Branding in Pop Culture: How Brands Avoid Negative Associations

by David Mitchel, Vice President of Marketing at Norton Mitchel Marketing

Branding is an intricate and complicated process. Every aspect of the marketing mix must be handled with care. Brand managers watch their brands in the same manner that most parents care for a newborn child. However, there is an element of marketing communications that brand management teams are unable to directly control: pop culture references about the brands in what appear to be non product placement contexts. These pop culture references can come from both old and new media. They are often found in music, and frequently occur in the hip hop genre. In recent years, brands have been prominent parts of popular YouTube videos. As social media evolves, it has the potential to present new threats for brands. With regard to pop culture references, it is a challenging minefield that brands must negotiate carefully in order to prevent them from detracting from marketing strategy.

In 2003, hip hop artist 50 Cent became a huge sensation with the album “Get Rich or Die Tryin’”. One of the many hit songs from that album was “In Da Club”. Near the beginning of the song, the lyric “we gon’ sip Bacardi like it’s your birthday” appears. This is not the only time that the Bacardi brand has been mentioned in song lyrics, but it is certainly one of the more prominent references. In its advertising over the years, Bacardi has crafted an image of being a fun brand, as their ads often feature a party scene. This may have inspired 50 Cent to write the lyric in the way that he did. In the late 1990s and early 2000s, Bacardi featured a “Bacardi By Night” print advertising campaign. These ads clearly targeted individuals with serious jobs and emphasized that Bacardi was a part of their work-life balance.   Additionally, Bacardi has also used their long standing and rich history as a selling proposition in advertising. Bacardi’s association with fun and partying may have attracted the hip hop element, as extravagant partying is a common theme of hip hop imagery. However, this association is tenuous at best and does not appear to be widely perceived. Bacardi has strongly withstood unsolicited pop culture references and its well refined marketing communication messages have helped to ensure that they remain the world’s largest spirits brand.

Heineken is another alcohol brand that has received an unsolicited pop culture reference. In 2007, a YouTube video entitled “My New Haircut” (Warning: Contains Adult Language) was a tremendous sensation. One could surmise that the success of the video may have been an inspiration for MTV’s “Jersey Shore”. In this video, a stereotypical New York/New Jersey young male in his 20s is shown in a variety of situations. He brags about his lifestyle, how awesome he is and professes his love for alcohol, particularly Heinekens and Jagerbombs. The Heineken brand is mentioned overtly twice in this video and is shown in the background for a significant portion of the video. The product placement in this video is the antithesis of the image that Heineken attempts to convey in its advertising. It would not desire to be associated with out-of-control, crass youths such as the one portrayed in “My New Haircut”. Through its marketing communications, Heineken wishes to be perceived as a brand for those with a greater degree of class and sophistication (as seen here, here, here & here).

Although many of the ads are aimed at different global markets, they are tied together by the theme of Heineken being an upscale brand for the discerning palette. It is clear that Heineken has disassociated itself from the type of consumer portrayed in “My New Haircut”, a strong strategic move given its history and positioning in the beer market.

Alcohol isn’t the only product category that is referred to in pop culture. In 2004, hip hop artist Juvenile scored a huge hit with the song “Slow Motion”. Juvenile makes a reference to Victoria’s Secret with the lyric, “I like how that Victoria Secret sit in that (rear end)”. In this situation, Victoria’s Secret could not take the same approach as Heineken and completely disassociate the brand from the reference. Victoria’s Secret has long been known as a lingerie brand that accentuates the sensual aspects of a woman’s figure. As a result, the brand positioning was aligned with the meaning of the lyric. This pop culture reference was utterly inconsequential for the brand and Victoria’s Secret never clearly addressed it. It continues to have the same positioning in the market and charges a price premium for this positioning as compared to underwear brands like Hanes and Playtex.

Brands in the upper end of the pricing spectrum are regularly mentioned in hip hop. Luxury brand references are as ubiquitous as inexpensive beer brands at frat parties. Gucci and Prada are common targets. In general, luxury brands try to distance themselves from hip hop culture for fear of damaging brand equity. Luxury brands will never use marketing communications messages to appeal to hip hop artists and their ardent community of followers. In fact, Burberry once refused to let rapper Ja Rule wear any of their clothing products for an Esquire magazine photo shoot.

All of these brands all have to deal with these references in one way or another, as pop culture references can influence how these brands are perceived by their target markets. Brand managers at each of these brands were able to successfully steer their brands away from any potential negative repercussions. An approach of distancing the brand’s communication messages from the pop culture reference and focusing on advertising to strengthen the brand’s positioning has repeatedly proven to be the correct strategic approach.

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The D-Word: What Ever You Do, Don't "Describe" Your Brand!

Frequently brand owners find themselves in the position of wanting or needing to explain the thinking behind their name, mark, and/or brand. Sometimes the explanations appear publicly on product packaging, websites, catalogs, brochures, advertising, and frequently in press releases, or perhaps in statements to reporters, especially when trademark litigation concerning the brand is involved. Such explanations about the brand's meaning also can be found in consultant's naming briefs that are easily discovered during litigation, and, if the brand story is told there in a way that "describes" instead of "suggests," the D-word may be used against a brand owner during trademark litigation to severely weaken if not invalidate the underlying trademark. 

