Another Marketing Pitfall: How to Crush a Smashing Brand Name & Trademark

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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The Roar of Tiger Woods in Branding

Tiger Woods drives by Allison.jpg

The impact of the Tiger Woods scandal in branding can be viewed from two different perspectives. The first perspective comes from the point of view of the companies that paid Woods to endorse their products. The second perspective is how the personal brand of Tiger Woods will be impacted as the smoke clears from this series of events.

Two professors in University of California-Davis’ Economics Department attempted to measure the impact from the first perspective. They claimed that shareholders in publicly traded companies that Woods endorsed lost $5-12 billion in the weeks that followed the car accident in Florida that set off the scandal. They undoubtedly have an interesting perspective, but there are limiting factors in their research. However, an undisputable fact of the Tiger Woods scandal is that it put a lot of brand management teams in a very delicate situation. Brand managers at firms where Woods served as an endorser had to consider how their brands would be perceived by their target consumers if they were to continue the relationship. It is not an enviable position. 

When a brand chooses to link arms with a celebrity endorser, it must consider which celebrities will be effective endorsers. It is essential to select celebrities that will positively contribute to revenue growth and profitability. I believe that a celebrity endorser is most effective when the target consumer perceives them as attractive or desirable in some fashion and the product is related to the expertise of the celebrity. For example, Michael Jordan was an effective endorser of both Nike and Gatorade because of his status as an elite athlete and the fact that both brands are related to athletic performance. Gisele Bundchen is an effective endorser for Dolce & Gabbana fragrances because scent is an important aspect of appearance and she is the embodiment of phenomenal appearance. She would be far less effective as a celebrity endorser for the Toyota Camry. With regards to Tiger Woods, he is most effective in endorsing Nike Golf products and any other golf related brands. His effect is diminished for brands like Gillette and AT&T.

Each of the brands that employed Woods was placed in an undesirable predicament. This was not a situation where there was one right answer. Each of the brands had to consider how Woods as an endorser fit into their marketing communication strategy. Because each of the brands approached the situation from a different perspective, that is why there were a number of different reactions to the situation. I don't think any brand has made the wrong decision yet in evaluating Woods’ future viability as an endorser.

Nike has made the decision to stay with Woods for the time being. Nike President Phil Knight is choosing to take the long view, as he believes that this incident will be a “minor blip” in the career of Tiger Woods. I fully support Nike's wait and see approach with Woods. Nike took that approach when Kobe Bryant endured consequences for his extramarital affair in 2003-04. Kobe Bryant's situation was more severe, as criminal charges were filed. Eventually, charges were dropped. At that point, Nike and Kobe Bryant resumed their relationship. Nike has shown over time that only athletic performance matters for the most part. From their perspective, off the field issues are relevant when an athlete is convicted of criminal behavior.

Nike has a huge commitment to Woods. Before Woods, Nike’s involvement in golf was extremely limited. Nike Golf has tied itself to Tiger Woods, and Nike is a brand that is defined by excellent athletic performance. Nothing about Woods’ behavior has changed the fact that he is one of the greatest golfers ever. 

Gillette and Tag Heuer made decisions to pull Woods from their advertising campaigns. Neither company has officially dropped him, but both (see here and here) chose to indefinitely suspend him. Both were initially attracted to Woods due to his winning performances on the golf course and they felt that their target consumers perceived that he had a charismatic personality that would benefit the brands. Due to the fact that athletic performance was not the sole reason for Woods’ presence, they wanted to wait and see how this situation would play out. However, they didn’t want to associate with him in the near term, for fear that his presence could damage brand equity.

Gatorade dropped Woods, but PepsiCo said the decision was made before the scandal broke. Gatorade has had a lot of branding problems in the last few years (see here and here). They have much bigger problems than Woods' recent behavior.

Accenture and AT&T both severed relationships with Woods (see here and here). Accenture's decision to drop Woods is unique in the domain of athlete endorsement. Companies will usually not terminate deals unless criminal charges are filed. Companies are prepared for behavioral contingencies, as most endorsement deals have a "morals clause". The "morals clause" likely helped Accenture escape the contract. Accenture strongly tied itself to Woods, a strategic decision that has to be questioned. Tiger Woods doesn’t have expertise in aspects of management consulting, a primary function of Accenture’s business. They also based their ad campaign around the slogan, “Be A Tiger”. "Be A Tiger" doesn't bring up as many positive connotations as it once did. As for AT&T, they dropped him, giving no indication that there will be a future celebrity product endorsement relationship. The AT&T logo is highly visible on Woods’ golf bag and they also sponsor the Tiger Woods Golf Tournament. AT&T is not primarily attracted to Woods the athlete, so it was a simple decision to let him go.

The second perspective of Tiger Woods concerns Woods’ ability to earn money in the future as an endorser. The events of November & December 2009 turned Tiger Woods from an ordinary, albeit highly talented golfer into a Mike Tyson-esque side show. Very few celebrities have fallen as far and as fast of Woods. Nevertheless, it is important to note that Woods didn’t do anything illegal. Extramarital affairs are commonplace. As a result, the Tiger Woods brand will survive as long as he remains one of the best golfers on the planet.

