Permission to Exploit Jennifer Aniston's Right of Publicity?

Posted on March 15, 2010 by Steve Baird

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

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

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

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

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

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

If not, where would you draw the line?

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MiraLAX Won't "Loosen Up" Against OTC Store Brand Competition

Posted on December 1, 2009 by Steve Baird

Schering-Plough Healthcare, owner of the MiraLAX brand -- the top-selling OTC oral laxative ($360 Million in OTC sales since launching in February 2007) -- has pulled out all of the available stops and then some, in a pre-Thanksgiving Day federal district court action brought in the District of Delaware, asserting a variety of intellectual property and unfair competition claims under both federal and state law. Bloomberg.com's report on the case from yesterday is here. In addition, here is a link to the Complaint, with Exhibits A, B, and C.

As is typical when the manufacturer of a national brand wants to stop what it perceives as unfair retail store brand competition, Schering-Plough brought suit not against either of its retail customers Kroger or CVS -- despite both being mentioned in the complaint -- instead, it sued Perrigo the private label manufacturer who provided the competitive products bearing those retailers' well-known, if not famous store brand names.

Perrigo says it is "the world's largest manufacturer of OTC pharmaceutical products for the store brand market." Here is how Perrigo describes its business model:

The Perrigo Company manufactures products that compare to national brand products such as Tylenol®, Advil® or ONE-A-DAY®. For example, Tylenol® has acetaminophen as an active ingredient and is available in a store's analgesic (pain relief) section. Store brand acetaminophen is located right next to the national brand acetaminophen, offering the same active ingredient (acetaminophen) and the same relief.

Store brands and national brand products are both manufactured to meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand products are sold by retail stores under their own labels and compete with nationally advertised brands. All Perrigo products meet or exceed quality standards set by the Food and Drug Administration (FDA). Store brand OTC and nutritional products have saved consumers many millions of dollars in health-care costs over the past six years.

Although the national brand owner's strategy of not suing its retail customer directly may be attractive from a business relations perspective, unless the case is promptly resolved on an amicable basis, it will be hard to avoid having representatives of Kroger, CVS, and other retail customers of Schering-Plough, put on the "hot seat" in discovery depositions to determine who created, controlled, and/or approved the "look and feel" of the store brand packaging. It remains to be seen how this strategy will play out here for Schering-Plough.

Noticeably absent in the complaint are side-by-side comparisons of the MiraLAX product with the Kroger and CVS store brand versions. Instead, as you will see, Schering-Plough includes a photograph depicting the family of MiraLAX products together, then pages later in the complaint it shows a photograph of the family of CVS' PURELAX products together, and then later a photograph of the family of Kroger's GentleLax products. Why? Perhaps the many differences in the appearance and overall trade dress becomes more apparent when the national brand and competitive store brand products are placed side-by-side. However, as we have discussed before, while side-by-side comparisons are generally not appropriate for determining likelihood of confusion, they appear to be not only appropriate here, but necessary in this case, since the national brand MiraLAX and the various competitive store brands most likely are confronted by consumers side-by-side on the retail store shelves.

As Mark Prus, DuetsBlog GuestBlogger, recently depicted in his Naming the Store Brand post, typically there will be similarities in the appearance or "look and feel" of store brands as compared to their national brand counterparts. Perrigo's website reveals essentially the same point, here. What do you think, are the CVS and Kroger store brand laxative trade dresses close enough to the MiraLAX trade dress that consumers are likely to be confused? How many similarities will consumers merely understand to convey a comparable competitive product, before the line is crossed, and a likelihood of confusion results?

No design patent or bottle configuration trademark claims are included in the complaint, but one unique aspect of this OTC pharmaceutical trade dress packaging case, is Schering-Plough's inclusion of federal copyright infringement claims. Schering-Plough has applied for (but not yet received) copyright registrations on the shape of the "double-neck bottle" -- as a "sculptural work" -- and also on the artwork appearing on the MiraLAX product label. It will be interesting to see whether the Copyright Office refuses registration on the bottle shape, under the useful article exception to copyright.

Although no federal dilution claim has been asserted by Schering-Plough, it has asserted a Delaware State Dilution claim, probably because there is no requirement of "fame" under Delaware State law, as compared to the far more stringent Federal Trademark Dilution Act (FTDA) and Trademark Dilution Revision Act (TDRA).