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning. For a rather witty account of Firefly Digital's trademark fight with Google, see Ron Coleman's Gadget Goes Gonzo post from a few days ago.

Engaging in a trademark battle with Google is tough enough, but Firefly Digital certainly didn't help itself by the following explanation of the meaning behind its claimed GADGET and WEBSITE GADGET trademarks:

“They embody our passion, our vision and our values,” Spears said. “They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.”

Putting aside what Nancy Friedman might call another misguided use of the meaningless P-word, for Firefly Digital to utter the D-word and admit that its trademarks "are descriptive of our products on many levels," is an admission unlikely to go unnoticed by Google and likely to haunt Firefly Digital for some time.

The problem with "describing" the meaning behind a brand name is that it undermines a claim of inherent distinctiveness and puts the brand owner in the position of having to prove distinctiveness. It also complicates the issue of priority since trademark rights aren't acquired upon first use with merely descriptive marks, as they are with those types of marks falling on the suggestive side of the line along the important Spectrum of Distinctiveness.

This common marketing pitfall is reminiscent of another I previously blogged about: Staying on the Right Side of the Line: Suggestive v. Descriptive.

So, what ever you do, don't "describe" the brand and what it means, instead, explain and weave stories around all that it "suggests" or might convey through the exercise of one's imagination.

What a Croc!

It's not every day you get a chance to use that phrase in a headline. But, what may become known as the "The Cayman Kerfuffle", presents the perfect opportunity.

Would a reasonable person find these confusingly similar?

         

 

$51,000 Blue Cayman                                                      $30 Blue Cayman

Let's see, one is a sleek, pricey, well-engineered, high performance sports car that is available in a variety of colors, the other is a stubby, inexpensive, molded plastic clog-like sandal that is also available in a variety of colors. Hmmm.

Even though the Porsche vs. Crocs dust up was discussed widely in November 2009, the seeming inanity still grinds on my nerves. So I can't resist another airing.

If you missed the coverage, here is the kerfuffle catalyst from the Crocs, Inc. Form 10-Q:

"On May 11, 2009, Crocs Europe B.V. received a letter from Dr. Ing. H.c.F. Porsche AG ("Porsche") claiming that the Company's use of the "Cayman" shoe model designator infringes upon their Community Trademark Registration of the mark "CAYMAN" in class 25. Porsche is requesting that Crocs Europe B.V. immediately cease and desist use of the Cayman mark and pay Porsche's attorney's fees in conjunction with the issuance of the notice letter. On July 30, 2009 the Company was served with notice of an injunction against Crocs Europe BV's use of the Cayman mark in Germany. The Company intends to vigorously defend itself against these claims."

Granted, Porsche has a registered trademark for "Cayman" in several international classes including 025, which does encompass footwear, and sells a line of Porsche Design shoes, although, apparently, not under the Cayman label.

I might understand Porsche being embarrassed by the possible association with the popular foam resin clogs spotted on the feet of celeb-kinder in Hollywood, South Beach, and other trendy locales. But infringement? Seriously? Shouldn't Porsche be more embarrassed for making this an issue? Likelihood of confusion is doubtful, unless Porsche dramatically changes its fashion strategy.

Realistically, few people will confuse Crocs Cayman clogs for a Porsche Cayman sports car or one of their designer driving shoes. Fewer still will think they originate from Porsche. Should they, a quick check of the Crocs logo on the shoe itself would correct any incertitude.

Several thoughts arise: Since the Crocs Cayman line was available commercially as early as 2004, five years before the registration issue date of April 2009 for Porsche, does Crocs have prior rights? Should International Truck Intellectual Property Company, owner of the Cayman trademark in International Class 012, which includes sports cars, seek redress from Porsche for infringement? Should Lacoste file an amicus brief since they have an oblique interest? After all, a Cayman is a type of alligator, and should Porsche prevail -- I don't see how, but lets pretend – based on their interpretation of infringement and confusion, the Lacoste logo, shown below, would be a likely next target.

Stay with me on this. It is probable that people driving Porsche Caymans could also be wearing Lacoste clothing, so confusion of origin is surely immanent. Hey, is that a Cayman polo shirt you're wearing?

On the subject of confusion, perhaps the Cayman Islands should pursue Porsche and Crocs for infringement. It is likely to find both products on the Islands, even at the same time and place, and wouldn't the Cayman Islands have prior rights, if we follow the labyrinthic logic in this argument? Toss in people wearing Lacoste fashions, and since most can't tell a Cayman from a run of the pond alligator, it could start a whole reptilian-brand confusion-fest and who knows where that would lead!

This could become a Trademark Infringement Smackdown with, say, Crocodile Dundee headlining. Although, come to think of it, this has certain "The Real Housewives of Intellectual Property" (surely an oxymoron) qualities to it and could spawn a new reality series on Bravo. The notion is no more ridiculous than the Porsche accusation -- and indubitably more entertaining. 

OK, my tongue is tired of being in my cheek.

