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Tag Archives: Descriptiveness

PSL® Season Is Upon Us

Posted in Advertising, Branding

Exult, lovers of autumn and decorative gourds – the air is crisp and the leaves are changing. And, in the treasured annual tradition, this week marked the release of Starbucks’ Pumpkin Spice Latte – or PSL® as they may prefer to call it. In the spirit of the season, I sought to see if any zealous… Continue Reading

Amazon’s Latest Trademark Battle: A Race Against “Chime”

Posted in Infringement, Law Suits, Marketing, Technology, Trademarks

Last month, Amazon Web Services (“AWS”) announced a new application, Amazon Chime, for online meetings, including video and voice conferencing, chat, and screen sharing. Amazon Chime will compete against a crowd of other well-established products with similar services, such as GoToMeeting, Cisco WebEx, and Skype. Just two weeks after Amazon Chime was announced, on February 22, AWS was… Continue Reading

On Protecting “My Pillow” as Your Trademark: They Say, When You Make Your Bed, You Might Just End Up Sleeping in It

Posted in Advertising, Articles, Branding, Marketing, Trademarks, USPTO

We had some great questions from the audience during the Mastering U.S. Trademark Registration Practice seminar in Minneapolis a few weeks ago. During the session on genericness, someone asked about MyPillow, expressing amazement that it could be federally-registered. Having now seen the MyPillow television advertisement probably a dozen times since then, I’ve finally gotten around… Continue Reading

Easy Registration Refusal, See Park ‘N Fly

Posted in Articles, Branding, Infringement, Marketing, Trademarks, USPTO

Trademark types know all about Park ‘N Fly, whether they travel or not. That’s because it is more than a nearly fifty year old airport parking and travel service brand and federally-registered service mark, it is short-hand for a famous U.S. Supreme Court trademark case from 1985. In that decision, the Supreme Court recognized the… Continue Reading

RECOVERY from a Surprise Genericness Refusal?

Posted in Advertising, Almost Advice, Articles, Branding, Genericide, Infringement, Trademarks, USPTO

Reliant Beverage Co., makers of “Recovery Water,” has an endorsement from Russell Wilson and heaps of buzz surrounding the purported benefits of its products and “nanobubbles,” but thanks to some errors from both Reliant and the PTO, a federal trademark may be out of reach. Reliant applied for the RECOVERY WATER mark back in March, and soon… Continue Reading

Counterclaims for Cancellation Are Like Yoga Pants for Your Infringement Defense

Posted in Advertising, Fair Use, Fashion, Infringement, Law Suits, Loss of Rights, Trademarks, USPTO

Here’s one piece of advice you’ll hear from just about any trademark attorney: apply to federally register your marks as soon as financially possible. It is a very important step to take in order to protect your brand. A federal registration provides nationwide rights over any third-party that begins use of a confusingly similar mark… Continue Reading

Bottega Veneta Unties a Trademark Knot

Posted in Advertising, Articles, Branding, Fashion, International, Look-For Ads, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Trademarks, USPTO

It is easy for some to get all tied up in knots at the USPTO when facing challenging grounds for refusal against federal registration of a claimed non-traditional trademark. Not Bottega Veneta. Last week the Swiss-owned fashion house and luxury brand was able to persuade the USPTO to approve for publication the three dimensional knot… Continue Reading

Hours of Energy, But No Trademark Registration

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

The energy drink businesses is big, big business. From Red Bull and Monster to that strange 35 ounce purple can that you saw in a gas station once, consumers love energy drinks. Along with Red Bull and Monster, 5-Hour Energy is one of the most successful and recognizable brands. Innovation Ventures, LLC, the owner of the… Continue Reading

Messin’ With Google

Posted in Advertising, Genericide, Law Suits, Marketing, Search Engines, Television, Trademarks

What does Google have in common with Sasquatch? Well, perhaps one possible point of similarity is that if you mess with either, you might get yourself seriously messed up in the process. With respect to the defensive power of Sasquatch, a local Wisconsin business success story, Jack Link’s Beef Jerky, has gotten much notoriety with its series of hilarious 30-second television… Continue Reading

