Duets Blog : Creativity and the Law: DuetsBlog

If you don't mind the wait, a crowded parking lot is often a good strategy when hunting for an excellent restaurant while you're in unfamiliar territory. Similarly, a large crowd lining up outside a retail store is typically a good sign that the business is doing something right, or perhaps, they just happen to have something rare that everyone wants.

Parties are often said to be happening -- and have more energy -- when crowds of people descend upon them. But, what about when there is a crowded field of trademarks, as appears to be the case with a collection of highly similar brand names for retail party supply stores? Is the usually beneficial crowd phenomenon in this context, a good thing, or not?

As you might have imagined, it depends on your perspective and what you happen to be looking for in a retail store brand name.

If, for example, you're wanting -- or your client is wanting -- to open a party supplies store, using a two word name, with PARTY being the first term, you might be inclined to start the music and begin to party when your trademark counsel advises that:

1. PARTY LAND is federally registered in  connection with "retail party supplies, paper goods, gifts and balloons store services";
2. PARTY CITY is federally registered for "retail party supply store services";
3. PARTY FAIR is federally registered for "retail store services in the field of party goods";
4. PARTY SUPERMARKET is federally registered for "retail store and distributorship services in the field of party supplies, party favors and novelty items";
5. Federal registrations for PARTY UNIVERSE, PARTY WORLD, PARTYTIME U.S.A., PARTY AMERICA, PARTY PLACE, PARTY DEPOT, PARTY PLAZA, PARTY MART, PARTY TIME, PARTY GRAS, and PARTY ANIMAL, all have expired or become cancelled; and
6. PARTY AMERICA, PARTY PRODUCTS, PARTY CELEBRATION, PARTYCHEAP.COM, PARTYSECRET.COM, and PARTYPRO.COM, among others, all appear to peacefully coexist in the marketplace and at common law.

Before you break out the bubbly, however, consider a couple of cautions, some legal, some not:

• While on the one hand, given the commercial landscape described above, there are reasonable arguments of coexistence for yet another PARTY _____ retail store, on the other hand, there also are a multitude of possible plaintiffs just waiting to take an unrealistic view of the scope of their rights, around the time your venture looks like it might be successful;
• The expiration and/or cancellation of registered trademarks doesn't necessarily signal that any underlying common law and unregistered rights have been abandoned;
• Assuming you are able to coexist, is that really what you want with a new business venture? Isn't it better to stand out from the crowd to facilitate your ability to differentiate? and
• Instead of simply blending into the existing commercial landscape, isn't a more unique and distinctive name with more potential for owning a broader scope of rights, better?

Finally, at the risk of taking the party theme just a bit too far in illustrating these important points about the pros and cons of adopting trademarks in a crowded field, you might want to refer to my post from last year entitled Taking the Cake with Suggestive Trademarks, where the coexistence of General Mills' Super Moist, Pillsbury's Moist Supreme, and Duncan Hine's Moist Deluxe cake mixes all peacefully coexist (in direct competition) on the very same grocery store shelves.

To me, it's one thing to have a weak product mark, when the house mark is strong or even famous, as is probably the case with General Mills, Pillsbury, and Duncan Hines, since they likely are what carry the bulk of the goodwill associated with each product, but it's quite another to knowingly adopt a weak name in a crowded field, when that name is the name of the business and intended to carry the bulk of the goodwill associated with the business.

What do you think? When can a weak and crowded trademark play a valuable role in the overall branding strategy for a business?

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My trademark antennas automatically rise when I hear about a brand owner announcing plans to trade in one brand for another, as GM recently and surprisingly did with the Chevy nickname (brand and trademark), in favor of the longer and more formal Chevrolet brand name (and trademark). Hat tip to Nils Montan of IPAlly, for spotting GM's Chevy veering toward the levee.

These sorts of announcements can be hazardous because, in my experience, many brand owners fail to appreciate that trademark rights are immediately abandoned when use is stopped with no intention to resume use. Moreover, many marketers fail to appreciate that token use won't save trademark rights from becoming abandoned.

Putting aside the somewhat complicated issue of "lingering goodwill," once abandonment has occurred, the mark enters the public domain, free for anyone else to adopt, use, and own. For more on trademark abandonment, you might want to check out my prior post entitled Dialing in on Trademark Abandonment.