The old maxim "just because you can, doesn't mean you should" seems apropos. The ill will engendered by overly aggressive enforcement, where likelihood of harm is not apparent, is damaging to a brand, even one as famous and resilient as Porsche. It will likely appear to consumers as needless bullying. That perception can cost far more to rectify than any possible impact of the perceived infringement.

Who's the likely winner in this spat? Certainly not Porsche. Crocs stands to gain from the publicity generated by this action. It is not exactly the way a company wants to gain visibility, but as a creative guy managing brands, I'd take what I get and spin it into branding silk – at the expense of Porsche, of course.

Randall Hull, The Br@nd Ranch®

Accenture's New Ad Campaign: Elephants, Frogs, & Tiger, Oh My!

Earlier this month, I noted Accenture's words in publicly ending its relationship with Tiger Woods, having announced around December 13, 2009, that it would "immediately transition" to a new ad campaign, and then compared those words to the company's actions in continuing to run the Tiger Woods airport ads even three weeks after their termination announcement. Right after Accenture's announcement, Going Concern Blog asked "Who Will Replace Tiger Woods at Accenture?" They offered some possibilities, including Phil Mickelson, who is already tied to KPMG.

Accenture's marketing team apparently spent some quality time at the zoo to come up with Tiger's replacements, yes, that's plural. A few days ago, in the Minneapolis airport, I saw Accenture's answer to Going Concern's question: Animals. Concourse G was sporting some brand new Accenture ads, one featuring an elephant balancing on a surfboard, with the tagline "Who says you can't be big and nimble?," and another featuring some frogs hopping over one another with the tagline "Play quantum leapfrog." By the way, how nimble or quantum-oriented is a company that needs at least four weeks to have their words and actions begin to merge?

Putting aside the timing for a moment, you might ask, why animals? Clearly animal mascots and endorsers are a much safer option than human beings, for a variety of obvious reasons. Indeed, one Twitter user notes that using an elephant is "no risk." By the way, someone ought to remind Daniel Snyder of this if he ever has the wisdom to re-brand the Washington Redskins professional football team, as I have previously suggested.

Actually, the largest surprise during my experience in Concourse G, a few days ago, was seeing a lingering Accenture ad still featuring Tiger, now more than a month after Accenture's promise of an immediate transition. The Tiger ad in question was of the thinker/doer variety, so a curious one to keep in circulation, as it appears Tiger is doing much more thinking than doing at the moment.

Given how long it has taken Accenture to "immediately transition" to new Tiger-free ads, given that it hasn't yet successfully removed all Tiger ads from circulation, and given the damage it is believed that Tiger has caused to the Accenture brand, I'm left wondering whether companies plan for these kinds of endorsement-gone-wild contingencies as part of their crisis management planning. It would appear Accenture did not and was caught flat-footed, but who would have guessed, right? Nevertheless, Accenture's unfortunate experience might be a good lesson to all those companies who closely link their reputation with endorsers or mascots outside of the animal kingdom. Perhaps having some pre-approved ads ready for emergencies would permit a nimbler and more quantum-like response when things go wrong.

With respect to the choice of animals, they certainly have served others well. For example, a clumsy white duck works for Aflac, and a little green reptile, seems to work pretty well for GEICO. To the extent either of those little guys offend, disgust, or embarrass anyone, at least Aflac and GEICO are in control of their words and actions, so any resulting damage is more easily considered a self-inflicted wound.

Irreparable Harm to the Accenture Brand?

When brands and trademarks are at risk of being infringed, swift and immediate protective action is required, given the inherently reputational nature of the resulting damage. That is why the law typically presumes the necessary "irreparable damage" when issuing immediate injunctive relief, once a plaintiff is able to show, among other things, that it is likely to win its trademark infringement claim. Without "irreparable harm or damage" there can be no court's injunction because the simple payment of money will right the wrong.

But, what about outside the context of trademark infringement and court ordered injunctions, in the world of contracts, for example, when a sponsor no longer wants to be associated with a celebrity endorser that has become damaging to the sponsor's reputation? Is the same degree of immediacy required to erase all public signs of the relationship? Perhaps it depends on whether the damage rises to the level of irreparable damage or harm. If so, then perhaps no amount of money will be or should be spared to pull the ads immediately and stop the reputational bleeding.

One might ask how this dynamic has played out between Accenture and Tiger Woods.

After the New Year, and about three weeks after Accenture announced it had ended its relationship with Tiger Woods, I noticed a multitude of Accenture ads in three different airports (Minneapolis, Dallas, and Phoenix), all featuring guess who? Tiger.

My first thought was genuine surprise to see them, given it had been three weeks, and further given that Accenture was so promptly out of the gate as the first sponsor to publicly sever its ties with Tiger. Indeed, two weeks after Tiger's reputational scandal broke in the news, Accenture announced Tiger "is no longer the right representative" for Accenture's advertising, and it was reported the company would "immediately transition" to a new advertising campaign. Some experts even cautioned that Accenture's Tiger billboards and airport advertising "need to be replaced quickly" for obvious reasons, as they now "damage" Accenture's brand and reputation.