A good precedent for the current situation with Tiger Woods is Kobe Bryant. In 2003, Kobe Bryant had an extramarital affair and sexual assault charges were filed. In 2004, those charges were dropped. Kobe Bryant has been able to secure endorsement deals in the ensuing years. However, Bryant has not been seen endorsing McDonald's and Sprite, brands that are intended for wider audiences. I ultimately believe that Woods will remain a valued pitchman for brands where only athletic performance matters. Brands that take into account personal behavior will shy away from him for the foreseeable future.

Woods’ recent behavior has gotten him one job offer. Movie director Todd Phillips, best known for directing “Road Trip”, “Old School” and “The Hangover”, has offered Woods a role in “The Hangover 2”. This makes the aforementioned comparison with Mike Tyson even more apt, because Mike Tyson had a hilarious cameo in “The Hangover”. Also, an actual tiger played an important role in the plot development of “The Hangover”. However, I don’t believe that Woods will accept Phillips’ gracious offer. He and his PR team probably do not believe that “The Hangover 2” is an appropriate venue for image rehabilitation.

The steps that Tiger Woods takes to rehabilitate his personal image will determine how successful he will be in luring companies to pay him to endorse branded products. I believe that image rehabilitation is certainly a realistic goal. Other celebrities have bounced back from more devastating circumstances. Kobe Bryant went from having sexual assault charges filed against him as a result of an extramarital affair to earning $16 million in endorsements in 2007. Baltimore Ravens linebacker Ray Lewis pled guilty to obstruction of justice in a murder investigation and was able to secure endorsements after his plea agreement. The common thread between Bryant and Lewis is that they continued to be among the best players in their respective sports. If Tiger Woods remains a dominant golfer after his self imposed hiatus and he is able to downplay stories about his life off the golf course, he will receive lucrative endorsement deals in time. The roar of Tiger Woods will continue to be heard in the branding universe.

David Mitchel, Norton Mitchel Marketing

Lightning Strikes How Many Times?

I have heard that lightning only strikes once in the same place, but apparently that is only a myth. Indeed, the number of lightning bolt logos that have "hit" the mail room, over the years, at the U.S. Trademark Office appear to provide additional evidence for disproving the popular myth.

So, what does that say, if anything, about the scope of rights associated with the non-verbal lightning bolt logos shown below, none of which are owned by the same entity, and all of which have been registered or at least approved for publication by the U.S. Trademark Office? And, how many of them do you recognize anyway?

In addition to the link for each logo that connects to the relevant trademark information at the USPTO, here is a numbered hint for each, and the answer key is below the jump:

  1. golf ball brand
  2. golf club brand
  3. Wyeth is the owner
  4. protective eye wear brand
  5. professional football club is the owner
  6. PulseSwitch is the owner
  7. Gatorade's lightning bolt
  8. the lightning bolt logo that Gatorade filed an opposition against
  9. firearm trigger brand
  10. an NFL team, the NFL, and the Air-force have filed extensions of time to oppose
  11. semiconductor brand
  12. athletic competitions at the high-school level

a.   b.  Mark Image    c. Mark Image

d.Mark Imagee.Mark Imagef.   Mark Imageg.  Mark Image

h.Mark Imagei.Mark Imagej.Mark Imagek.Mark Imagel.    Mark Image 

  1. d.
  2. c.
  3. f.
  4. e.
  5. a.
  6. b.
  7. j.
  8. k.
  9. i.
  10. h.
  11. g.
  12. l.

For my previous discussion of Gatorade's Lightning Bolt Logo, see here.

G Doesn't Grasp Successful Marketing

Mark Image

In November, I wrote about how Gatorade’s 2009 re-branding as G has been a complete failure. G was an ill-conceived approach to slowing sales in 2007 and 2008. It damaged brand equity, confused consumers and didn’t reverse the trend of falling unit sales.

In the final paragraph of my last blog, I noted that PepsiCo CEO Indra Nooyi said the company is planning a “massive Gatorade transformation” for 2010. I recommended that Gatorade should follow the model of Coca-Cola when they decided to retire New Coke. By doing this, Coca-Cola admitted their mistake and moved on by hitting the reset button on their brand.

Initial details of PepsiCo’s 2010 “massive Gatorade transformation” have been made publicly known here, here and here. Gatorade’s brand strategy for 2010 seems mediocre. Although they are making some positive changes, other moves indicate that they still don’t understand how to successfully market their brand.

I commend Gatorade for shifting their philosophy in 2010. In 2010, they will redefine their target consumer. Their 2010 efforts will focus on the serious athlete that desires peak athletic performance. This is closely aligned with their origins. For many years, Gatorade has tried to widen their audience, and not succeeded. It is very difficult to be all things to all people, and a laser focus on a specific group of people is a strong strategic approach.

