Name That (Zombie) Brand

Posted on February 17, 2010 by Guest Blogger

Losing a trademark challenge is bad news, right? It’s costly, it’s embarrassing, and it can damage a brand’s reputation.

And yet in one well-known instance, losing a trademark challenge didn’t hurt a brand at all. In fact, it ensured the brand’s immortality.

The product name I’m thinking of existed for just three years in the 1990s before the death-dealing trademark challenge. The company name survived in slightly altered form; the product name was replaced by a series of successor names.

Now, more than eleven years after that legal defeat, the original product name is still used, erroneously but ubiquitously, to describe an entire class of products—products that themselves exist mostly as fading memories.

What's the product name?

I'll give you one more hint: it's a technology brand.

Answer after the jump.

The product name is PalmPilot, the first-generation personal digital assistant (PDA) introduced in 1996 by Palm Computing, then a division of U.S. Robotics. The Palm trademark was challenged by pen manufacturer Pilot, which had used "Pilot" as a brand name for its products since 1918. Palm lost, and since 1998 no Palm product has borne the Pilot name. 

In fact, Palm no longer makes PDAs at all. Instead, it makes smartphones or app phones (Treo, Centro, Pixi), which have subsumed the old PDA category and added innumerable extra functions.

And yet...

"PalmPilot"—sometimes rendered as Palm pilot or palm pilot—refuses to die. Here are a few examples from 2009 alone:

[A]s Professor Tushnet of Georgetown Law School has documented for her trademark law class, a 2004 Palm pilot [sic] ad campaign included the catchy slogan: “go places, google things.”

—"The Power of the Brand As Verb," New York Times, July 19, 2009. (There was no PalmPilot in 2004.)

"I've been reading ebooks on my Palm Pilot for 5 years."  "I've been reading ebooks for years, first on a Palm Pilot and now on an iPhone."

—Comments #11 and #13, "Cellphone Apps Challenge the Rise of E-Readers," New York Times, November 18, 2009. (The PalmPilot was never capable of being an e-book reader, and the brand hasn't existed during the last five years.)

Someone apparently removed a screen to a ground-level window and took two Palm Pilot PDAs, valued at $400 each.

—"The Grinch Who Stole the Snow Blower," in The Local, the New York Times's New Jersey blog, December 22, 2009. (Even as antiques, PalmPilots probably wouldn't be valued at $400.)

I don't mean to pick on the Times exclusively. Here's a recent example from the New Yorker:

Next to the chimney, on top of the stove, is a piece of black duct tape with a small silver disk beneath it. Plug the disk into a Palm Pilot, and it will tell you exactly when and for how long that stove was used in the previous month.

—"Annals of Invention: Hearth Surgery," by Burkhard Bilger, December 21/28, 2009. Full text available only to subscribers; abstract is here. Citation is on page 91 of the print edition.

And how about this, from the Cape Cod Times:

In an era when Internet access is available in the palm pilot of your hand, it's hard to believe that some Massachusetts residents still struggle for a Web connection.

—"State-federal link boosts Web access," December 27, 2009. And just a couple of weeks ago, when former vice presidential candidate Sarah Palin was photographed in Nashville referring to notes scribbled on her hand, several commentators joked about the "Palin Palm Pilot." (The Times of London called it "the Hillbilly Palm Pilot.")

I think that's enough evidence to make my point. PalmPilots: dead. PDAs: dead. And yet PalmPilot/Palm Pilot/palm pilot lives on!

It's as though all video games were today generically known as Pong. Or as though you called your iPod your Walkman. 

What accounts for this persistence of memory? Your guess is probably as good as mine. Yes, the double-P alliteration is catchy, but no catchier than some other less-successful brand names. PalmPilot was one of the earliest PDAs to be offered, but it wasn’t the first. Maybe the familiar associations of both “palm” and “pilot” helped make the PalmPilot’s breakthrough technology more approachable and thus memorable.

Or maybe it was a pair of New Yorker cartoons—both of them published in 2000, after the brand was officially dead and buried—that guaranteed the PalmPilot’s robust afterlife. One depicted an actual airline pilot (“This is so cool! I’m flying this thing completely on my Palm pilot!”—note lower-case “pilot”). The other showed a hooker leaning into a prospective client’s car window and offering, “For an extra fifty bucks, I’ll let you show me your Palm Pilot.”

