Happy Birthday Duey!

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DuetsBlog celebrated its first birthday today, so that means Duey the squirrel is one year old. He has made a lot of friends over the past year (as have we), and he has come a long way (as have we) despite his exhaustion hording nuts (we haven't done any of that) for the long cold winter we had (hopefully this remains past tense).  

This is some of what Duey has observed since our inaugural post entitled Dr. No and the Parade of Horribles:

  1. Some 350 posts (part of the reason for his exhaustion);
  2. Some 530 comments (part of the reason for your exhaustion);
  3. Some 840 followers on Twitter;
  4. Some 250,000 visits; and
  5. Us, having a lot of fun . . . .

Here is a snapshot of where we were back in July 2009, and here is one from December 2009.

Thanks to our wonderful and growing group of talented Guest Bloggers, and thanks to you for your comments and interest in the conversation we have started here on DuetsBlog.

May all collaborations between trademark types and marketing types be early, often, personable, smart, enjoyable, graceful, and mutually beneficial.

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What a Crock, Pot That Is . . .

We're not talking the foamed footwear Crocs® that Randall Hull wrote about in his What a Croc! post from a couple of weeks ago. Instead, we're talking slow cookers -- on this snow-capped Valentine's Day in the Twin Cities.

Every once in a while a stroll down the grocery store aisle leaves me surprised when I spot a federal registration symbol next to a word that I thought was a generic term for the goods or services in question. Today was such a day, when I noticed Sunbeam's Crock-Pot® The Original Slow Cooker appliance on the store shelf. Apparently I'm not alone in my surprise at the trademark status, given Wikipedia's acknowledgment that Crock-Pot is a trademark "often used generically in the USA" -- and Slo-Cooker is a trademark "often used generically in the UK."

It appears the Crock-Pot® trademark was originally registered back in 1972, and a couple of years ago federally-registered protection for the trademark was extended into a number of different classes of goods at the U.S. Trademark Office for a variety of different products, including food, and some cooking accessories. Last June, this logo was federally registered by Sunbeam, but it specifically disclaimed any exclusive rights in the descriptive phrase "The Original Slow Cooker":

I'm left wondering whether this is like the Rollerblade example, where it took the owner of the Rollerblade brand an entire decade to battle genericide by developing a commercially acceptable generic term (in-line skates) to couple with the brand.

Here are a few questions for marketing types to ponder and discuss: If you're Sunbeam, owner of the federally-registered Crock-Pot® trademark, do you care if retailers and your direct competitors call their competing products a Crock-Pot too? What about Search Engines selling Crock-Pot as a keyword, do you care about that? If so, how much do you care? Is it important enough to spend dollars on stopping these kinds of actions?

Just so no one is left out, here, for you trademark types out there, what steps would you take to avoid having the Crock-Pot® trademark invalidated on genericness grounds?

Same drill for the Bundt® trademark that Dan wrote about prior to the holidays.

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

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

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

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

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

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

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

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

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

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

Exploring Alternative Spellings

I recently came across a catalog for a company that sells "modular floorcovering" -- probably better known as "carpet squares."  (They actually sell more than squares, but I digress.)  The brand?  FLOR.  FLOR?  Cue kneejerk trademark attorney reaction:  "FLOR?  Are you kidding me?  I bet they had a heckuva time getting that registered!"  Well, they didn't, but it served as a good reminder to me to be wary of my "Dr. No" tendencies.

I am about to make a sweeping generalization here, but it seems to me that one of the real or perceived gulfs between marketing and legal types is the former's occasional attraction to words with novel spellings and the latter's repulsion to those same words, at least when applied to goods or services that the word might describe.  Conventional trademark wisdom is that a novel spelling of a word will not save it from being "merely descriptive" of the goods or services with which it is used if purchasers would perceive it as merely descriptive of the goods or services.  Why is this important?  Well, "merely descriptive" words are not immediately entitled to trademark protection.  The owner of such words has to use them as a trademark so that they acquire "distinctiveness" or "secondary meaning," and this process can take five or more years.  In contrast, suggestive words are entitled to immediate trademark protection--they are "inherently distinctive" as trademarks.  (See here for a cheat sheet and overview of these concepts.)