The best decision that Gatorade made for 2010 is to remove high fructose corn syrup from all of their products. A few years ago, Gatorade changed the sweetener from sugar to high fructose corn syrup. The nutrition value (or lack thereof) of high fructose corn syrup has been intensely debated in recent years (here, here and here). Many attribute high fructose corn syrup to causing higher rates of obesity. It is not smart strategy to use an ingredient that can be perceived as harmful to health, particularly when your target consumer is athletic and health conscious. This move gives Gatorade a competitive advantage over chief category rival Powerade. High fructose corn syrup is an ingredient in Powerade products other than Powerade Zero (low calorie version). It also falls in line with the Coca-Cola model of returning a product to the original formula.

Gatorade is planning to revamp their packaging, for both G and the lower calorie G2. Packaging was a key reason why Gatorade struggled in 2009. Consumers did not recognize the nebulous “G” packaging and had no perceptions of the meaning of the “G” brand. The decision to redevelop the packaging is correct. The execution is likely to be a failure. Recently, PepsiCo has redesigned the packaging on the Pepsi line of products and Tropicana. Both redesigns were poorly conceived and executed. There was such a strong backlash against the Tropicana redesign that PepsiCo quickly reverted back to the old packaging. With regards to Gatorade, the only acceptable package redesign is a reversion to classic Gatorade packaging. If the packaging does not resemble classic Gatorade packaging, they will be wasting time and money.

The worst aspect of Gatorade’s 2010 marketing strategy is the expansion of the product line. A product line extension should accomplish at least 1 of the following 2 things: expand the size of the market and/or expand the number of a brand’s product offerings that a given consumer purchases. Gatorade’s line extension will not accomplish either.  By adding the “Prime” and “Recover” beverages to the existing product line (G and G2), Gatorade now has at least 4 distinct segments of their product line. It is bound to cause consumer confusion.  Generally speaking, it is difficult for consumers to perceive how the brand’s multitude of products is going to benefit them. Because of this confusion, consumers are more likely to choose a simpler alternative. This strategic problem is augmented by the current economic climate. Asking the target consumer to adopt product line extensions in the worst recession since the Great Depression is a recipe for disaster. Through this decision, Gatorade is showing how out-of-touch they are with their target consumer.

Gatorade’s stubborn refusal to return to its roots and provide simplicity in its branding strategy will continue to damage brand equity and negatively impact revenue. In the first four decades of its history, Gatorade had all of the makings of an iconic brand. The product was consistent, as well as the overall themes of the marketing communication messages. Consumers perceived the brand as valuable in its category. This is similar to iconic brands such as McDonald’s, Nike, Budweiser, BMW and Crest. Coca-Cola also fits this description, with the exception of a period of temporary insanity in the mid 1980s. Coca-Cola remains the best precedent for Gatorade, but Gatorade continues to reject their methodology in restoring a classic brand after an ill-conceived revitalization.

David Mitchel, Norton Mitchel Marketing

Gatorade-Powerade False Advertising Case Resolved, For Now

      

You may recall the Gatorade v. Powerade false advertising lawsuit filed by a Pepsico entity (Stokely-Van Camp, Inc.) against rival The Coca-Cola Company back in April, discussed here (with a copy of the complaint).

You also may recall how G scored an F in the courtroom, back in August, losing a hotly contested motion for preliminary injunctive relief, discussed here.

So, I guess it was only a matter of time before G decided the case wasn't worth breaking a sweat over any longer.

Interestingly, the Stipulation and Order ending the case, has the owner of the Gatorade brand dismissing with prejudice (meaning they can never be reasserted) all claims it had asserted in the lawsuit against Powerade brand owner Coca-Cola. 

It shows Coca-Cola only dismissing with prejudice its affirmative defenses and counterclaim, "insofar as they specifically address [Gatorade's] marketing, labeling, advertising and/or promotional claims concerning the inclusion of calcium and/or magnesium in Gatorade Endurance Formula." All other defenses and claims asserted by Coca-Cola were dismissed without prejudice (meaning they are not barred from being reasserted in the future).

Given this unequal treatment in the settlement, it would appear that Gatorade was more anxious to end the case than Powerade.

Recalling that Gatorade and Powerade battled in court over advertising claims back in 2006, any predictions on how long until these two sports drink brand rivals slug it out again in court?

What's G? For Gatorade, G is Gruesome

Gatorade’s efforts to re-brand as “G” have been a dismal failure. It seems as if the brand management staff at Gatorade consumed a few too many cold beverages while making this decision, and I’m not referring to refrigerated Gatorades.

The history of the G re-brand has its roots in 2007. Unit sales were flat in 2007 compared with 2006, after three years of double digit growth, according to market research firm Information Resources Inc (IRI). More poor results followed in 2008 despite product innovations and brand revitalization efforts (here and here).  In January 2009, Gatorade started the G re-brand. The G re-brand has done nothing to improve Gatorade’s bottom line. In fact, it has harmed the bottom line.

The decision to modify a brand name should not be taken lightly. A brand name communicates the essence of the brand to consumers. According to Rick Baer, Professor of Marketing at Thunderbird School of Global Management and former Global Brand Manager with Colgate-Palmolive and Dial Corporation, a brand name “should conjure up all the associations and images you want for your brand”. Does G accomplish that? The answer is a resounding no.

What makes a good brand name? Landor Associates, a well known brand consultancy, identifies three key criteria: strategic, linguistic and legal.