Having said all that, GM, trademark types, and others can rest easy, with the Chevy "pink slip" debacle, since GM had not even come close to ceasing use of the Chevy trademark when it announced the plan for a brand name overhaul. In addition, it appears that the planned brand name overhaul has now been recalled. Fortunately for GM, an expressed intention to stop using a brand only triggers abandonment once all bona fide use has ceased. GM is so deeply invested in use of the Chevy brand and trademark, it is hard to imagine how long it might take to cease all use, even if it really tried.

So, why the announcement? What's the point? Why even toy with voluntarily discarding such valuable intellectual property rights? Was it a test to see if anyone cared? If not, why favor three syllables over two anyway?

In a world where there is a clear trend toward truncation and informality (Coca-Cola and Coke, Gatorade and G, Bubblicious and B, Stride and S, Federal Express and Fedex, Radio Shack and The Shack, Pizza Hut and The Hut, Vanderbilt and Vandy, Villanova and Nova), one must wonder whether "the good 'ole boys were drinkin whiskey and rye," when they issued this ill-conceived memo to "Chevy" employees:

Chevrolet Team,

We wanted to write you a quick note requesting your support of our Chevrolet Brand. When you look at the most recognized brands throughout the world, such as Coke or Apple for instance, one of the things they all focus on is the consistency of their branding. Why is this consistency so important? The more consistent a brand becomes, the more prominent and recognizable it is with the consumer. This is a big opportunity for us
moving forward.

As you know, we are investing substantially to improve the consistency of our retail facilities through the EBE process. Aside from the facilities aspect of our branding, there are many other ways in which we can demonstrate this consistency. One way to achieve this is with the use of Chevrolet vs. Chevy. We’d ask that whether you’re talking to a dealer, reviewing dealer advertising or speaking with friends and family, that you communicate our brand as Chevrolet moving forward.

We have a proud heritage behind us and a fantastic future ahead of us … speaking to the success of this brand in one consistent manner will ensure Chevrolet becomes even more prominent and recognizable than it already is.

Thank you for your support of this effort!

Alan and Jim

P.S. We put a plastic “Chevy” can down the hall that will accept a quarter every time someone uses “Chevy” rather than Chevrolet! We’ll use the money for a team building activity.

Putting aside the hailstorm of criticism that already has pummeled the memo, to me, brand consistency means GM always spells the Chevrolet brand name the same way, not alternating, for example with this mispelling: Chevrolay. In addition, it means, GM always spells the Chevy brand name the same way, not alternating, for example with these mispellings: Shevy or Chevee. It doesn't mean a choice is required between Chevrolet and Chevy, they are not mutually exclusive brand names, both can live together, in fact, they can and do complement one another, in my humble opinion, as a multiple Chevy owner and trademark type.

So, while GM's CHEVY trademark registrations covering goods in Int'l Classes 16, 25, and 28, and the CHEVY TRUCKS registrations covering goods in Int'l Classes 14, 20, 21, 25, appear undamaged by the memo debacle, what about GM's intent-to-use trademark application for the CHEVY mark covering goods in Int'l Classes 7, 8, and 9, wherein an extension of time to file a Statement of Use was filed on June 7, 2010, just a few days before the Chevy memo published? Let's just say that if there was no bona fide intent to use the CHEVY mark on the goods listed in the extension request on June 7, this application and any resulting registration, is vulnerable to attack, even if use on other goods has not ceased.

Briefly back to the reason for the memo, perhaps GM was really concerned about Chevy Chase Bank truncating to Chevy, and diluting GM's Chevy rights, or perhaps, conflicting with GM plans to open a Chevy bank, since Chase, the other possible truncation of Chevy Chase Bank, is already taken. Who knows?

More seriously, do you buy GM's international explanation for the memo?

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

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This sponsored banner ad is currently appearing in AdAge's Daily News on-line newsletter:

How many boxes of tissue do you suppose this ad is responsible for selling?