When Interface Global applied to register FLOR as a trademark for use in connection with "modular carpeting and rugs," it was required to show that FLOR had acquired distinctiveness.  In other words, it had to show that when consumers see "FLOR," they actually think of the company that sells modular floorcovering, not just another way to say "floor."  Same thing happened when the original owner of PUR tried to register it for "water filtration units."  Generally, if a company uses a word like this as a mark for five years, exclusively and continuously, that claim alone is generally sufficient to show acquired distinctiveness. 

In the final analysis, novel spellings can be catchy and marketable, but if they are also descriptive, it could take a while to build up strong trademark rights in them. 

For more information, see Steve's recent post on "moist" cake mixes, which gives a good overview of some suggestive trademarks and links to other posts that touch on the line between descriptiveness and suggestiveness. 

Getting Familiar With the Basics: A Planning Primer

It’s the last quarter of the year, and if you haven’t done your planning for 2010, I’ve got two things to say to you: 1) you’re late (you undoubtedly know that), and 2) you’re not alone.

But whether you’re in the middle of developing your 2010 plans, directing planning input from multiple sources, or reviewing plans for clarity and consistency, this blog’s for you.

Working with many different clients over the years, I have worked with many who have been given responsibility for planning who are not themselves trained strategic planners. This means that many of them have a limited understanding of the basics of strategic planning. Oh, they know their stuff and are often brilliant marketers, but some come from the technical side, some come from sales, some from communications – you get the picture. I will see the words “Objective”, “Goal”, “Strategy”, and “Tactic” used interchangeably. A stated “Mission” will have the hallmarks of “Vision”; a “Threat” is labeled a “Weakness”, etc. This makes me crazy, as these are all very different things, and they have very different meanings and functions.

In response I have prepared a primer of sorts that covers the basics of strategic planning terms and explanations for the many who are not trained strategic planners. I share its essence here, knowing that some of you will find this a tad didactic and below your level of operation. I would suggest that you can view this as a refresher. Overall I have the belief and fervent hope that others will certainly benefit from it.

Goals and Objectives

There are definite similarities between these two, but it’s important to remember that Goals serve as a crucial bridge between the Vision and Objectives:

GOALS

  • Goals summarize principal program, development, administrative or other major accomplishments that the company or brand hopes to achieve in order to realize its vision and fulfill its mission.
  • Goals descend from and are validated by the vision.
  • They are general, not quantifiable. Think about this.
  • Whether goals are short or long term, they must be reviewed and evaluated annually.

OBJECTIVES

  • Support the goals and answer the "who, what, why, when, how" questions.
  • I have found it useful to use the "SMART" acronym – (I didn’t develop it) :
    • Specific - tasks and programs
    • Measurable – driven by metrics: date, outcomes, responsibility
    • Attainable - doable within time prescribed and with existing restraints
    • Results-oriented - focus on short-term activities to gain longer term goals
    • Time-determined - time frame established for completion

Strategy and Tactics

This is the most common area of confusion, exacerbated by the difference between Left Brain, process types who are laser-focused on “how will this happen?” and Right Brain visionaries who want to know “what will the intended results be?”. 

"Strategy without tactics is the slowest route to victory. Tactics without strategy is the noise before defeat."
                                                -Sun Tzu

STRATEGY

  • Think of it as the rigorous planning of a campaign
  • It should be a carefully devised plan of action to achieve an established and agreed upon goal or objective
  • Sound strategy is focused on the big picture and the long term
  • It can be defined as a planned program of direction

TACTICS

  • Tactics are limited, short or near term actions
  • Therefore they are focused on limited, immediate or short-term aims
  • They’ve been developed to solve specific problems or accomplish specific goals.
  • Tactics is how we accomplish strategy.
  • They can either be planned or ad hoc activities that respond to demands of the moment

Here’s an example:

STRATEGY

Expand presence in targeted markets to block competitive development

TACTICS

Generate increased awareness and brand loyalty through promotional activities and program sponsorship

From this point on, the tactics can get as granular as need be, perhaps being referred to as “Field Activities” or “Specific Actions” .