Strategic criteria:

  • Does it capture your brand’s essence in a meaningful way?
  • Is it appropriate and appealing to your target audience?
  • Is it as brief as possible?
  • Does the name connect to what the business is about?
  • Does it have the potential to be memorable?
  • Does it limit you in any way?

Looking at the strategic criteria, the brand name Gatorade excels. It does capture the brand’s essence and connects to what the business is about. In the 1960s, University of Florida scientists developed a chemical mix that enabled the Florida Gators football team to stay hydrated and enhance athletic performance. Just over a year after the creation of Gatorade, the Gators won the Orange Bowl. The name is brief, memorable and non-limiting.

In terms of G, it doesn’t capture brand essence, it is undifferentiated, it doesn’t connect to the business, it is not memorable and it is limiting. G is so nebulous that it can be interpreted in many different ways and many of these interpretations are destructive to brand equity. Does PepsiCo want Gatorade’s G to be associated with Gangstas and the illegal drug trade? I think not.

Linguistic criteria:

  • Is it appropriate in meaning in all major languages?
  • Is it easy to spell and say?
  • Does it limit you in any way?
  • Have you considered all relevant cultural sensitivities?
  • Is it too similar to an existing trademarked brand that it may cause consumer confusion?

Gatorade passes all of these linguistic criteria with flying colors. G does not. While it is easy to spell and say, it is limiting and doesn’t consider relevant cultural sensitivities with possible connotations to gang and drug trafficking subcultures. Trademark attorney Steve Baird has already pointed out many of the possible points of confusion with G.

Legal criteria:

  • Can you use it without infringing on another trademark?
  • Can you own and protect it as your trademark?
  • Is the domain name available?
  • Can you use it and protect it in all relevant geographies?

Gatorade passed all the legal criteria. G didn’t-it can’t be owned and there are potential infringement issues which Baird has documented.

Since we have seen that G fails as a quality brand name, it is a logical conclusion that Gatorade sales will slump. Existing brand data supports this conclusion.

Gatorade lost a 4.5% share of the sports-drink market and volume slipped 17.5% in the first six months of this year, according to Beverage Digest estimates. It now has about a 75% share of the sports drink market. In July, a Gatorade spokeswoman told the Wall Street Journal that sports drink volume has slipped more than 12%. This means that Gatorade underperformed in the first half of 2009 as compared to its peers in the market.

Gatorade’s slump has really dampened PepsiCo’s performance. Pepsi Americas’ beverages unit had revenue fall by 6% in the 2nd Quarter of 2009. Coca-Cola North American beverage unit only experienced a 1% drop. It is worth mentioning that Coca-Cola owns the Powerade brand, Gatorade’s main rival. Powerade volume sales increased by 23.6% in the 1st Quarter of 2009

In a desperate attempt to revitalize sales, Gatorade called on former pitchman Michael Jordan to enhance the sagging brand. This coincided with Jordan’s entry into the Basketball Hall of Fame in September. According to Bill Sipper of Cascadia Consulting, a food and beverage consultancy, Michael Jordan wasn’t the right person to help out the brand. Sipper said “Anyone who followed Michael Jordan 30 years ago is not their prime consumer today.” Sipper also had harsh words for the G campaign as a whole. He said “It's the worst ad campaign in 30 years. The most uncool thing is trying to be perceived as cool.” Consumer perception of G certainly reflects Sipper’s sentiments, as the aforementioned sales numbers indicate.

On October 1st, PepsiCo CEO Indra Nooyi said the company is planning a “massive Gatorade transformation” for 2010. Part of this “massive transformation” will be the introduction of new products formulated to the needs of different types of athletes, according to CFO Richard Goodman. For the sake of PepsiCo’s financial performance, all products should be branded as Gatorade and have absolutely no indication of G. Now is the time to retire the G campaign, just as Coca-Cola retired New Coke when it was obvious that New Coke was a failure. At that point, Coca-Cola underscored its history of cola excellence. In 2010 and beyond, every aspect of Gatorade’s marketing mix should emphasize Gatorade’s rich tradition of enabling athletes to achieve peak performance. This recipe should help PepsiCo’s achieve peak performance in the same manner that an athlete achieves peak performance by drinking Gatorade.

David Mitchel, Norton Mitchel Marketing

Single Letter Chewing Gum Brands: A Lasting Flavor or Just B S?

Cadbury Adams, a Cadbury Schweppes Company

 

 

 

 

    

 

 

My recent family road trip through the heartland had me spending more time than usual pumping gas and shopping in convenience stores, so a few chewing gum brands "gone single letter" caught my eye. As you may recall, I already have reported on Single Letter Envy in Hotel Branding. Well, it appears that the quest for single or one-letter brands is not limited to the hospitality industry (let alone others I'm sure to write about in the future), but has "stretched" to the confectionery industry too.

Turns out, both single letter gum brands that caught my eye are owned by the same company, Cadbury-Adams, part of "Cadbury plc – a leading global confectionery business with the number one or number two position in over 20 of the world's 50 largest confectionery markets."  