Stay tuned on DuetsBlog for more thoughts and developments as this case progresses.
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Delicious Marks: Candy Bar Cross-Section Trademarks?

Posted on November 16, 2009 by Steve Baird

Gift Chocolates on any Occassion - Pack of 24 - Snickers Crispy,Crunchy Choclates

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars' apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan's post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you're wondering, I couldn't find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it's not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won't cut it).

So, to satisfy a court's hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review.

What about functionality, you ask? Yes, if the depiction of the cross-section is determined to be functional, then it can never serve or be protected as a trademark. What do you think, is it functional? While the taste of the candy bar is clearly functional, the appearance of the cross-section is far less clearly functional. For example, presumably taste would remain unchanged so long as the ingredients remain constant, even with multiple variations on the internal configuration and layering of those ingredients.

There are actually some on-line quizzes you can take to test your visual sweet tooth skills, on Slashfood, here, and The Science Museum of Minnesota's Thinking Fountain, here. Some are easier than others. Now, to the extent consumers are able to "name" the candy bar associated with the shown cross-section, does that help satisfy all three trademark elements or only the first two? And, to avoid the leading nature of the question (as criticized in a U.K. trademark opposition brought against Mars involving candy bar appearance) would it make sense to first ask respondents whether they are able to determine who put out the candy bar in question by only seeing its cross-section?

On a related note, Mars is currently soliciting video content "starring" Snickers, so perhaps some creative type will accept the assignment, and in the process, author some powerful "look-for" advertising to help Mars acquire and build non-traditional trademark rights in the Snickers cross-section. If I were to accept the assignment, my submission would be to depict nothing but the cross-section of a Snickers candy bar within the non-traditional federally-registered parallelogram shape, but then, I'm a trademark type with only limited creative abilities.

So, can you identify a Snickers bar and distinguish it from others by the cross-section alone?

Do you believe consumers perceive the cross-section as a trademark pointing uniquely to one single brand?

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Does Your Eye Spy A Canary?

Posted on November 2, 2009 by Steve Baird

A couple of weeks ago I posted an Accountemps billboard advertisement that prominently features what appears to be a 3M Post-it brand removable adhesive note, and I asked whether it constitutes fair use, and whether 3M's permission is necessary to run the advertisement, since 3M owns a federal trademark registration for the color "canary yellow" in connection with these notes.

As the comments to that post reveal, some recognize the billboard image as a 3M Post-it note, and believe permission should be required to run the ad, others were unaware that 3M has a trademark on the color canary yellow, others believe that yellow adhesive notes are generic, and several apparently believe that even if the billboard depicts a 3M canary yellow Post-it note, no permission should be required. In fact, several pointed out that yellow adhesive notes can be obtained from a variety of sources, raising the question of how close those shades of yellow are to 3M's trademarked canary yellow?

So, just for you, I collected six different pads of yellow-colored adhesive notes and fixed them to a dark green background for a little follow-up quiz. Can you identify any "canary yellow" and name the sources of the six different yellow adhesive notes shown below (answers below the jump)?

(A) Unknown (unmarked yellow-colored removable adhesive note);

(B) 3M's Post-it brand "Pop-up Notes" (packaging states: The color "Canary Yellow" is a trademark of 3M);

(C) Target's Work.org brand "self-stick removable notes" (no reference to color or trademark);

(D) 3M's Post-it brand "Recycled Notes" (packaging makes no reference to canary yellow color or trademarks);

(E) Highland brand "Self-Stick Removable Notes" (packaging refers to Highland as being a trademark of "Minnesota Mining and Manufacturing" -- no reference to 3M, and no reference to "canary yellow" or color trademarks); and

(F) Office Max's "Self-stick Pop-up Notes" (no reference to color or trademark).

All of this raises a few more questions worth asking:

(1) Since (B) and (D) appear to both be 3M's Canary Yellow, why doesn't 3M mention the trademarked color on packaging for its Recycled Notes? Are the Recylced Notes not Canary Yellow?

(2) Since (A), (C), and (F) closely resemble the yellow shade of 3M's Highland brand (E), does that mean 3M views the Highland color and these others to fall outside the legal scope of protection for the Canary Yellow trademark?