Vision and Mission

I am well aware that the creation of vision and mission statements is anathema to many of you, and for good reason. All too often they are mandated from above by management that feels that they are necessary but don’t know why. All too often they are created in an orgy of vague, jargonized exercises that primarily have a nightmarish quality of futility, irrelevance and redundancy about them.

Even though I tend to function in a Right Brain, organic fashion, I do have a clear and disciplined process: THE BRAND expresses THE CULTURE which expresses THE MISSION which expresses THE VISION which addresses THE NEEDS of a target audience or THE OPPORTUNITIES of the marketplace.

So we can see that Vision and Mission have a crucial place in the journey from recognizing an opportunity or need in the marketplace and the creation of a successful brand.

VISION

  • Vision describes the organization or brand and its potential impact in the future
  • It is guided by dreams, not constraints. “Visionary” – get it?
  • Ask: What do we hope will happen when our dreams are realized?

Vision inspires and serves as an internal touchstone. My theory of Internal Congruence demands that internal branding is in place before communicating to the outside world – the target market. It’s good when everyone who is part of the culture is on the same page, sharing the vision!

MISSION

The Mission has two elements:

  • It is really the philosophical expression of the values-based needs that the organization or brand meets (why you exist, how your brand changes the lives of those who engage it)
  • It should be expressed as a BRIEF summary of what the organization or brand does to meet that need. “Brief” is the key word here.

SWOT

When it’s time to engage in a SWOT analysis, I find the simplest rule of thumb is this:

Strengths and Weaknesses refer to INTERNAL dynamics and influences, and Opportunities and Threats refer to EXTERNALdynamics and influences. Often participants are loath to point the finger back at their company, or else are a bit too happy to blame their own culture for negatives that are truly the result of marketplace or economic realities. Keep them separate and clear.

FINAL MINI-EXAMPLE

Here’s how an example might roll out. This is pretty broad-brushed, but should provide some idea of what we’ve been discussing:

Goal:

Increase Sales of Drug Brand K

Objectives:

Generate sales increase of 20% in the first two quarters of the year.

Hit targets and metrics based on management-approved budgetary targets.

Penetrate specialist market through referrals programs.

Brand Strategy:

To emphasize the economic impact of deficiency through raised awareness of the value of early diagnosis and early stage supplementation

Strategic Imperative:

Generate meaningful clinical data

Leverage clinical data to expand advocacy base

Tactical Recommendation:

Develop promotional campaign utilizing alternate channel marketing (webinars, peer-to-peer-education, seminars)

Incentive-based referral program development

Become familiar with these words and the criteria that determines their usage and you will attain a level of consistency and congruence that will serve your planning well. Hopefully this primer will serve as a handy guide to develop or review planning as you move forward!

Jack Cuffari, Jack Cuffari Consulting and Brand Smacks Blog

Let's Play "Truth or Consequences": The New FTC Guides for Endorsements & Testimonials Bring Truth a Little Bit Closer

We all would agree that “As Seen on TV” is one of the great brands of all time. The brilliant marketeers behind it recognized the extraordinary power of television – people believe as true what they see on TV.

Why that is I’m sure has been the subject of enumerable studies; after all it defines who we are as consumers and sets the stage for a marketplace where the phrase “targeted consumer” takes on real meaning. Between infomercials laden with celebrity endorsement, a tried and (sometimes) true tactic for moving people closer to their wallets coupled with compelling “just like my neighbor” testimonials, and home shopping networks with live celebrities and testimonials whose “it has to be true” quality rings true for millions of people, consumers are drawn to purchase like moths to a light.

The online world has taken this phenomenon and cranked it up a notch. The more modern version of “As Seen on TV”, its sister brand “As Seen on the Internet” – is an even more powerful lure. It is extraordinary how so many people believe that the “default” for the Internet is Truth, as if there were a mysterious group of censors and law enforcement officials who were reading everything found on the Internet to ensure that anything false or fraudulent automatically was removed. If only that were so.

