Duets Blog : Creativity and the Law: DuetsBlog

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

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

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

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

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

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

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

More than a few have weighed in on the baseball team's controversial continued use of "Chief Wahoo": Here ("Mascot League Baseball"), here, here, here, here, here, here, and here.

It apparently took a Yankees fan to point out the "irony" of the "Cleveland Indians" signing a sixteen-year deal in 2008 to play ball in "Progressive Field" -- the re-named "Jacobs Field" (in favor of the well-known and deep-pocketed Cleveland-based insurance company).

In addition, now that the team has relocated spring training to a new ball park in Goodyear, Arizona, it appears the team is de-emphasizing the Chief Wahoo logo, in favor of the innocuous "I" script and "C" block logos, although the team spokesman maintains that "Chief Wahoo" is not being "phased out." Could the diminished use of "Wahoo" have anything to do with the fact that Arizona has more Native American residents than every other state besides California and Oklahoma? Could it be the team is trying to save a little face with a gradual phase out, or re-brand, if you will?

Finally, the team's MLB website shows a fairly sparse use of "Chief Wahoo," so why hang on at all?

Bottom line: If the team wants to save just a little bit of face, it ought to stop showing Wahoo's face altogether, period.

I got to thinking about the word MEMORIAL, and how my memory couldn't produce awareness of a single MEMORIAL brand, besides lots of different hospitals. When I took a closer look on the U.S. Trademark Office's on-line search-able database, the sense of my memory was validated in that the word MEMORIAL clearly is not a popular trademark term, only appearing in about 300 currently live trademark applications or registrations, and far fewer than this if medical/hospital services are excluded from the list. In addition, with only a few rare exceptions, the word MEMORIAL is never arbitrary or suggestive, but instead, generic or immediately descriptive of the goods or services covered by those applications and registrations.

Moreover, the most obvious Internet domain names seem to confirm how little this word is touched by any creativity in branding. Memorials.com sells on-line what you might imagine, memorials. Memorial.com contains sponsored links concerning, you guessed it, memorials.

Why won't creative naming consultants touch this word? What is it about the word MEMORIAL that seems to limit its trademark value to merely descriptive uses? Are there not more creative possibilities for using MEMORIAL as a brand name? Here's one suggestive example I came up with, what about MEMORIAL for insecticides, pesticides, or herbicides?

Now, recalling what you have already learned about the important distinction between descriptive and suggestive trademarks, here and here, what are some other kinds of goods or services that could be branded -- as suggestive, not descriptive -- under the MEMORIAL name?

Instead, millions upon millions of dollars continue to be spent defending trademark registrations that never should have been granted in the first place under Section 2(a) of the Lanham Act, which forbids the federal registration of a trademark that "consists of or comprises matter" that "may disparage" persons or "brings them into contempt or disrepute".

John Welch over at the TTABlog did a thoughtful post earlier this week summarizing the history of the seventeen year old trademark case that I filed on behalf of seven prominent Native American leaders back in September 1992 (Harjo et al v. Pro-Football, Inc.), with the latest unfortunate ruling on appeal, here. Basically, in this latest and final ruling in the Harjo case, the D.C. Circuit Court of Appeals affirmed the D.C. District Court's ruling that even the youngest of the Native American Petitioners, Mateo Romero, had slept on his rights and not pursued the cancellation action soon enough after reaching the age of majority. He was twenty-six when he brought the cancellation action in 1992 and one of the registrations he challenged had only issued two years earlier in 1990.

In 1999, when I left the case, the Harjo Petitioners had prevailed on the merits and successfully argued to the Trademark Trial and Appeal Board (TTAB) that cancellation actions based on the "may disparage" language are rooted in "public policy" so a laches defense should not even be available or apply, here. Five years before ordering that the team's Redskins registrations be cancelled, the TTAB had wisely held in 1994 "there exists a broader interest -- an interest beyond the personal interest being asserted by the present petitioners -- in preventing a party from receiving the benefits of registration when a trial might show that [the team's] marks hold a substantial segment of the population up to public ridicule."

The good news, however, even in the face of the D.C. Circuit Court of Appeal's disappointing ruling on laches, is that there is a brand new generation of Native American Petitioners, led by Amanda Blackhorse, to make sure that a brand new similar case is actually and finally decided on the merits. In fact, doesn't this development demonstrate why the 1994 ruling that struck the team's laches (slept on rights) defense was correct in the first place? The fact that, as long as the offensive team name continues, there always will be new Native American Petitioners reaching the age of majority anxious to object shows that their cause of action is rooted in public policy, not some personal and individual right that might be waived by failing to act quickly enough.

Again, putting the legal issues aside, why doesn't the team do the right thing, as a responsible business, and hire a branding guru to engage in some serious and successful re-branding?

UPDATE: Supreme Court Requested to Review Washington Redskins Trademark Case.