Yes, Cadbury Adams has migrated from its long-lasting Bubblicious brand name (having equal style for each letter) to a differently styled beginning B in Bubblicious, and most recently, to the letter B, standing alone, front and center on packaging; fully-truncated to B, as shown above. So, in our ever-abbreviated and truncated branding world, where G now means Gatorade (among other things, as a previously blogged about here), B now apparently means Bubblicious, and S now means Stride (another Cadbury Adams chewing gum brand). Might care be in order to avoid having these two brands appear side by side on store shelves -- at least in the order appearing above -- to avoid some unintended combined meaning of the brands? Perhaps one of the "sticky" consequences of single letter brands is the temptation others may have to spell alternate and unfavorable words and acronyms with them.

As you might imagine, confronting these single letter brands raises a number of questions in need of some answers. For example, are single or one-letter brands for chewing and bubble gum, just the latest flavor trend, or are they here to stay? Why are they currently so appealing, at least to Cadbury Adams? Are there other single letter gum brands in the marketplace, or just B S? Lastly, what are some of the legal ramifications of branding single letters for confectioners?

I'll leave the first two questions for others to chew on -- especially marketers, but I'll take a crack at the second two.

Do Other Single Letter Chewing Gum Brands Exist, or is it Just B S?

Well, apparently it's not just B S, even for Cadbury Adams, who has actually registered a stylized letter "C" for chewing gum, apparently to reinforce the first letter in the long-lasting Chiclets brand, here and here. Having said that, the specimens on record at the Trademark Office don't appear to scream "C" -- at least to me. Unlike the B and S brands, where these single letters appear front and center, standing alone, the stylized "C" trademark appears quite intertwined with the design elements of the packaging, making it difficult to discern the claimed "C" as a separate trademark.

In case you were wondering, Cadbury's major competitor Wrigley's (now part of Mars) currently appears more interested in putting single number brands (namely, the single numeral 5) front and center instead of single letter brands, although it apparently has flirted with more subtle use of a stylized W on the surface of certain gum sticks (consisting of "one or more 'W' designs substantially as shown in the drawing" below on the left):

Mark Image

Honestly, I always wondered what those "tire tracks" were on Juicy Fruit gum sticks.

Anyway, soon we may see how broadly Wrigley's views its scope of rights in "W" since the Walgreens' stylized W mark (shown above on the right) is set to publish for opposition next month, and within the long list of intended goods and services is "breath freshener . . . gum" and "smoking cessation . . . chewing gum". So, stay tuned here for more on this point.

Yet, others seem to prefer the combination of a single numeral and a single letter: N-2 and N-4. Indeed, if V-8 vegetable juice ever considers a brand extension into chewing gum (how likely is that?), it will have to contend with the already-registered V6 brand.

Wrigley's also owns a stylized "O" trademark used in connection with its Orbit brand gum, so, Oprah might have to think twice about launching a chewing gum brand sporting her brand of O anytime soon.

Legal Ramifications of Single Letter Brands?

There are a few legal take-aways for single letter brands worth mentioning here:

  1. Don't assume you can truncate an existing brand down to a single letter without conducting the necessary trademark due diligence;
  2. Designing a highly stylized first letter in a brand name (that is styled differently from the remaining letters in the name) may permit the owner to obtain a separate federal trademark registration covering the highly stylized single letter by itself (as Cadbury Adams did with the stylized B in Bubblicious some five years ago), even though -- at the time -- it is only used as the first letter in the brand name (as was the case for Bubblicious);
  3. Utilizing the strategy in (2) above may help facilitate and protect the possibility of later pursuing a migration of the single letter from the brand name (as Cadbury Adams did with B Bursts years after filing for B), and then to a stand alone, front and center, fully-truncated single letter brand, as depicted above;
  4. Taking a more gradual approach toward truncation and migration might help reduce risk of a conflict, especially in a crowded field, assuming it is pursued along with the design and registration strategy in (2) above; and 
  5. The scope of rights in a single letter brand will be impacted by third party uses of the same letter: The more crowded the field, the narrower the scope.

So, to illustrate the due diligence concern stated above in (1), if Trident decides to truncate itself to T, it may have to contend with this T and that T (stylized). And, if Gatorade Gum returns to the scene, it may have to consider G & Design, G-1, at least, before assuming it automatically may truncate to G for chewing gum.

With respect to scope of rights, apparently, Cadbury Adam's Bubblicious beat Bubble Yum, Big League Chew, and Bazooka in truncating to B, but Cadbury Adam's B, nevertheless, coexists with B-FRESH, and may soon coexist with Grupo Bimbo's B logo too.

It remains to be seen how many more single letter chewing and bubble gum brands "pop up" and whether any confectioners "expanding" in this direction will "blow it" by migrating or truncating their brands to single letters without doing -- in advance -- the necessary due diligence. Of course, the timing of the due diligence may unwrap the difference between a successful "no-face-sticking bubble gum" brand from one that leaves a rather sticky mess on your face when it finally bursts.