Social networking has taken this propensity to believe anything electronically delivered to an even higher level. People tend to believe as true what others in their electronic neighborhoods say. This tends to be the case whatever the form of visual channel, from “expert” blogs in About.com, to the thousands of pseudo-news blogs, closed social environments like Facebook or MySpace, or in some form of IM (Include Twitter here). The stories of fraudulent promotion on Twitter already are legion. Add to this the hundreds, perhaps thousands of for-hire bloggers who will supply testimonials for a fee, and the potential for online, “As Seen on the Internet” consumer deception increases dramatically.

It was inevitable that at some point the FTC would have to step in. The Federal Trade Commission historically has taken consumer fraud seriously, but the massive amounts of online fraud, ranging from paid for false testimonials to the most severe forms of identity theft , have created a new vigor in that agency.

On December 1, 2009, new Federal Trade Commission’s Guides Concerning the Use of Endorsements and Testimonials in Advertising (the “Guides”), with heightened requirements for bloggers to disclose affiliations with sponsors of those endorsements, go into effect.  See FTC Press Release dated October 5, 2009, here.  The text of the Guides, 16 CFR Part 235, is available, here.  Although these Guides are advisory in nature and do not expand the scope of liability under Section 5, they are intended to provide guidance as to how the FTC would apply governing law to various fact patterns.

The foundation for these Guides is the definition of “Endorsement” or “Testimonial” as “…any advertising message that consumers are likely to believe reflects the opinions, beliefs, findings, or experience of a party other than the sponsoring advertiser.” When such testimonial or endorsement exist, the new Guides come into play. These include some of the following:

Consumer Testimonials:

  • Must be “unsolicited”;
  • Must be truthful;
  • Must not contain any representations that would be deceptive, or could not be substantiated, if made directly by the advertiser;
  • Must be typical of what a consumer can reasonably expect;
  • or must clearly and conspicuously disclose what typical results would be;
  • No more “results not typical” which was a safe harbor under the old Guides.

Celebrity Endorsements:

  • Must be truthful; Celebrities always had an obligation to use the product and make truthful claims; the Guides clarify that a celebrity now has an obligation to ensure that the claims made are accurate.
  • Need not disclose celebrity is being paid if public will reasonably assume they are; but do need to disclose connection if in non-traditional media (a talk show for example), if not obvious celebrity is being compensated;

Expert/Organization Endorsements:

  • The expert qualifications must match the endorsement; can’t use a veterinarian to endorse a children's cold remedy.
  • If an advertisement refers to the findings of a research organization that conducted research sponsored by the advertiser, the advertiser’s relationship with the research organization should be disclosed in the advertisement.

Within the realm of “consumer testimonials” are blogger testimonials. The Guides are intended to address “professional” bloggers who receive consideration for the blogged testimonial, not the occasional individual personal testimonials, like a mom who used a particular cake mix she mentions. 

Of significance is that it is immaterial if the advertiser cannot or does not control the blogger. The issue is whether the statements are sponsored. Whether messages conveyed by bloggers or other “word-of-mouth” marketers are “endorsements” will be decided by the FTC on a case-by-case basis. The fundamental question is whether, when viewed objectively, the relationship between the advertiser and the speaker is such that the speaker’s statements can be considered “sponsored” by the advertiser and, therefore, an “advertising message.”

There are many other rules and examples identified in the Guides, and are a “must read’ for anyone using testimonials or endorsements in their marketing mix. 

The truth in advertising just got a little closer to the truth. 

Steven M. Weinberg, Cowan DeBaets Abrahams & Sheppard, LLP

Assembly-Line Sports Marketing

In just 96 hours, John Sullivan could be hawking your products. That’s right, John Sullivan. Signed. Sealed. Delivered. No muss, no legal fuss. 

Wait a minute. Who’s John Sullivan? Well, for those living under a rock, he’s the first-year starter at center for the Minnesota Vikings, and a California company named Brand Affinity Technologies has figured out how to make him, and a handful of other mostly B-list NFL players, the newest wave in sports marketing.