(3) Where should a court draw the line in comparing color shades for purposes of determining likelihood of confusion? How should this be measured, by wavelength, colorimeter device, Pantone matching system? Doesn't a note's clear cellophane wrapper affect one's visual perception of color? What about in-store lighting differences, won't they affect one's visual perception too? How about when outside on billboard advertising, could infringement depend on the daily weather? Sunny days infringing, cloudy days non-infringing? Lastly, what about on-line uses of color? I found that I perceived the above collage of six different color squares differently depending on which computer and monitor I viewed them from.

Has any of this changed your view one way or the other about whether Accountemps needs 3M's permission to run the billboard ad?
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Dialing in on Trademark Abandonment?

Posted on October 26, 2009 by Steve Baird
What do these photos have in common, besides the fact that they are both from Roadsidepictures' beautiful photostream collection posted on Flickr?
 
Abandoned by Roadsidepictures  Dial Soap, 1960's by Roadsidepictures.
 
Well, one might say, they both illustrate a form of abandonment, an abandoned building on the left, and apparently some abandoned intellectual property in the form of a clock logo and 'round the clock protection tagline on the right (the package of vintage Dial soap apparently was purchased in Sandy, Utah, as late as 2003).
 
With respect to trademark abandonment, at least under U.S. Trademark Law, it is often said, a trademark owner must "use it or lose it." Apparently in that spirit, over the last couple of decades or so, Dial has permitted its various U.S. Trademark Registrations containing the clock logo and 'round the clock protection tagline to become cancelled or to expire, here, here, here, here, here, here, and here.
 
If a trademark owner discontinues use of a trademark with an intent not to resume use of the mark, at that very moment, the trademark is immediately abandoned (putting aside the potential issue of "lingering goodwill"). Since U.S. Trademark Law appreciates (or at least anticipates) that there is likely to be debate over the "intent not to resume use" element, legal abandonment is presumed after three consecutive years of non use.
 
A couple of other important points about trademark abandonment are worth noting.
 
Under U.S. Trademark Law, if a trademark registration has been abandoned or permitted to lapse or expire, it doesn't necessarily mean that the underlying common law or unregistered trademark rights have been abandoned -- if the mark remains in "use" there is no trademark abandonment, only relinquishment of the registration. Keep in mind that "use" means "bona fide use" of a trademark "made in the ordinary course of trade, and not made merely to reserve a right in a mark."
 
In addition, trademark abandonment occurs "[w]hen any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark." So, if the trademark owner does something (like misuses its mark) or fails to do something (like enforce its rights against infringers) that causes the mark to become generic or otherwise lose its significance as a trademark, there is legal abandonment of trademark rights. 
 
So, what often happens in the marketplace after a trademark is abandoned?
 
Others tend to view this as an open door to adopt the same or similar marks: 
Zest Ocean Energy Body Wash

Do you suppose Dial has any regrets in letting the clock logo go?

Apparently the lapsing of the Dial clock logo registrations was noticed by others too:

Mark Image        

          Tesco Stores                            Colgate-Palmolive                      Colgate-Palmolive

  Mark Image Mark Image

                          St. Ives                                              Tesco Stores                  Universal Beauty                     

Honestly, and to my point about the potential for "lingering goodwill," the Zest Ocean Energy body wash container actually was the inspiration for my post today. I recently noticed the clock design on the Zest container and it struck me as odd because I knew Zest to be a Procter & Gamble brand, yet I associated the clock design with Dial, a company I didn't think had been acquired by P&G. As it turns out, Dial is now owned by Henkel, not P&G.

Finally, you may have noticed my careful use of the word "clock" to characterize the various logos above. Would it be just as fair to refer to them as "dial" logos? After all, the first listed dictionary definition for "dial" is "a plate, disk, face, or other surface containing markings or figures upon which the time of day is indicated by hands, pointers, or shadows, as of a clock or sundial." If so, that brings to mind the doctrine of picture-word equivalency in determining likelihood of confusion. What might that say about Henkel's chances of establishing likelihood of confusion based on its retained rights in the DIAL word mark as compared to the various "dial" logos used by others on similar or competitive products?
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Fair Use of 3M's Post-It Note?

Posted on October 19, 2009 by Steve Baird

This billboard ad has appeared in various locations around the Twin Cities for some time now. 

Each time I saw it, I wondered whether it would be the last, given how vigilant 3M is in protecting its various trademarks and other intellectual property. This time, I had a camera handy to capture it.