So, how damaging to the Accenture brand is the lingering association with Tiger and the smirks that seem to follow given the now rather awkward branding messages that Accenture had adopted as part of the Tiger relationship? If you read Accenture's words from December 13, how quickly they were announced, and how others have praised Accenture for taking this swift and necessary action, the damage sounds quite serious, perhaps even irreparable, but isn't talk cheap? Or at least, more inexpensive than actions? 

For example, I'm certain the cost of scrubbing a website and purging corporate headquarters of any sign that Accenture still knows "what it takes to be a tiger" is far less than the cost of purging all airports of any trace of the Accenture/Tiger endorsement arrangement. In any event, it would have been more than mildly interesting to be part of the dialogue that must have quantified the cost of implementing the directive for an "immediate" transition from Tiger, and the alternative quantifications of slower transition plans, and the one that the company eventually settled upon.

Do you agree that the greater the damage to Accenture, the more "immediate" the transition would have been, i.e., days, not weeks or months?

As it turns out, the Accenture website apparently hasn't been completely scrubbed either, as it still has a copy of the October 3, 2003 press release announcing the original sponsorship deal, here. Something tells me, however, it may have a short shelf-life, so I have extracted a few paragraphs that highlight Accenture's current dilemma:

NEW YORK–Oct 3, 2003—Accenture (NYSE: ACN) announced today that it has entered into an agreement with Tiger Woods to represent the company as a symbol of its new High Performance Business strategy.

                                                               *  *  *  *  *

“Tiger Woods' strength, mastery, discipline and relentless focus on winning are universally recognized qualities that mirror the characteristics of a high-performance business, making him the ideal representative for our market positioning,“ said Joe W. Forehand, Accenture chairman and CEO. “A high-performance business is one that optimizes its resources to achieve its objectives and consistently outperforms competitors. Tiger is the best at his game, and we want our clients to be the best at theirs.“

“Accenture understands that the ability to adapt to changing conditions and to innovate are key to consistent high performance in business as well as on the golf course,“ said Tiger Woods. “The Accenture campaign's focus on turning in your best performance and delivering winning results reflects my personal values and made teaming with Accenture in my first business-to-business relationship an easy decision.“

                                                              *  *  *  *  *

“The Accenture brand is less than three-years old, yet it is already ranked among the 100 most valuable brands in the world,“ said James E. Murphy, global managing director, Marketing & Communications at Accenture. “It's appropriate that a brand of Accenture's stature should be associated with one of the leading figures in sports and popular culture. Tiger Woods is the epitome of delivering high performance and he is relevant, respected and admired by the top executives to whom the campaign is targeted.“

We'll keep our eyes open for when the Accenture/Tiger airport ads finally disappear, but please let us know what you're seeing too.

A Trademark Touch: Owning and Protecting Touchmarks

The October/November issue of Brand Packaging magazine just hit the streets and I'm deeply honored to say that my piece entitled "A Trademark Touch: Strategies for Owning and Protecting Touchmarks" is this issue's "cover story" (minus the skull and crossbones).

The digital version can be read here. I hope you find it eye-opening in a tactile kind of way.

By the way, I'd love some feedback on it.

What is your favorite touchmark anyway?

Kleenex® Not Wanting to Blow It: Some Steps to Avoid Trademark Genericide

This sponsored banner ad is currently appearing in AdAge's Daily News on-line newsletter:

How many boxes of tissue do you suppose this ad is responsible for selling?

If the answer is none, that is probably fine with Kimberly-Clark since the return on investment for this ad is measured quite differently, I'm sure, given how the frequently misused Kleenex® brand is currently enjoying the lofty status as one of The 100 Best Global Brands. No doubt, Kimberly-Clark would like to keep not only this annointed status, but even more basically, it would like to keep the status as a brand and protectable trademark intact too.

In all likelihood, trademark types are behind this kind of advertisement, or perhaps more properly termed, "public service announcement," and they also are probably behind the "brand tissue" phrase, closely following each use of the brand name Kleenex®. Both measures help emphasize to consumers that Kleenex® is a brand of tissue coming from a single unique source, not a type or category of tissue coming from a variety of different competing sources.

These kinds of precautions are important educational steps a trademark owner can take when a meaningful portion of the public may misuse the brand name as a generic term. They are designed to shape the public's proper use of the trademark, and, hopefully, prevent the trademark owner's ultimate fear: Genericide. Indeed, we previously noted Kimberly-Clark's success to date on this very subject:

[W]hen the public misuses a famous trademark as a generic term and the brand owner risks losing exclusive rights through changes in the common meaning of the term. Avoiding the risk of this happening is something Kimberly-Clark® knows more than a little about, I suspect. No doubt, the legal team at Kimberly-Clark® has done an impressive job of preventing the KLEENEX® brand from following former brands like ESCALATOR, TRAMPOLINE, and ZIPPER, to name a few, into the unpleasant graveyard of genericide.

In the end, however, trademark owner's efforts aside, the public will decide the issue of genericide, as we have discussed before:

Unlike the kind of trademark abandonment that automatically results from the single act of non-use of a trademark coupled with no intention at that time to resume use of the trademark, the kind of trademark abandonment that is also known as genericide, in contrast, results from a gradual change in the meaning of a trademark or brand to an unprotectable generic term. A change that shifts the meaning -- understood by a majority of the relevant consuming public -- from identifying, distinguishing and indicating a single source for a particular product or service to a designation that connotes no single source at all, but instead, an entire product or service category with multiple unrelated sources.