Impossible! Can’t be done! John Sullivan hawking my products in just 96 hours? Yup, 96 hours. According to a recent article in the New York Times, Brand Affinity has streamlined the process of celebrity endorsements to something Henry Ford would be proud of. Contracts are standard. And so are the ad treatments, which are shot generically before you attach your brand to complete the campaign. Says a Brand Affinity spokesperson quoted in the article: “A company can contact a player, come to an agreement and the next day the ads could be up.” And it can all be done online.

Well, what fun is that?

Those of us who have toiled in the trenches of marketing recognize that the process of hammering out endorsement contracts and creating first-rate marketing with that newly minted spokesperson usually takes, shall we say, a bit more than four days. 

A well-thought-out contract should explore what’s possible, rather than close the door on the big idea. I’ll let you J.D.s list out all the other reasons why this cookie-cutter approach is flawed from a legal standpoint. From a marketer’s perspective, I view this as the equivalent of propping a brand next to a celebrity cardboard cutout. Sure, it’s good for a chuckle, but does anyone really believe you’re hanging out with that bikini-clad supermodel?

Effective marketing takes integration, collaboration and creativity. And those take time. With all due respect to John Sullivan, that can’t be accomplished by speed-dating your way through a bunch of B-list NFL players.

-Jorg Pierach, Fast Horse

Describe Different

"What am I?"

Every invention begs this essential question of identity.

The answer is found in the product's descriptor. A descriptor defines a thing, categorizing it, framing it, positioning it and signaling its intended future.

A product that doesn't claim to break new ground adopts its category's standard convention. For example, a new, run-of-the-mill digital camera would be marketed as a "digital camera".

A revolutionary product, on the other hand, deserves an innovative product descriptor. And, sometimes, a me-too product benefits from one, too.

The trouble is, innovation is easier done than said.

I wrote in this article about the "brander's paradox": Human instincts make us wary of unfamiliar and different things, yet differentiation is essential to a product's success.

By definition, an innovation is unfamiliar. How can its product descriptor differentiate without triggering people's fear of the unknown?

The New York Times gives us an idea in this recent article about product descriptors,

"When people encounter something they don't recognize, they make sense of it by associating it with something familiar."

The most effective new descriptors combine familiar terms in unfamiliar ways. They make product function or form clearly understood, even upon first exposure. Novel descriptors insufficiently informative should at the very least pique interest.

Descriptors that differ

The products shown below the jump illustrate different approaches:

Starbucks VIA ready brew

It's a me-too product but you can't tell from its descriptor. This is really instant coffee, a product designator unbecoming Starbucks. "Ready brew" emphasizes the chief benefit of saving time by using current, casual vernacular.

Dreyer's Slow Churned ice cream

Food scientists have a name for everything, but that name isn't always appetizing. The dessert wizards at Dreyer's, for example, had perfected a new way to blend low-fat ice cream so it acquires the texture and richness of full-fat ice cream. In precise but dry science lingo, they called the process "low-temperature extrusion". Doesn't exactly make the mouth water, does it?

Dreyer's isn't dumb. They knew "extrusion" had no place on a quart of mint chip. They needed a term that had immediate appetite appeal. The words of their final, market-facing descriptor, "Slow Churned", taps into the semiotics of yesteryear, when food was simpler, unprocessed, and naturally indulgent. "Churned" evokes hand-mixed barrels of butter, hinting at the product's creamy richness. "Slow" connotes food that's unprocessed and handcrafted.

On the heels of Slow Churned ice cream's astounding success, Breyer's flattered Dreyer's with their imitative descriptor, Double Churned ice cream.

Disclaimer: I led the naming of Dreyer's Slow Churned ice cream as Global Director of Naming and Writing at Landor Associates.

Bing decision engine

Can't fault Microsoft for trying. Bing is a search engine, pure and simple. Although "decision engine" will never become part of the vernacular, it does suggest how Bing is different: Giving relevant information to help make a informed decision, instead of overwhelming with googlebytes of information.