Can you think of another brand with such a short life and such a long-ago death that survives in everyday parlance? I can't.

 —Nancy Friedman, Chief Wordworker at Wordworking
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False Advertising Claims on the Rise

Posted on November 25, 2009 by Karen Brennan

There was a very interesting article in the New York Times this weekend worth reading - Best Soup Ever?  Suits Over Ads Now Seek Proof.

The article addresses several recent issues raised by companies against competitors over statements or claims being made in advertisements.  Specifically, companies are challenging the truth or implied truth in competitive ads in an attempt to get the ad withdrawn or changed.

Apparently, the number of complaints over advertisements with the National Advertising Division, as well as the number of false advertising lawsuits (under Section 43(a) of the Lanham Act) are up significantly.  Some interesting disputes from the article include:  

  • AT&T sued Verizon Wireless over an ad chart, claiming it falsely implied that AT&T had no cell phone coverage in the white area (rather than no 3G coverage):

The lawsuit attacks use of the chart in several commercials.  One great example, is Verizon's Island of Misfit Toys commercial.  In this holiday commercial, out-of-date toys have been banished to an island where Verizon sends one of AT&T’s new phones, due to its allegedly inadequate coverage.  On a related note, the National Advertising Division recently recommended that Sprint discontinue its use of the claim "Most Dependable 3G Network" due to a lack of sufficient support for the claim. 

  • Pantene attacked Dove’s claims that its conditioner repairs hair better.  According to the Times, Dove defended its claims with a market study and an expert to defend its use of “wet combing” versus “dry combing” technique.   Based upon a quick review of a few blogs, these two companies are in direct competition over solving the frizzies (for examples, see here and here). 

The Times article suggested defending such claims sometimes requires “delving into the minutiae” and raises the question of whether most consumers actually believe and/or rely on statements such as “no other dog food stacks up” or a hair care product that can really “repair hair better.”  Regardless, it is a great article for anyone interesting in marketing. 

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Lies, Damned Lies, and Statistics: Advertising on the Internet

Posted on October 2, 2009 by Dan Kelly

Professors at the University of Pennsylvania and at UC Berkeley School of Law released a study this week conclusively titled "Americans Reject Tailored Advertising," suggesting that there is high resistance among individuals to tailored advertising on the Internet.  (Press release from Penn here, NYT coverage here.)  Although I have been unable to download a copy of the study, it apparently suggests that there is a desire for legislation in this area.  From the Penn press release:

The Berkeley-Annenberg team found that 92 percent of those polled agree there should be a law that requires websites and advertising companies to delete all stored information about an individual, if requested to do so.  Sixty-three percent believe advertisers should be legally required to delete information about their internet activity immediately, whether requested or not.

Apparently, these findings are not without controversy.  In March, a company called TRUSTe, a self-proclaimed "leading internet privacy services provider," released survey results suggesting that people are increasingly comfortable with being tracked on the Internet, and that they are really more annoyed by advertising that is irrelevant to their needs and wants. 

I have not had the chance to wade through both studies, each of which is based upon its own survey of about 1,000 individuals, but it seems to me simply from reading the press releases related to each that both studies suffer from problems of bias.  In addition, I ran across a headline this week that sales of Internet advertising are outpacing sales of TV advertising in the U.K.  I understand that this statistic is not directly on point:  it is U.K. data, not U.S. data, and it does not distinguish targeted ads from non-targeted ads.  Even so, it seems to me that whatever the studies and surveys supposedly say, or are designed to convey, there seems to be a rather robust market for advertising on the Internet.

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Supreme Court Asked to Review Washington Redskins Trademark Case

Posted on September 17, 2009 by Steve Baird

Back in May, I wrote a piece entitled "Re-Branding Madness in Washington" Overlooks Obvious: The Washington Redskins," discussing the trademark cancellation action that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), and calling for the football team to "hire a branding guru to engage in some serious and successful re-branding."

Well, the 2009 football season is now upon us, and it appears my re-branding call has fallen on deaf ears, at least for now.

Yesterday the Washington Post "reported" the case may be heard by the U.S. Supreme Court.