If the answer is none, that is probably fine with Kimberly-Clark since the return on investment for this ad is measured quite differently, I'm sure, given how the frequently misused Kleenex® brand is currently enjoying the lofty status as one of The 100 Best Global Brands. No doubt, Kimberly-Clark would like to keep not only this annointed status, but even more basically, it would like to keep the status as a brand and protectable trademark intact too.

In all likelihood, trademark types are behind this kind of advertisement, or perhaps more properly termed, "public service announcement," and they also are probably behind the "brand tissue" phrase, closely following each use of the brand name Kleenex®. Both measures help emphasize to consumers that Kleenex® is a brand of tissue coming from a single unique source, not a type or category of tissue coming from a variety of different competing sources.

These kinds of precautions are important educational steps a trademark owner can take when a meaningful portion of the public may misuse the brand name as a generic term. They are designed to shape the public's proper use of the trademark, and, hopefully, prevent the trademark owner's ultimate fear: Genericide. Indeed, we previously noted Kimberly-Clark's success to date on this very subject:

[W]hen the public misuses a famous trademark as a generic term and the brand owner risks losing exclusive rights through changes in the common meaning of the term. Avoiding the risk of this happening is something Kimberly-Clark® knows more than a little about, I suspect. No doubt, the legal team at Kimberly-Clark® has done an impressive job of preventing the KLEENEX® brand from following former brands like ESCALATOR, TRAMPOLINE, and ZIPPER, to name a few, into the unpleasant graveyard of genericide.

In the end, however, trademark owner's efforts aside, the public will decide the issue of genericide, as we have discussed before:

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.

So long as the "majority of the relevant consuming public" (more than half) continue to understand Kleenex® as a brand, the exclusive trademark rights will remain intact.

If you read AdAge, congratulations, apparently we are part of the "relevant consuming public," or perhaps you are viewed as someone who has influence on how the "relevant consuming public" perceives the Kleenex® brand.

I hope I did my part here, now it's your turn.

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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?

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Best Buy, owner of the Geek Squad brand since 2002, has filed a federal trademark infringement complaint in Minnesota against a pair of individual defendants apparently located in Missouri and California, for allegedly registering and using <thegeekpatrol.biz> domain and the names "Geek Patrol," "Geek Squad," and "Geek Squad Patrol". Here is a copy of the Complaint, including Exhibit A (Trademark registrations), Exhibit B (DomainTools.com print out), Exhibit C (Tollfreeda.com print out), and Exhibit D (Superpages.com print out).

For those of you interested in great entrepreneurial stories, Robert Stephens founded Geek Squad while a student at the University of Minnesota, riding his bicycle around Minneapolis to make computer house calls. The stylish collection of branded Beetles permitted Stephens to cover much more ground when making house calls or office calls. I actually had the pleasure of meeting Robert Stephens and toured his humble first office located above Moose & Sadie's cafe and coffeehouse blocks from downtown Minneapolis. He gave me and my wife what are now vintage Geek Squad t-shirts, obviously we should have had them autographed at the time!

My early and initial observations of the Geek Squad trademark Complaint are below the jump.

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Airbrushing is a familiar technique among advertisers looking to avoid the risk of trademark infringement or dilution liability when branded props of others appear and would otherwise be recognizable. It can work well when removing a traditional visual trademark, i.e., a logo or word mark, because there can be no likelihood of confusion with (or dilution of) a visual mark when the claimed mark cannot be seen. 

But what about when a branded prop dominates the ad or the identifiable trademark is another's product container or package, a single color, trade dress, or perhaps the shape or configuration of the product or prop itself? What is critical for advertisers to appreciate is that when non-traditional trademarks are the subject of the ad and concern, the airbrush and any digital manipulation are less helpful and may be entirely ineffective in erasing trademark liability.

By way of a hypothetical example in the non-alcoholic beverage world, airbrushing the Coca-Cola word mark may not be sufficient to avoid liability, so long as the distinctive Coca-Cola bottle is left intact, say, in a Chevrolet ad. Likewise, by way of another hypothetical example, this time in the alcoholic beverage world, presumably the current owner of the Schlitz brand would object to another's commercial use of its distinctive Schlitz label even if the Schlitz word mark was airbrushed or otherwise removed.

Now, for a not so hypothetical example concerning Schlitz' ads, continue reading after the jump.

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