So long as the "majority of the relevant consuming public" (more than half) continue to understand Kleenex® as a brand, the exclusive trademark rights will remain intact.

If you read AdAge, congratulations, apparently we are part of the "relevant consuming public," or perhaps you are viewed as someone who has influence on how the "relevant consuming public" perceives the Kleenex® brand.

I hope I did my part here, now it's your turn.

Is Twitter® "Following" Kool-Aid®, Mickey Mouse®, and Spam®?

twitterrificDownload-Spam Logo-

What does Twitter have in common with Kool-Aid, Mickey Mouse, and Spam? Maybe nothing, at least yet, but I predict that it will soon, unless Twitter retains some talented PR help in a hurry. Why?

The Kool-Aid, Mickey Mouse, and Spam brands all have spawned secondary or alternate and negative non-trademark meanings that have become part of the English language, meanings in each case that lack positive brand associations, to say the least. If Twitter is not careful it will find itself "following" the likes of Kool-Aid, Mickey Mouse, and Spam, and be in the similar undesirable position of tolerating language changes that distract from their brands and favorable brand messages, to be left watching others make generic use of their brand names to communicate a variety of ideas and meanings that are neither flattering nor brand building.

Kool-Aid "is a brand of artificially-flavored drink mix owned by the Kraft Foods Company," coined by inventor Edwin Perkins as "Kool-Ade" back in 1927. After being correctly or incorrectly associated with the 1978 Jim Jones cult-driven mass suicide known as the Jonestown Massacre, Kool-Aid has spawned an additional and negative non-trademark meaning:

"The saying 'Do not drink the Kool-Aid' now commonly refers to the Jonestown tragedy, meaning 'Do not trust any group you find to be a little on the kooky side,' or 'Whatever they tell you, do not believe it too strongly.' Fox News commentator Bill O'Reilly is famous for using the term in this manner."

"Having 'drunk the Kool-Aid' also refers to being a strong or fervent believer in a particular philosophy or mission — wholeheartedly or blindly believing in its virtues." So, based on these alternate and negative meanings, blogs like www.dontdrinkthekoolaidblog.com exist. I suspect that these non-trademark meanings of Kool-Aid have frustrated more than a few Kraft brand managers, marketing types, and lawyers over the years.

Mickey Mouse, the creation of Walt Disney in 1928, has become a valuable brand and icon of The Walt Disney Company over the last several decades. However, there are also pejorative uses of the brand name that Disney apparently has learned to tolerate: "'Mickey Mouse' is a slang expression meaning small-time, amateurish or trivial. In the UK and Ireland, it also means poor quality or counterfeit." Mickey Mouse is also defined as informally meaning "useless, insignificant, or worthless," and "trivial or petty."

Spam is a well-known, probably famous, brand of canned and processed meat, owned by Minnesota-based Hormel Foods. It was the butt of jokes in a popular Monty Python sketch, first televised in 1970, and as a result, years later the Spam brand name (coined in 1937) acquired an alternate and negative meaning within the world of electronic communications, namely, junk, undesired, or unsolicited e-mail. Something most people with a computer and e-mail account despise. Probably the only types who don't despise this kind of spam are those who flood the world wide web with it and perhaps those who build businesses and software products to combat the serious problem of spam e-mail. This alternate and negative meaning of Spam is so prevalent that software manufacturers have developed their own brands containing the once single-meaning Spam brand name. For example, SPAMfighter is federally registered for "computer software for eliminating unsolicited commercial electronic mail."

Now, back to Twitter, and to what some call "Drinking the Twitter Kool-Aid."

A possible connection between these four brands (Twitter, Kool-Aid, Mickey Mouse, and Spam) came to me after watching a Kevin Spacey discussion on The Late Show with David Letterman, where Dave and the Academy Award-winning actor discussed Twitter for over four minutes, in which "K-Spa" starts the discussion by admitting that his "business partner" made him "drink the Kool-Aid," that is, Twitter Kool-Aid, implying that the use of Twitter is kooky, or at least promoted by kooks. After more than four minutes of discussing Twitter, and despite touting his "over 800,000 followers" on Twitter, a hilarious Spacey appeared unable to make a compelling case for the beneficial use of Twitter, leaving Letterman to end the conversation by stating, "You know what it reminds me of, oh yeah, a waste of time." Apparently, Dave had harsher words for Twitter back on April 24 when he referred to it as "stupid crap." Others have dubbed it "permission-based stalking."

It appears that Letterman is not the first to have come to the same conclusion about Twitter being "a waste of time." Others, including our own Dan Kelly, certainly have questioned time spent using Twitter. Indeed, a search on Google for "Twitter waste of time" is so popular that it appears as a ready-made search phrase option on Google after typing the character string "Twitter wa" -- and this search query actually yields 30,700,000 hits. The number one hit on Google using this search query agrees that it is, "unless you use it in a way that isn't." Given this growing negative dialogue, one has to wonder, will the public embrace a new meaning of Twitter, basically, a single word replacement for the clunkier three-word phrase "waste of time"? Instead of frittering one's time away, might you be accused of "twittering" your time away, even if you're no where near a computer, handheld device, or cellphone? Will these alternate and negative "time wasting" meanings begin to appear in dictionaries, opening the floodgates to additional undesired uses that may be difficult or impossible to control?