Before closing, and back to the title of this post for a moment, for anyone wondering whether the use of B S in the title of this post might be a tad too racy, first of all, it is an acronym with many possible meanings, so you're responsible for the one you decide to apply, but perhaps more importantly, I have confirmed that the Trademark Office readily registers marks consisting of or comprising B.S., so long as it is not spelled out in full as a "profane" or "scandalous" term (as Red Bull apparently attempted to do, here): (1) BS is federally-registered for jewelry and leather goods, (2) I.T. WITHOUT THE B.S. is federally-registered for maintenance and repair of computer networks, (3) BS EVER & Design is federally-registered for steel-wire, (4) BS (stylized) is federally registered for certification services, (5) NO B.S. is federally-registered for a marketing newsletter, (6) B S & Design is federally-registered for a swimming pool drain cover, (7) BS & Design is federally-registered for insurance services,  (8) B:S is federally-registered for footwear, (9) NO B.S. was federally-registered for telephone calling card services, (10) B.S. METER was federally-registered for a toy talking telephone, (11) CAN THE B.S. was federally-registered for printed message cards, and (12) a mark consisting of "a stitched letter 'B' on the left back pocket and a stitched letter 'S' on the right back pocket of a garmet" was approved by the Trademark Office.

Just so you know, even a mark having the words "NO B.S. MORTGAGE, LLC," and depicting a "bull with blue eyes and a gold nose ring holding a roll of white toilet paper and sitting on a white toilet," was not refused registration under Section 2(a) of the Lanham Act, despite that provision's prohibition on the registration of marks that consist of or comprise scandalous and immoral matter.

G gets an F in the Courtroom: The Gatorade v. Powerade Case

              VS.          powerade-ad-ion4.jpg

 

Almost four months ago now, I blogged about the filing of the Gatorade v. Powerade false advertising and trademark dilution lawsuit, here. At the time, some called Gatorade's false advertising claims "dubious" and others chided Gatorade for biting Powerade's bait to file suit.

Advertising Age has now reported about the recent court ruling addressing Gatorade's request for an emergency preliminary injunction, here. For those of you who have been looking for a copy of the court's interesting 54-page decision, it is available, here.

As you will see, the Court's opening paragraph telegraphed its critical view of Gatorade's claims:

This is a case about an advertising battle between two major consumer products companies over one company's comparison of its beverage to human sweat. That company advertises its beverage by promoting its inclusion of certain electrolytes contained in sweat, and its competitor wants it to stop.

In short, G got an F in the courtroom. First, G failed to prove that any of the challenged statements were false or establish it was entitled to the requested emergency injunctive relief while the case works its way toward trial. Second, U.S. District Judge John G. Koeltl also found "frivolous" certain of G's arguments relating to alleged irreparable harm. Last, G appeared to frustrate the Court by ignoring it made similar advertising statements about its own Gatorade Endurance Formula product, as late as a week before filing suit against Powerade. The "pot calling the kettle black" never plays well in the courtroom. I wonder who is doing the sweating now.

Despite the failing grade, G apparently is claiming victory anyway because Powerade agreed to cease running the challenged comparative ads and stop calling Powerade "incomplete" during the pendency of the case. The problem with G's victory chant is that it had these concessions before the Court ruled on the preliminary injunction motion. By failing to simply gain Powerade's concessions on the record and moot the need for the Court's decision on the motion for a preliminary injunction, G pushed the Court for more, and, it appears, the strategy backfired, leaving G being found guilty of unclean hands.

Gatorade's false advertising claim challenged four specific Powerade advertising claims as being literally false:

  1. Powerade ION4 is "THE COMPLETE SPORTS DRINK" and "COMPLETE," while Gatorade is "INCOMPLETE" and "MISSING" "CRITICAL" electrolytes, namely, calcium and magnesium;
  2. Powerade ION4 "replenishes 4 critical electrolytes in the same ratio typically lost in sweat. Other sports drinks don't";
  3. Powerade describes calcium and magnesium as "critical" electrolytes; and
  4. Powerade's slogan "UPGRADE YOUR FORMULA. UPGRADE YOUR GAME."

Because Powerade agreed to at least temporarily stop calling G "incomplete" and not refer to it as "missing" anything, the Court considered those claims moot for purposes of the requested emergency injunctive relief and it was left to rule on G's remaining weaker claims. Indeed, the Court didn't break a sweat in concluding that none of the remaining challenged statements were literally false. While G is free, of course, to continue pursuing each claimed false advertising statement to a final conclusion, it cannot prevail on any of them without actually proving consumers were misled by submitting valid consumer survey evidence or some other kind of extrinsic evidence of actual consumer deception.

Trying to argue a meaningful difference between "the" and "a" got G nowhere with the Court. After recognizing that G had admitted Powerade is "a" complete sports drink, it ruled use of "the complete sports drink" phrase to be non-actionable puffery upon puffery "because consumers understand that the advertiser is not contending that the particular attribute or feature can only be found in its product."

Moreover, the Court found that G's initial and preferred strategy for dealing with the competitive threat from the new Powerade formulation simply was to compete, by removing the feared point of differentiation: adding calcium and magnesium to G's formula. But it scrapped this legitimate plan only after learning of a widespread commercial shortfall of calcium that would delay G's ability to get to market with an updated formula before Powerade's new ION4 sports drink.

