over the last year and a half, we have written a lot about trademark fair use, both classic fair use and nominative fair use doctrines (Levi's Double Arcuate Design, Corvette Shape, Rapala-Google Billboard, Google Fortune Kit, 3M's Post-it Note, Wal-Mart Gift Cards, Match.com For Car Lovers, Cars.com/Twins Fans Billboard, Summit Beer/Twitter Billboard), nevertheless, it is probably worth repeating the necessary elements of a successful nominative fair use trademark defense here:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

So, given these key elements of a successful nominative fair use defense, imagine my surprise each time I hear the ad -- from a Relevant Radio sponsor on AM 1330 in Minneapolis -- refraining from use of the two syllable Volvo brand name in the ad; instead, using precious airtime to read this cumbersome mouthful: "We Repair Automobiles From Sweden Starting With The Letter V," or something similar to that effect. This may very well define the need for the first element of the defense in being not "readily identified without using the" Volvo trademark.

Given that, each time I hear it, I'm left wondering why? As a trademark type, I'll have to admit, it's a bit annoying, since this extra verbiage is totally unnecessary and not legally required. So, here are a few ideas on the possible reason for the mysterious and puzzling substitution for the Volvo brand name:

1. Engage (and hopefully not annoy some) consumers by communicating with a verbal puzzle;
2. Avoid a possible unfortunate enunciation and unintended meaning [warning, graphic Urban Dictionary definition, I just discovered] of the Volvo brand name; and/or
3. Serious misunderstanding of trademark nominative fair use principles.

Other possible explanations?

And, how many of you believe overzealous lawyers are responsible for this unnecessary verbiage?

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I'm not talking about brands that say one thing and do another. I'm not talking about brands that don't live up to their promise. I'm literally talking about brands with two faces. One face may be confident, complicated, technical, professional, and/or formal. Let's call him, Stephen. The other face might be friendly, simple, approachable, engaging, and/or informal -- perhaps, identified by a nickname or some other form of truncation. Meet Steve.

A couple of months ago I blogged about the clear trend toward truncation and informality in branding (Coca-Cola and Coke, Gatorade and G, Bubblicious and B, Stride and S, Federal Express and Fedex, Radio Shack and The Shack, Pizza Hut and The Hut, Vanderbilt and Vandy, Villanova and Nova), with at least one exception being General Motors, ahem, GM and its apparent interest in bucking that trend by moving away from the less formal two-syllable Chevy name and brand in favor of the more formal three-syllable Chevrolet name and brand.

Similarly, McDonalds' current billboard ad campaign confirms that the fast food giant prefers formality, i.e., Joseph over Joe, at least when it comes to selling its premium roast coffee in competition with the likes of Starbucks and Caribou Coffee:

And, while I can't specifically recall the name of the advertiser and educational institution, moving in a similar direction, I do recall a recent billboard ad campaign in the Twin Cities metro area, where the college or university in question seemed to suggest that an entering student named Kate will acquire the tools to transform herself into Katherine upon graduation. So, I guess that's an improvement and worth the investment of time and money?

Meanwhile, Charles Schwab is now a.k.a Chuck:

Just wondering, had Charles Schwab started business as Chuck Schwab, would the financial giant be what it is today? Seems to me, at least in the financial services sector, starting formal and moving informal is an easier branding path than traveling in the opposite direction.

As I recall, and on a somewhat related note, earlier this year, Guest Blogger Anthony Shore of Operative Words, wrote about the naming pendulum swinging away from arbitrary names and back toward brand names having an honest, straightforward, and even humble quality, in Truth is Stronger Than Fiction. Might those principles be at work here too?

In the end, I suppose that brands, like people, may exhibit either or both faces, formal and informal, depending on their surroundings and the circumstances they encounter at any given point in time. It seems to me, they are not necessarily mutually exclusive faces, as evidenced by the fact that nearly all of the branding truncation examples above did not completely replace the more formal brand name from use, they simply introduced a fresh new second face of the brand. 

My guess, as a trademark type, is that the less formal face of a brand creates an opportunity for creating a stronger emotional connection with consumers, but I'm happy to be corrected by someone who thinks about such things for a living.

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We thought we had arrived when DuetsBlog made a listing of the Top 100 Branding Blogs, and it also was kind of nice when the DuetsBlog mark became federally registered, but now it appears we have reached yet another level of notoriety, appreciation, and respect altogether, as DuetsBlog is now receiving the most thoughtful of email solicitations all the way from Hong Kong to protect our apparently and admittedly famous DuetsBlog trademark from "vicious domain name grabbing":

Dear Manager,

 

We are a professional intellectual property rights consultant organization, mainly deal with the global domain name registration and internet intellectual property rights protection.

 

On August. 2th, 2010, we formally received an application from Hongyue International Investment Co., Ltd, They want to apply for registering the following domain names and Internet keyword: 

 

Domain Name:

 

 duetsblog.net
 duetsblog.cn
 duetsblog.asia
 duetsblog.hk  
 duetsblog.com.hk  
 duetsblog.jp 
 duetsblog.tw

 

Internet Keyword :duetsblog

 

During our preliminary investigation, we found that these domain names' keyword is fully identical with your trademark. Therefore, we need to confirm with you, whether you consigned hongyue International Investment Co., Ltd to register these domain names with us or not? Or, is hongyue International Investment Co., Ltd your business partner or distributor?  If you have no relationship with this company, we assume that they have other purposes to obtain these domain names.

 

Currently, we have already suspended this company's application temporarily due to the seriousness of this isuue. In order to avoid the vicious domain name grabbing,  please let the relevant person make a confirmation with me via telephone or email as soon as possible. Thank you for your support to our work!

 

Best Regards

 

Asia Domain Name Registration Limited, 

Units 20/F, Far East Consortium Bldg.,
121 Des Voeux Road, Central, Hong Kong

 

Vivian 

Tel:+852-6517 0670
Fax:+852-3069 6940
Email: admin@login-idc.hk
http://www.world-wtc.cn

Well, thanks for thinking of us, but no thanks, Vivian, we're actually running for the hills at the moment, and just so you know, when clients are interested in registering domains in Asia, you don't even make the short list.

Peeking behind the curtain, according to DomainTools, "West Group" owns the world-wtc.cn domain, so, we can all breathe a sigh of relief, just in case you're wondering, right?

No, this is the West Group that most of us in the legal field know well, and the one that emerges as the top Google hit when using "West Group" as a search keyword. Definately no relation, but perhaps a cause of action.

This kind of thing has been going on for a while, we're just one of the latest targets. Bloptimization previously wrote about the Asian Domain Name Registration Limited scam, and Rumplepup has written about Chinese Domain Name Frauds too.

What is your experience with these kinds of unsolicited email communications?

Do you respond or simply ignore them?

When we don't blog about them, we do the latter.

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