Now it's time for some questions.

Is there any question that this Accountemps billboard advertisement prominently features a Post-It brand note?

After all, 3M owns a non-traditional single-color trademark and federal trademark registration for the color canary yellow "used over the entire surface" of "stationery notes containing adhesive on one side for attachment to surfaces." In case you're wondering, at least one dictionary defines "canary yellow" as "a light yellow." Other 3M trademark registrations related to the Post-It brand refer more broadly to "yellow," and are not limited to "canary yellow," here, here, here.

This billboard ad appears to be yet another example of a well-known, if not famous, non-traditional trademark being used in another's advertising, not for comparison purposes, but as a prop to help sell goods or services totally unrelated to those of the non-traditional trademark owner. Is the use necessary? Is it appropriate? Should it be considered a fair use, if made without permission? Why didn't Accountemps make the stationery note prop appear in a color that is not trademarked?

Is the use likely to cause confusion, keeping in mind that actionable confusion is not limited solely to confusion about origin or source, but also protects consumers against likely confusion about affiliation, connection, association, sponsorship, or approval?

Is the look of 3M's Post-It note a famous trademark? If so, it is entitled to dilution protection too. Section 43(c) of the Lanham Act protects against "dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury." If everyone started to depict a Post-It note in their ads would that tend to blur the distinctiveness of 3M's trademark or strenghten the brand? I'm thinking that trademark types and marketing types might have different takes on this question.

As you may recall, we previously have discussed the implications of using another's non-traditional trademark in advertising: Levi's Double Arcuate Design trademark and the shape of a Corvette from the 1960s.

So what do you think, does Accountemps need 3M's permission for this billboard advertisement?

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One Risqué of a Bawls-to-the-Wall Marketing Style?

Posted on October 1, 2009 by Steve Baird

Have you ever experienced or observed marketing styles that might be fairly described as high-octane, fast-paced, or perhaps, so hopped-up on Red Bull® or some other energy drink, there is simply no time for meaningful collaboration, much less careful, proactive, strategic thinking or planning? Perhaps a fun, exhilarating experience, but what are the consequences?

If you have, as you might know first hand (or at least imagine), this style can seriously compromise valuable intellectual property rights and protection. You know when the trademark attorney gets the call if this style controls, right? Immediately upon encountering a serious and unfair competitive threat. But in many instances, this will be long after a coherent strategy might have been created, well after packaging is designed and introduced, well after marketing materials are finalized and distributed, long after websites have been launched, and well after all the unknowing, but self-inflicted damage is done. In some cases the resulting damage is manageable and can be repaired, other times it is not, and legal claims that might have been strong and viable suddenly have turned dead-on-arrival.

By way of example, perhaps you will recall my prior post about the Furminator and the lost intellectual property opportunities there?

In all fairness, the above-described marketing style may or may not portray the Bawls® Guarana energy drink brand, I can't know for sure, but seeing some of the brand's marketing statements -- after being drawn in by the brand -- has raised enough questions and goose bumps for me to at least wonder out loud.

Let's face it, the packaging is visually striking and begs to be handled like no other. Judging from reactions I have seen others have to the bottle, there is something about it that makes people want to touch it, feel it, or hold it, even if they don't end up consuming the contents.

What an amazing opportunity to engage multiple human senses and cement the bond of loyalty between consumer and brand. Indeed, the bottle design almost seems inspired by the teaching of famed Martin Lindstrom in his pioneer work on "sensory branding," entitled BRAND sense, but it appears to predate Lindstrom's 2005 masterpiece by almost a decade.

Although Bawls® brand owner Hobarama, LLC, has obtained a federal trademark registration for a number of visual elements combined together to form a specific trade dress concerning the bottle configuration, owning a purely tactile or touch trademark in the arrangement of the "bumps" element itself appears impossible now (and may even raise questions about the validity of the "bumps" aspect of the trade dress), given admissions already made in marketing materials: "The 'bumps' on the bottle are there to provide a grip so that it does not slip out of your hand when it is wet. And we think it looks cool." Cool looks are fine to tout, but not "non-slip" features, if trademark protection is desired.