Finally, the Court didn't lose a drop of sweat dispensing with G's false advertising claims because of G's unclean hands:

There is no question that [G's] conduct has a 'material relation' to the equitable relief that it seeks. [G] complains about [Powerade's] claims regarding the presence of calcium and magnesium in Powerade ION4, but it has made virtually identical claims about calcium and magnesium in its own Gatorade Endurance Formula. Courts in this Circuit and elsewhere have routinely found that a plaintiff's misconduct relates to the subject matter of its claims where, as here, the plaintiff has engaged in the same kind of behavior that it challenges.

[G] cannot, having jumped on the bankwagon of calcium and magnesium first, now jump off and claim that [Powerade] must get off too. Therefore, although [G] is not entitled to a preliminary injunction because it has not shown either a likelihood of irreparable injury or a likelihood of success on the merits, its own unclean hands also precludes the equitable relief of a preliminary injunction.

It is clear from the Court's opinion that G's lawyers knew about G's recent and prior history of touting calcium and magnesium in a sports drink prior to suing Powerade. Indeed, according to the Court's decision, they actually directed G's marketers to "purge its advertising -- including its website -- of positive references to calcium and magnesium. On or about April 16, 2009, [G] changed its website to remove the statement that calcium and magnesium are 'vital for proper nerve transmission and muscle contraction.'"

It's kind of hard to complain about the use of the word "critical" when you freely use the term "vital," right?

W H O, R U? Exposing Single-Letter Trademark Envy in Hotel Branding

Hotel chains appear determined to own single-letter trademarks anymore. Yes, the lodging industry appears headed toward serving up a regular bowl of alphabet soup you might say. Do you recognize any of these single letter hotel marks?  

Mark Image  Mark Image 

Mark ImageU Hotels & Resorts - Luxury Hotels in ThailandFree Clipart Picture of a Yellow Question Mark with a Black Outline

In case you're wondering, the inspiration for this post came from Holiday Inn's re-branding effort with the above H logo. A three-year re-branding effort that apparently started back in 2007, but has only recently shown itself in suburban Minneapolis. It got me thinking how Holiday Inn must have had single-letter trademark envy to move in this truncated direction because when I think of single-letter hotel brands, only W comes to mind (at least before starting this post). 

W Hotels has done a very nice job with its branding, it seems to me, especially with the recent remodel of historic Foshay Tower in downtown Minneapolis. It's interesting, however, that W seems unmoved by a host of others using and registering "its letter" in connection with other hotels, here (Wyndham), here (Woodfin), here (Chickasaw Nation), here (The Westbury in London), here (Watermark), and here (Willard), especially since Starwood, the owner of W Hotels, owns the letter W as a trademark without any type or style limitations. Perhaps W is unmoved because at least some of these appear to predate W, begging the question of how Starwood was able to register the letter W with no type or style limitations in the first place.

In addition, Holiday Inn is certainly not the only or the first with a hotel or plans for a hotel to think about truncating its name to the single letter H in a trademark and logo, see here (Hilton), here (Hersha), here (Hansa Urbana), here (Hearthstone), here (Haute), here (Heritage), and here (Heidi Klum).

Turns out, lots of other hotels have truncated their names into single-letter logos too, which makes me wonder about what the scope of their respective rights might be.

Having said that, some letters may not be well-suited for hotel branding at all. Given that hotels are routinely graded (typically on number of stars), I haven't checked, but I assume the letters B through D and F are available, for obvious branding reasons. And, sorry Gatorade, flanking the flunking or failing letter F, at least in Malasia, G appears taken, and Westin recently grabbed a stylized E, with Carlisle taking an interest in E too, not to mention Embassy Suites and its E.

As you may have guessed, Renaissance is not the only R out there in the hotel world (here (Ramada), here (Ravel), here (Regent), here (Registry), and here (Rockresorts)), but U Hotels & Resorts appears to be surprisingly unique, as does O Hotel. So, here we may have identified at least one caution for Oprah to consider carefully, down the road, in the event she sets her sights on extending her brand of O into the hotel industry.

Last, but certainly not least, as Gatorade must have learned when it truncated to G, blogged previously here, it is not easy to own a single-letter as a trademark, at least one that enjoys any meaningful scope.

Staying on the Right Side of the Line: Suggestive vs. Descriptive

My last post explored the fine -- but critically important -- line, between suggestive and descriptive naming styles, here. As you will recall, marketers and naming gurus who select from the former category are rewarded with immediate rights; selecting from the latter category leaves one in limbo until acquired distinctiveness can be proven, if ever. Landing on the right side of the line (literally and figuratively) on the Spectrum of Distinctiveness, however, is only the first step of the challenge. 

Equally important to landing on the right side of the naming line at the outset, is the constant challenge to keep a suggestive name and mark on the right or inherently distinctive and immediately protectable side of the line. Seems as though there is a strong temptation, if not tendency, to push a perfectly suggestive name or mark back over to the wrong or merely descriptive side of the line through an owner's own misuse on labels, packaging, ad copy, and/or the internet.

Let's just say that I have consumed more than my fair share of Gatorade brand thirst quencher while soaking it up in my hot tub. And let's also just say that during those many extended brand experiences, I have become quite familiar with a particular Gatorade label, one that makes the point of this post quite well.