What I found most interesting about the brief 197 word story in the Washington Post is that the "reporter" used the word "activist" three times and "group" twice, to describe the distinguished Native American leaders I know, without referring to them as individuals or even as being Native American (without the "activist" pejorative), leading me to wonder what yard-line his seats might be located at in FedEx Field.

For what it's worth, at least the Associated Press, ABC News, NBC Sports, ESPN, Yahoo News, WTOP.com, WUSA9.com, New York Times, New York Post, Miami Herald, San Francisco Chronicle, Seattle Times, Sports Illustrated, The Washington Times, and CBS News, have all managed to report the story without employing the highly-charged and politically-loaded term "activist," instead neutrally referring to the petitioners as "Native Americans" and "American Indians," who are offended by the team name.

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Just Verb It? Part III: Testing the "Slippery Slope" of Using Brands as Verbs

Posted on July 30, 2009 by Steve Baird

Although intellectual property lawyers of the Dr. No variety may not like to admit it -- I submit that, not all slippery slopes are created equal. While some slippery slope cautions might prevent a few bumps and bruises in traveling along a particular path (e.g., the one on the left below), I suspect far fewer slippery slope cautions actually prevent life-ending falls from perilous cliffs (e.g., the one on the right below), yet other man-made slippery slopes specifically are designed for fun and enjoyment -- not danger -- and have generated enormous sales over the years (e.g., WHAM-O's SLIP'N SLIDE brand products).

      

 

 

 

 

 

 

 

 

 

 

So, putting aside Professor Douglas Walton's teaching that the slippery slope argument is "often treated as a fallacy," it is worth asking what brand of slippery slope most accurately represents the risk associated with marketers using their brands and trademarks as verbs?

As discussed in Part I of my Just Verb It? series, many marketers love the idea of having their brands embraced as verbs, but many trademark lawyers totally forbid any "brandverbing," i.e., "mis-using" brands (adjectives) as verbs: "Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors."

No doubt, genericide -- the ultimate fear of using brands as verbs -- equals certain trademark death, a horrible result from both marketing and legal perspectives; but, I submit it doesn't necessarily follow that brandverbing activities automatically result in trademark death or genericide. To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?

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

As discussed in Part II of my Just Verb It? series, significant companies like Microsoft, Culver's Restaurants, and Yahoo! have all used at least some of their brands as verbs, so I asked "what do these companies know or at least believe that others on the 'straight and narrow' don't know or at least believe?" Perhaps they appreciate that not all slippery slopes are created equal? On the other hand, Yahoo! appears to have erased the brandverbed Do You Yahoo!? bumper sticker that I highlighted was being sold on the Yahoo Company Store website only five weeks ago. Does this signal a desire by Yahoo! to rethink or attempt to erase its brandverbing history? If so, there is some more clean up or erasing needed as other brandverbed items remain for sale there, such as the Do You Yahoo!? pencil, selling for 85 cents, described this way: "Our signature slogan makes a great statement on the classic BIC® pencil." So, Yahoo!'s "signature slogan" consists of a brandverbed phrase. This shouldn't result in trademark suicide, but we'll see how long this item lasts.

The New York Times certainly considers the "verbing up" of brands to be a timely and hot topic, as evidenced in Noam Cohen's July 18 article entitled "The Power of the Brand as Verb," where he reports: "It once would have been unthinkable for a company like Microsoft to encourage people to use its (Bing) brand name so cavalierly. Businesses feared that if their product name became a verb, then it would lose its individual identity." (My previous discussion of Bing, here).

Going forward, will companies like Tivo continue to utilize the slippery slope argument to forbid any amount of brandverbing? Or will they soften these kinds of black/white statements?: "Trademarks are never verbs. It is never permissible to use any of our trademarks as verbs." How about Palm? Adobe?

Given the apparent marketing and business value associated with having brands embraced as verbs, I submit that creative trademark types and marketers can and should work together to find ways of mitigating the extreme risk of trademark genericide without bowing to the slippery slope argument that forbids any brandverbing whatsoever. 

Stay tuned for Part IV of the Just Verb It? series, and my concluding thoughts about how to avoid or mitigate the risk of trademark genericide without embracing the slippery slope and resorting to black and white prohibitions on any and all brandverbing activities.
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