Moreover, the statement "Our famous glass bottles are bumped to give BAWLS drinkers a non-slip-grip" seems commercially unnecessary, if not a subtle diversion for another possible explanation of the "bumps" given the risque' and double-entendre-laden brand name, but either way, the "non-slip" reference condemns any hope of a pure touch trademark based on the admitted functionality.

Why commercially unnecessary? Really, can you name another energy beverage brand that needs non-slip-grips in order to compete with Red Bull®?

I can't.
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Internet Surveys -- Powerful Yet Perilous

Posted on July 28, 2009 by Guest Blogger

Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.

One methodology I have recently used combines Internet with telephone. The Web is used to recruit, but the actual interview is administered over the phone. Visuals are used in that the respondent is required to access a Website and questions are based on what the respondent views on the site. For this type of research an incentive is needed. The real-time tabulation benefit is part of the Internet/Telephone hybrid method.

Another major plus with using on-line surveys is that, despite low response rates, research shows “conducting surveys on the web has proven to be just as effective as other methods, but if offers quicker turnaround, less biased responses, more representative sample and lower cost,” according to an April, 2005, Market Tool White Paper issued by San Francisco-based MarketTools, entitled “Why Online? New Benefits and Possibilities.”  The MarketTools White Paper goes on to report, “A number of studies have shown that data collected via the Web very closely matches data collected through other media.  A report in a study conducted for a MarketTools client in 2004 indicates: ”We compared the results of 90 concept tests. The results…indicate a very strong correlation between on-line and off-line scores.”

However, Internet surveys have their problems. For one thing, response rates are abysmal. This clearly is reflective of the high noise level in e-mail in-boxes. InfoUSA, a leading consumer panel name provider, reports the average consumer Internet survey produces a click-through rate of 0.5 to 1 percent and your average business-to-business survey produces a click-through rate of 0.5 to 2%. Also incentives are required. (Click through is the percentage of people who get the survey, open it and complete it.) Getting a sufficient number of responses is a pure “numbers game” based on your response rate. If your response rate is 2 percent and you need 200 completed interviews, you will have to send out 10,000 e-mails to obtain a valid number of responses. If your click-through rate is 1 percent it will require 20,000 e-mails.

Bounce-back rates are another problem. Consumers are fickle. They move and change e-mail addresses. Typical bounce rates for consumer e-mail surveys, according to InfoUSA, is 10 to 35 percent and typical bounce-back rates for business-to-business e-mail surveys are 2-8 percent. 

A far bigger problem is the respondents versus non-respondents dilemma. If 2 percent of a universe responds, what about the other 98 percent? To help rectify this problem, some kind of back-up or verification study might be needed, like a small mall intercept survey. Telephone would work if there isn’t a visual element to the survey. 

Any researcher will admit there is no such thing as THE perfect survey — or, for that matter, a TOTALLY useless survey. Every survey method has its pluses and minuses. The key is to understand the limitations of the survey method before embarking on the research effort.

By James T. Berger
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The Case of the Screwed Screw Maker

Posted on June 16, 2009 by Guest Blogger

My business partner just finished building his deck. In addition to the bureaucratic ordeal, that is obtaining permitting, he decided to go the extra frustrating mile and install composite deck boards versus treated wood. Fair enough. There was just one little wrinkle: Normal deck screws will "mushroom" on you unless they are pre-drilled, or worse, split the board entirely. If you're not careful, you can go through a few boards before you figure it out. And the boards are (not surprisingly) much more expensive.

To solve the problem, builders are instructed to use special screws.SplitStop™ screws seem to be the preferred choice - they have the patents (5,516,248, 5199,839, if you're curious) - although others "claim" to work just as well. A simple Google search returns no less than 10 competing brands, all making a seemingly fair case that their screw is the right screw for the job. But none of them have the SplitStop patent, and numerous articles by independent reviewers bemoan the confusion in the marketplace.

In addition to the "patent" confusion, throw in a dose of "trademark" confusion, and you have a veritable IP mess. Titan Metal Werks (who owns the SplitStop name and patents) also markets the DeckEase™ product. Compare that to TrapEase™ (marketed by competitor FastenMaster).

And therein lies the question: What is Titan to do? Are the others infringing? Perhaps. Are they causing confusion in the market? Certainly. Is the confusion hurting the reputation of the Titan brands? Probably. Will Titan be able to get them to stop? Doubtful.