I submit that there are plenty of uses that the law is simply not prepared to stop. Knowing which are which is, of course, important. In addition, this is where the close collaboration of marketers, trademark types, and perhaps most importantly, PR gurus is necessary and critical, to help brand managers prevent their brands from spawning alternate and negative meanings that can distract from or undermine favorable brand development and management.

Battle of the Nerds? Best Buy's Geek Squad® on Trademark Patrol

Mark Image   

Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).

For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie's cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!

My early and initial observations of the Geek Squad trademark Complaint are below the jump.

First, one question worth asking is whether it is reasonable for these individual defendants to anticipate being sued in Minnesota for alleged computer repair activities outside of Minnesota. It is not clear to me from the Complaint whether either defendant actually operated or conducted business in Minnesota. Will there be an effort to dismiss the case by challenging personal jurisdiction? Basically, this is a popular legal argument and defense that the courts in Minnesota don't have the authority to hear a case involving the defendants because they don't have the necessary "minimum contacts" with Minnesota for the case to go forward there. 

Second, it is worth noting that Best Buy selectively asserted two Geek Squad service mark registrations (U.S. Reg. Nos. 1,943,643 and 2,744,658) -- those that are over five years old and also have achieved incontestable status. Given that the term "geek" has a recognized slang meaning with respect to the field of computers ("a computer expert or enthusiast (a term of pride as self-reference, but often considered offensive when used by outsiders."), it is curious that the Trademark Office has not employed this definition in requiring a disclaimer of the descriptive term "geek" in connection with computer repair services. By selectively pleading only incontestable registrations, Best Buy is able to foreclose a legal defense on the ground that the registered mark is not distinctive and merely descriptive, relying on the U.S. Supreme Court's decision in PARK'N FLY, INC. v. DOLLAR PARK AND FLY, INC., 469 U.S. 189 (1985).

Third, given that the recognized meaning of "geek" has direct application to the services provided under the Geek Squad mark, one has to assume that the scope of rights or the strength of the Geek Squad mark will be put at issue (see my previous post concerning trademark strength here), if this case actually is defended. As you might imagine, given the dictionary meaning, there are more than a few other "geeks" out there already providing or planning to provide the same or similar services and goods, all or nearly all post-dating the 1994 first use date for Best Buy's Geek Squad mark. For example: here (Geek I.T. Just Geek It), here (Geek), here (Geek by Phone), here (Cheap Geek), here (Geek Choice), here (GeekSugar), here (GeekBucks), here (Geek in Pink), here (A+ Computer Geek), here (Geek 911), here (Free Geek), here (Geek.com), here (TechnoGeek), here (GeekTeks), here (GeekSurance), here (Seek a Geek), here (GeekDesk), here (GeekOfficecalls), here (Geek City), here (Beep-a-Geek), here (Ask the Geek), here (VipGeek), here (Geek on the Run), here (When a Tech Isn't Enough, Call a Geek!), here (Not Just Any Geek), here (Geeks! GetYourGeek.com), here (Dial a Geek), here (GeekFleet), here (Speak With a Geek), here (Geek Rescue), here (How-To Geek), here (Geek for Hire), here (Geek Ghost), here (Geek Call!), here (Geek in a Box), here (Don't Hire a Geek, Hire a Pro!), here (1-800-905-GEEK), here (GeekWerkz), here (Call a Tech Not a Geek), here (Click-A-Geek), here (ElectroGeek), here (1 800 GEEK HELP), here (Geek National), here (Where No Geek Has Gone Before), here (The Geek Goddess), here (Don't Call a Geek When You Can Call an Expert), here (Geekabytes), here (GeekOnline), here (Geek-Client Privilege), here (Why Call A Geek When You Can Call A Friend), here (GeekForce.Biz), here (Geek Boutique), here (Rent-A-Geek), here (Phone A Geek), here (The Geek Patrol), here (Geek Housecalls), here (Beep-A-Geek), and here (1 800 Be A Geek).

Seems safe to say, at this point in time, that the field of "geek" marks concerning computer products and services is more than a bit crowded, which would typically lead to a conclusion of diminished or narrower trademark strength (see my previous post on Twitter and Trademark Enforcement and Protection):

"A trademark owner's failure to take action against the unauthorized use of its trademark by third persons can result in an abandonment of the mark, but only if the unauthorized use is so widespread that the designation loses its significance as an indication of source or sponsorship. More typically, the fact of third-party use is relevant only to the 'strength' of the mark, and hence to its appropriate scope of protection." Restatement of the Law (Third) Unfair Competition 313 (1995).