Anyway, the Gatorade label I'm speaking of, here, prominently displays a federally-registered tag-line with a nice alliterative quality: Rehydrate Replenish Refuel. As you can see from the federal trademark registration, here, the U.S. Trademark Office considered the tag-line sufficiently creative to be inherently distinctive, i.e., suggestive, not merely descriptive.

No doubt this wouldn't have been the case had the Trademark Office seen the pair of descriptive tag-line misuses appearing on my Gatorade label (close-ups here and here). Instead, it would have found the tag-line to be merely descriptive, not suggestive, and refused registration. Why? Bluntly and overtly describing Gatorade thirst quencher as "scientifically formulated with fluid, electrolytes and carbs to rehydrate, replenish and refuel in ways water can't" and also as "a smart choice for athletes because it rehydrates, replenishes and refuels in ways water can't," removes every drop of imagination, thought and perception needed to make Rehydrate Replenish Refuel a suggestive tag-line. Instead it ends up immediately describing a feature of the product and only fuels a finding of mere descriptiveness. 

So, taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet, unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive. Perhaps you're wondering why the Trademark Office didn't pick up on this important point and refuse registration on descriptiveness grounds? Well, let's just say that the Gatorade label submitted to the Trademark Office didn't have the descriptive uses you have seen here. Let's also just say that we'll save for another day and another post what the Trademark Office was provided.

Branding Letter "G" -- Will Lightning Strike or Will Thunder Be Stolen?

The makers of Gatorade® apparently like to engage consumers by asking questions. They used to ask, "Is it in You?" The "it" being Gatorade®, of course. Most recently, Gatorade® has embarked on a massive teaser ad campaign -- apparently to re-brand Gatorade® -- asking, "What is G?" -- a question that begs answering in the mysterious ads.

You might be interested to know that trial attorneys are taught not to ask questions -- at trial -- if they don't know the answer. A related and good rule of thumb for marketers might be: Don’t ask a question, if you don't know and -- perhaps more importantly -- if you can’t own the answer.

This may be especially good advice when competitors and other sellers of related products are able to truthfully answer the question posed in their favor, and "steal your thunder," or perhaps "lightning," as the case may be. For example, just picture the makers of these beverage products collectively raising their glasses in answer to Gatorade's bold question "What is G"?

G by G PURE ENERGY already is a federally registered trademark for an energy drink.

G already is a federally registered trademark for bottled water too.

G is a trademark approved for publication by the U.S. Trademark Office for soft drinks.

G3 is a federally registered trademark for fruit juice, not to be confused with Gatorade's G2.

G5 is a federally registered trademark for soft drinks, again, not to be confused with G2.

G JUICE already is a federally registered trademark for sports drinks and other beverages.

G is a proposed trademark allowed by the U.S. Trademark Office for fruit drinks.

G ENERGY MADE FOR WOMEN is a federally registered trademark for fruit drinks.

ELIXIR G is a federally registered trademark for non-alcoholic cocktail mixes.

"EROTIC G-SPOT DRINK" is a federally registered trademark for sports and isotonic drinks.

ENERGIZING GIMME A G has been approved for publication as a trademark for energy drinks.

G GLEUKOS is a federally registered trademark for sports drinks.

Gee Whiz . . . and there are more Gs where these came from, but I think you get the point.

For more of a marketing critique of Gatorade's alpha-truncation-re-brand, continue after the jump.

Even putting aside the unanswered legal questions in Gatorade's truncation to a single letter, the makers of "G" -- in the end -- may be sorry they asked the bold question, not necessarily for legal reasons, but business reasons, after hearing the infinite number of possible responses to the question, many of them negative or otherwise unhelpful associations with the otherwise famous and dominant sports drink brand.

For example, the campaign already has been criticized for apparently ignoring "Gangsta" as one possible answer. Unbound Edition cleverly noted that "Gatorade Fumbles With Its G Spot". How about a "G" of cocaine or some other illegal substance? As Bob Garfield of Ad Age recently posted: "In a world where X stands for Ecstasy and H stands for heroin, you'd better take care how you sling around your Gs." Some apparently use "G" as an abbreviation for GHB, a/k/a "Liquid Ecstasy". How long will it take the keepers of the Gatorade® brand to recognize the need to avoid having the iconic "Gatorade Shower" become an abbreviated "G Shower", after recognizing that "G" is also an abbreviation for the word "Golden"? So, it is probably safe to say that the J (jury), so to speak, is still out on whether asking "What is G?" is an effective way to re-brand Gatorade®.

Finally, some have argued that any Gatorade® re-branding should have moved toward making the word mark synonymous with the Lightning Bolt logo. That is a topic for another day. In the meantime, to test this argument, you may want to check out my post concerning non-verbal logos that truly can stand alone. As for today, the "G" re-branding campaign seems to go way too far in attempting to "own" one of the twenty-six letters in the alphabet, especially so, with the crowded field demonstrated above. As Graphicology Blog aptly noted: "A couple spots cannot give meaning to a letter overnight, and I’m not sure many years of advertising can either."