Baird on Branding & Trademarks

Posted in Advertising, Almost Advice, Branding, Infringement, Law Suits, Marketing, Non-Traditional Trademarks, Product Configurations, Sight, Smell, Sound, Taste, Touch, Trademarks

There aren’t too many things I enjoy more than speaking about the legal implications of branding. Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here. Some of the topics I… Continue Reading

Duck Duct Debate

Posted in Branding

–Susan Perera, Attorney Every once in awhile I run across a product and find myself wondering… why did they name it this?  I recently ran across the Duck Tape brand shown below.  My first reaction was “duck” is a commonly misused term to identify what should be called “duct” tape, and this brand owner interestingly… Continue Reading

Trademark Bully Baloney?

Posted in Branding, Trademark Bullying, Trademarks

In the wake of all the discussion and debate over “trademark bullying,” NFIB (National Federation of Independent Businesses), the self-proclaimed Voice of Small Business, recently offered its members and followers “5 Steps to Avoid Corporate Trademark Bullying“: Do Your Homework; Choose a Descriptive Business Name; Use Common Sense; Consider Buying Intellectual Property Insurance; and When in Doubt,… Continue Reading

Primitive & Impolite, But Non-Vulgar Trademark & Naming Technique?

Posted in Advertising, Branding, Food, Marketing, Trademarks

On a recent pilgrimage to my home town to visit the University of Iowa and to see the Hawkeyes play football again in hallowed Kinnick Stadium, I discovered that a rather rudimentary and perhaps impolite (or potty mouth), yet passionate (sorry Nancy) branding technique, is alive and kicking in Iowa City. I also learned what now appears to go hand-in-hand (or, perhaps leg-in-hands as… Continue Reading

Wanted: Experienced Trademark Attorney?

Posted in Trademarks

A couple of days ago, I promised to try and make the case for why the State of Minnesota ought to hire an experienced trademark attorney. OK, so I’m a day late, but you can decide if I’m a dollar short too. By the way, it was the federal trademark registration record for the below mark… Continue Reading

Taking Branding Cues from Q in the Single-Letter Trademark Queue

Posted in Advertising, Branding, Food, Marketing, Trademarks, Truncation

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… Continue Reading

Seth Godin on Subtlety: The Trademark Perspective

Posted in Branding, Goodwill, Look-For Ads, Marketing, Non-Traditional Trademarks, Trademarks

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… Continue Reading

Get a Load of This: General Mills Takes Offense in Trademark Spat Over Spuds

Posted in Branding, Food, Genericide, Infringement, Law Suits, Marketing, Trademarks

          They say that the best defense is a good offense. It appears that General Mills has adopted this strategy in a recent trademark dispute over the term LOADED in connection with instant potatoes. Just yesterday, the Minneapolis St. Paul Business Journal reported the filing of a federal district court lawsuit by General Mills against Idahoan Foods, in which… Continue Reading

Which “Would You Rather” Would You Rather Play?

Posted in Branding, Dilution, Law Suits, Trademarks

–Dan Kelly, Attorney A couple of weeks ago, the U.S. Court of Appeals for the Ninth Circuit reversed a district court that had held that the federally registered trademark “WOULD YOU RATHER . . . ?” was merely descriptive as applied to books and games.  (PDF of appellate opinion here.)  Briefly, the facts are that Falls Media owns the… Continue Reading

Pizza Branding Goes Back to the Basics

Posted in Branding, Food, Guest Bloggers, Marketing, Trademarks

Guest Blogger Anthony Shore of Operative Words, recently 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. Another way of saying it might be: naming is going back to the basics. I recently came across a good example… Continue Reading

Grilling Some Barbecue Brands

Posted in Branding, Loss of Rights, Trademarks

–Dan Kelly, Attorney As evidenced on these very pages over the past year or so, there does seem to be a general divide between legal types and marketing types about the desirability of descriptive trademarks and brands.  This is understandable.  There is a direct tension here.  More descriptive marks and brands carry more information to… Continue Reading

Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness

Posted in Branding, Fair Use, Food, Infringement, Law Suits, Marketing, Trademarks

  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?… Continue Reading