It's not as though Best Buy has failed to take any steps to enforce the Geek Squad trademark, for example, it sued Geek Housecalls in 2004, and it opposed registration of Geek HousecallsSpeak With A Geek, and Geek Rescue, but those marks ended up becoming registered despite the oppositions. It also filed extensions of time to oppose 1-800 905 GEEK, Geek Choice, and Beep-A-Geek Computer Services, but it never actually filed oppositions, and those marks are also now federally registered by other parties. With respect to more successful efforts, Best Buy opposed registration of the mark The Geek Patrol, Rent a Geek, and the slogan "Comtech We Beat The Geeks," and each of those applications has been abandoned. Moreover, in 2007 Best Buy obtained a Consent Judgment against Geek Brigade, located in Missouri. However, all this just makes one wonder how Best Buy determines exactly which "geeks" to patrol?

Judging from Paragraph 3 of the Prayer for Relief in the present Complaint against Geek Patrol, Best Buy is asking the Court to enjoin any uses of "Geek" by the defendants: "[U]sing . . . materials . . . bearing the words 'Geek,' 'Geek Squad,' 'Geek Patrol,' 'Geek Squad Patrol,' and any other mark, word, or name confusingly similar to . . . GEEK SQUAD . . . ." Given the defined meaning of the term "geek" and the rather prolific landscape of third parties, the requested prohibition on "Geek" appears to overreach. Perhaps this lawsuit will provide Best Buy with an opportunity to clarify its trademark protection strategy and articulate a more appropriate scope of protection for the Geek Squad mark.

Last, a boilerplate phrase in Paragraph 7 of the Complaint against Geek Patrol caught my attention, since it is not needed in order to prevail, and it only appears to provide the defendants with an opportunity to probe some rather unfavorable press Best Buy has received for lawsuits involving alleged improper conduct of certain Geek Squad Agents: "Best Buy . . . through continuous and uninterrupted use of the GEEK SQUAD Marks, has earned a reputation for knowledgeable, courteous, and outstanding customer service, as well as quality products. This reputation, goodwill and name recognition have been derived in part, from its commitment to service, satisfaction, and quality." (emphasis added)

Only time will tell whether this case will play out to be a real "Battle of the Nerds" or leave all of us trademark dorks to watch VHS reruns of "Revenge of the Nerds" instead.

On Trademark Enforcement & Protection: Is Twitter on Target or Off the Mark?

Mark Image

Brand managers and marketers often wonder about the risks and consequences of not enforcing or protecting their trademarks from infringement. A shooting target formed by a series of concentric circles is the best graphic I have found to illustrate the legal answer to their frequent question.

Judging from the robust criticism Twitter has received about its lax or laissez-faire approach to trademark enforcement, the Twitter folks have never seen (or perhaps they have chosen to ignore) the shooting target graphic illustration. Distilling these criticisms to their essence, basically there are more than a few folks out there asking Twitter: "What are you doing?"

The irony of this is hard not to find amusing, given how Twitter explains its reason for existence this way: "Twitter is a service for friends, family, and co–workers to communicate and stay connected through the exchange of quick, frequent answers to one simple question: What are you doing?" For Twitter, only time will tell how "simple" the trademark enforcement "question" is for itself to answer.

Apparently the folks at Techdirt haven't seen the shooting target graphic illustration either. In defending Twitter's apparent "openness" in permitting others who are "simply building off the brand," Mike Masnik of Techdirt has argued:

"As people always like to point out, trademark law requires you to "protect" your mark to keep it from being declared generic, but that does not (as many assume) mean that you absolutely have to sue or threaten anyone who makes use of your mark. Especially in cases where it's clearly not making the brand generic, but simply building off of the brand, it can be a much smarter move to let it live on. People (often lawyers) seem to think that just because you can block a business for using a trademark, that it's a good business decision to do so."

Actually, there is more (or less) to risk or lose than Twitter being declared generic and part of the public domain for anyone (including direct competitors) to freely use without consequence. While it is true that genericide is the ultimate risk of a complete failure to stop infringements to the point where the word "twitter" no longer functions as a trademark to indicate source and is found to be abandoned, that highly dramatic and extreme result is not the only legal trademark concern; other more certain damage results along the way. So, not only does this viewpoint ignore the resulting confusion among consumers, and the relinquishing of a brand's goodwill to another without the ability to control reputation and image, it also ignores the certain and inevitable shrinking or narrowing of the scope of trademark rights even if those trademark rights aren't lost altogether. 

Over the years, I have found that using the "worst case scenario" -- trademark genericide -- is probably not the most effective way to help brand managers and marketers appreciate that consistently enforcing their trademark rights against infringing uses is not only a good legal strategy, but a sound business strategy too. When faced with what they perceive to be a "highly remote" risk of genericide, it is far too easy to say, "we'll take our chances," the benefits of permitting others to "build off the brand" are worth it and outweigh the risk of genericide, or we'll be "super rich" by then anyway. I suspect that those who are inclined to reach this conclusion do so because -- like the airline in-flight warnings about turning off electronic devices -- they don't believe the plane will go down if they "forget" to turn them off, or that genericide will occur, if they fail to police trademark infringers. For this reason, talking about more certain negatives makes sense. 