Noah's Stuffed Saladwich

Coined words are hard to get right. This inventive, efficient descriptor gets mixed results. At a glance, "saladwich" looks like a real word because it begins and ends with the same letters as "sandwich" (a phenomenon cheekily called, "typoglycemia"). But "Saladwich" sounds clunky because "-wich" is not a productive suffix and doesn't normally combine with other words (unlike the "-tini" of "martini" that gives us "chocotini" and "apple-tini"). "Saladwich" will sound less contrived as it becomes more familiar.

Blackberry wireless email solution

Technology products that blend hardware, software and services are tough to describe. More often than not, catch-all words like "solution" or "system" are employed. Though vague, these words avoid long descriptors that specify all key product dimensions. "Wireless email solution" is a lot shorter than "phone, PDA, email, internet, software and services." To its credit (and my alma mater's, Lexicon), the differentiation in Blackberry is borne primarily by the Blackberry name itself, not its ho-hum descriptor.


Segway personal transporter

This NYT article discusses the difficulty of categorizing the Segway, a product that's really unlike anything else. Although the article touches on the brand name, it doesn't mention Segway's official descriptor. "Personal transporter" suggests who the product is for and what it does at a basic level, but it doesn't capture how revolutionary the product is, what it looks like or even whether it's motorized.

But a descriptor can't do everything. Like most products visibly inventive, a photo of the Segway speaks volumes. And messaging, mostly communicated through PR, does the heavy lifting of describing Segway technology and its applications.

Describing technology convergence

Each of the products above fit, more or less, into one functional category. But in electronic devices, disparate functions inevitably converge. Over time, we've seen phones integrate video cameras, music players evolve into movie players, and televisions that browse the Web.

Technology convergence presents a naming quandary: How do you categorize a product that merges others?

There are five approaches a marketer can take when describing one device that does the work of many:

  • List all of the converged technologies (e.g. "all-in-one printer, fax, scanner") Long but accurate, clear and communicative. Needs to change as new functions are added. Generic and not protectable.
  • Cite one function only (e.g. "mobile phone" [the built-in camera is not referenced in the descriptor]) Short; relies on copy and imagery to tout other functions. Doesn't suggest "new". Generic, not protectable.
  • Use one of the technology descriptors as the focus but modify it (e.g. "smartphone") Short; borrows from the familiar to aid understanding. These descriptors can take a long time to be adopted by industry and customers. It helps if the modifier is already understood from other categories and retains that meaning. May or may not be protectable.
  • Come up with something totally new (e.g. "media center") In naming, unfamiliarity is friction. Descriptors like these resist widespread adoption. They typically require a lot of time and money to gain traction. May or may not be protectable.
  • Use no descriptor at all (e.g. "iPod") This is a risky approach and is only viable when the device marketer has (1) control over all communications, distribution and sales and (2) a lot of money.

Apple has conspicuously avoided using a product descriptor per se for iPod. It turns out, they didn't need one. No distributors or resellers could tinker with Apple's disciplined and exacting messaging. At launch, the ad headline, "1000 songs in your pocket" made it clear the iPod was a portable music player.

Today, the iPod has grown in function and familiarity. So confident is Apple, they answer "What is iPod touch?" with "A great iPod. A great pocket computer. A great portable game player." When you can recursively describe your product and people get it, you've transcended product descriptors and become a category unto yourself.

The iPod answers "What am I?" with the most basic statement of identity, "I am me".

I guess if you're iPod, that's all you need to know.

Anthony Shore, Operative Words

Take the innovation descriptor challenge!

Innovations are easier done than said. See if you can come up with better product descriptors than these:

  • Segway personal transporter
  • Blackberry wireless email solution
  • The Internet global network
  • Onstar in-vehicle safety and security system
  • Wii console

Post your best ideas in the comments section.

Fair Use of 3M's Post-It Note?

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?

Affiliate Marketing

Trademark Infringement is a sticky subject online. Our first blog talked about Twitter and trademark infringement and today I want to address trademark infringement in relation to affiliate marketing

Affiliate Marketing is a process that rewards a blog or website for every customer that is brought to the company (the affiliate) that blog or website is promoting. The goal of the affiliate marketer is to bring visitors to the affiliate’s website in efforts to sell the affiliate’s products or services. Affiliate marketers will try numerous things in efforts to market these products or services in efforts to make money. In the past there have been lawsuits brought against marketers like this due to improper claims they were making about a product or service, who endorsed it, and if it worked. 