At first, its tempting to think Titan has a legal problem (and they very well might), and to come up with legal remedies (which they could), but that's really not the central issue. The issue with the Titan brand portfolio is really a failure of marketing strategy. Specifically, a three-part failure:

1. Underfunded brand development effort: A properly promoted brand would be able to garner market share fast enough to create a stranglehold in the marketplace, locking competitors into a minority share and decidedly sub-dominant position. Instead, Titan's effort resembles many other industrial products: Tech-heavy, blah, and amateurish. If you want to play in the consumer big leagues, you need to bring the big bats.

2. Failing to employ the "Kleenex®" brand strategy: With a patented product on an early/first-to-market product, Titan could have (and should have) adopted the king-of-the-hill brand position, naming its product directly after its function - composite deck fastening. Instead, the company employed a strategy focusing on the key benefit (stopping "splits"). That's nice, but consumers were just getting used to composite decking in the first place; they understood the overall benefits of the end product, but were not nearly sophisticated enough to understand the specific cost/benefit on the screws themselves. Frankly, who cares? It's a screw. 

Customer: "Which screw do I need?"

Hardware Store Clerk: "You need "CompScrew" screws for composite decking (throwing out a concept idea here). 

Customer: "CompScrew for composite decking. That makes sense. Okay, I'll buy those." 

Done. Instead, Titan is asking consumers to understand the finer points of installation procedures in order to understand (and find value in) the brand benefit. Good luck with that.

3. Weak channel marketing: The fact you can easily buy another brand of screw at all is a failure of channel marketing. Smart channel marketers would have approached the makers of the composite decking materials themselves, proved the fastening product's efficacy, and worked with them to actually write in the proper installation practices into the warranty itself. In other words, if you don't fasten the boards properly (with this specific brand of screw), we won't guarantee the product. Of course, you can't out and out "say" it has to be a specific brand, but you can make a case in your warranty for a specific claim in the patent. Would it hold up in a small claims court? Perhaps not, but it would be enough to scare off most buyers from going a different direction (especially if you offered a good incentive or rebate).

It really comes down to this: A solid IP portfolio is an important first step to building a brand. But it is only the beginning. If you fail to market it properly, your IP can't save you.

Jason Voiovich, Principal and Co-Founder of Ecra Creative Group and Author of the State of the Brand weekly column
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Kimberly-Clark and The Color Purple: Keeping Trademark Scope Current and Consistent with Business Scope

Posted on June 15, 2009 by Steve Baird

Kimberly-Clark® is no stranger to securing federal registrations for its various non-traditional trademarks. No doubt, these unconventional trademark assets are of great commercial value and an important part of K-C's evolving business strategy and intellectual property portfolio.

My previous post about the oval-shaped facial tissue container K-C was able to federally register in November 2007 is linked here. That post also discussed their current non-traditional trademark application covering a "textured alternating dot pattern appearing on the surface of the carton of disposable paper hand-towels." By way of update, it was initially refused registration in April, but the application remains pending, as can be seen here, with no response due until October 2009.

Kimberly-Clark® has non-traditional, single color trademarks too:  

Kimberly Clark Safeskin Purple Nitrile Exam GlovesSAFESKIN® Purple Nitrile Exam Gloves, Beaded Cuff, Small, Purple. Box of 100                           

In fact, I recently came across a pair of their federal trademark registrations for "the color purple," one obtained in 2002 and the other in 2006. The differences in the description of goods between these two "color purple" registrations help make a point that is quite important to both marketing and trademark types, namely, the importance of keeping registered trademark scope current and consistent with the underlying and evolving business scope.

In considering this pair of color registrations, the more recent 2006 "purple" registration broadly covers "disposable nitrile gloves for general use." The phrase "for general use" is a big deal -- and worth the additional registration -- because it adds significant scope to the narrower federally-registered rights K-C obtained back in 2002 for the same color mark in connection with the far more limited laboratory, medical and surgical uses.

It is often argued that customers from the more narrowly defined laboratory, medical and surgical consuming groups are more "sophisticated" and less prone to trademark confusion than those in the general public, so when marketing channels grow and sales begin to expand from these more "sophisticated" purchasers to also include those in the general public, it is important to make sure the registered rights extend protection to this more vulnerable and larger customer base too.

Moral of the Story: Trademark types, make sure to keep pace with the business and marketing types.
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