So, back to the shooting target graphic: It is important to appreciate that trademark rights are dynamic, they can grow in scope (get stronger) or shrink over time (get weaker). Let's say that the above target (including all of the circular bands or concentric circles) represents the initial scope of rights in the Twitter trademark. Let's also say that each of the bullet holes represents another's use that creates a likelihood of confusion -- an infringing use or infringement of the Twitter trademark. A bullet hole in the bulls-eye represents an easy infringement for Twitter to prove and stop, involving an identical trademark and identical and competing products or services. But, as the circular bands move further and further away from the bulls-eye, the uses falling into these bands have more and more differences to the Twitter trademark, perhaps the marks are more and more different, or the goods or services are more and more different, or both. So, if Twitter tolerates infringements in circular band 6, its trademark rights will be certain to shrink to now exclude circular band 6, and if Twitter next begins to tolerate infringements in circular band 7, its trademark rights will then shrink to exclude circular band 7, and so on, until the only infringing and stoppable uses are identical marks for directly competitive products or services.

Of course, most brand managers and marketers are looking for broader protection and stronger trademark rights than this, at some point during the life cycle of a brand. Indeed, it seems inevitable, as business grows around a brand, others begin to target that brand, attempt to ride its coattails, and eventually, brand managers and marketers will have strong feelings about stopping another's particular use. The problem is, a lax approach to trademark enforcement not only confuses the marketplace and gives others control over goodwill and reputation, it is certain to narrow the scope of enforceable trademark rights, in most cases well past where the brand owner would eventually like to draw the line. 

So, stay tuned, we'll eventually be able to see whether Twitter takes any legal action on its most recent "uncomfortable" feelings about some confusingly similar names that incorporate Twitter's trademarks.

Baby B'Gosh®: A Shrinking Outfit, Workforce, and Brand Too?

Tough times call for tough decisions. Brand managers know this as well as anyone, and they are certainly facing some very tough decisions during these challenging economic times.

Sometimes shrinking the workforce is considered to be in the best interest of the brand. For example, last week, Carter's, the parent company of OshKosh B'Gosh, announced that it would be trimming the workforce in order to improve the efficiency and profitability of the iconic -- and more than century old -- brand.

Brand managers also may be asked to re-evaluate their brand protection strategies in order to cut costs. Given a recent competing brand that appears to have gone unchallenged by OshKosh B'Gosh®, one has to wonder if there is a willingness to shrink the B'Gosh® brand in addition to the workforce.

Returning from a trip to Washington, D.C., for a pair of oral arguments at the Trademark Trial and Appeal Board (TTAB), I did some speed-shopping for my daughter at a neat little boutique in Bethesda, Maryland, called The Blue House (I highly recommend it). Without paying attention to brand at all, or even looking at the hangtag or label (okay, I had to catch a plane), I picked up a really cute outfit I thought she'd just love. I was actually right, this time. In fact, she is so taken by it and some other items sold under this brand online, she not very happy that I am writing this post right now. Oh well, duty calls.

Anyway, when I got home and unpacked the outfit I noticed the hangtag for the first time, and honestly, my first thought was, is this a modern rendition of the B'Gosh® brand? After a closer look, I began to wonder whether it is an extension or somehow related to the B'Gosh® brand? It wasn't until visiting the brand's website and conducting some searches on the Trademark Office database that I was able to satisfy myself, no apparent connection. In case you're wondering, no image of the outfit, but I did scan an image of the hangtag and it is viewable after the jump. 

Turns out that a company called Bee Posh, LLC, located in New York City, filed an application to register the above Bee Posh logo in June 2007, and a registration issued in July 2008.

Especially interesting is that back in 2006, a year after Carter's acquired the B'Gosh® brand, and a year before Bee Posh filed for registration of the above logo, OshKosh B'Gosh® successfully opposed registration of a different B*POSH for clothing. After the filing of this opposition, the application for B*POSH was voluntarily withdrawn, causing the TTAB to sustain the opposition and refuse registration.

Despite the phonetic identity with the previously and successfully opposed B*POSH mark, there is no indication in the Trademark Office database that OshKosh B'Gosh® ever challenged the Bee Posh mark. Why is that? It would appear this phonetically similar mark to B'Gosh® (with the only phonetic difference being a "p" for a "g" -- mirror images of each other --in white on a yellow background) slipped through the overalls or, perhaps, B'Gosh® has modified its brand enforcement strategy.

All this reminds me of a few thoughts for brand managers and their trademark counsel to keep in mind, especially during these more challenging times:

(1) Trademark rights in a brand are dynamic, they can shrink or grow over time, depending on whether newcomers' confusingly similar uses are stopped or ignored;

(2) Without smart and efficient brand enforcement strategies and priorities in place, when budgets shrink, so will the trademark rights supporting the brand;

(3) Putting the proverbial "head in the sand" is certain to lead to a shrinkage of rights over time; 

(4) The earlier the objection, the more likely a prompt and efficient resolution will result; and

(5) Tough times can be the best times for highly efficient brand enforcement efforts because enforcement targets may come to agree much more quickly that the dispute means far more to the brand owner than it ever could to the newcomer.

Of course, the key to success is adopting smart strategies and priorities that properly allocate and make the best use of precious resources.