In August, a complaint like this was filed against not only the affiliate marketers but the affiliate as well. The claim is that the affiliate should be monitoring any and every marketing vehicle and message that is used in relation to its product.

A celebrity endorsement on a product is almost always a sure fire way to make a sale. Most savvy marketers know this and affiliate marketers know how to capitalize on this. One of the most powerful names for a product endorsement is Oprah Winfrey. For the past year or so, affiliate marketers have been misrepresenting her name along with Dr. Mehment Oz to market acai berry products. 

These marketers were claiming that Oprah and Dr. Oz endorsed these products for health and weight loss. In August, Ms. Winfrey and Dr. Oz filed a trademark infringement complaint against 40 marketers for the improper use of their names. This complaint is holding the affiliate companies to just as much responsibility as the affiliate marketers. It states that it would be virtually impossible for these companies to not realize that these affiliate marketers were improperly using these celebrities’ names to try to drive traffic and sales for the affiliate products.

Dr. Oz stated "The companies that are using my name to hawk these products are duping the public. I do not endorse any of these products. By falsely presenting products as ‘scientifically proven’ and endorsed by well-known figures, these companies do a gross disservice to the public health and could even pose a danger to those who believe their false and unproven claims. I am taking this step in the interest of public safety. I feel compelled to stand up against these companies and their deceitful practices." 

Companies use affiliate programs for the same reason that affiliate marketers get into them; to make money. That being said, should the companies that offer affiliate programs be held accountable for the content the affiliate marketers create and use?

—Ted Risdall, Risdall Marketing

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

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.

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

twitterrificDownload-Spam Logo-

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

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

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

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

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

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

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

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

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

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

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

Thriving In A Speeded-Up World

Moore’s Law holds that the power of an integrated circuit will double every two years. That prediction, made in 1965 by Intel co-founder Gordon Moore, has proved remarkably durable.

The continued application of Moore’s Law has taken us in a few decades from crude transistor radios to handheld information devices packing more power than entire rooms of mainframe computers that sent the first spaceships to the moon.

And it’s unleashed an unprecedented burst of creativity, as the reach of the Internet allows people from around the globe to exchange information and build on each other’s ideas at dizzying speed.

I was reminded just how far we’ve come when I ran across a 1997 law journal article on trademarks and the Internet in the course of doing a little homework for this blog post.

The article seems impossibly quaint today, explaining the concept of linking from one website to another and using quotation marks to highlight such exotic terms as “homepage,” “hits” and Web “surfers.”

A key issue at the time, according to the authors, was cybersquatting: Internet users claiming rights to domain names that were identical to federally registered trademarks. However, they believed it had been effectively settled by recent court decisions on the topic.

The Internet has no doubt been both a great boon and a tremendous headache for trademark lawyers. On the one hand, it created an entirely new field of practice. On the other hand, I can only imagine the diligence required to regularly police the entire Web for trademark infringement.

We in marketing feel the effect of the Web constantly. Each week, it seems, brings new applications, new sites, new ways of organizing and delivering information on behalf of our clients.

I’m reminded of The Education of Henry Adams, a Pulitzer-winning memoir by the journalist, historian and descendant of two presidents. In his lifetime (1838-1918), Adams saw astonishing change, witnessing the growth of the United States from a largely Anglo-Saxon, insular and agrarian society to a multicultural industrial behemoth and world power.

Adams concluded that his classical education had left him unprepared to cope with these dynamic changes, and stressed the need for individual self-education.

We’re only beginning to see how the Internet will change our world, and anything I write today may look as quaint in a dozen years as the journal article I cited above.

Still, I’m convinced that all of us – trademark attorneys, marketers and virtually everyone else – should heed Adams’ advice.

We all need to take responsibility for our own self-education to keep up with the rapid changes around us. Stand still and you risk being left behind, wondering why nobody is interested in your stories about the latest cybersquatting case.

John Reinan, Senior Director of Media Relations at Fast Horse