Duets Blog : Creativity and the Law: DuetsBlog

Unbelievably, the MTV show Jersey Shore has presented even more material to blog about (see Sharon Armstrong's previous blog Trademark Lessons from Jersey Shore here). 

Jersey Shore cast member Nicole “Snooki” Polizzi is attempting to federally register her nickname “Snooki” as a trademark for books.  Unfortunately, the United States Patent and Trademark Office has initially refused registration based upon a prior registration for “Adventures of Snooky” in connection with a series of children’s books.  The Smoking Gun reports the Snooky books feature a cat who gets knocked overboard on a family fishing trip.  Interestingly, the authors of the Adventures of Snooky books reside in New Jersey (check out the link here – isn't that the Jersey Shore behind them?).  

I am going to go out on a limb and guess that Snooki from Jersey Shore is not going to write children's books.  Thus, perhaps she could simply amend her description of goods to read “books, specifically excluding and most definitely not for children." 

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Last September, in my blog post entitled "What Does Trademarked Mean to You?," I wrote:

More than a few trademark types cringe when their clients or others say things like "let's trademark it," "they didn't trademark their logo," or "we don't want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “'Trademark' is not a verb. There is no such thing as 'trademarking' a word or phrase." Similar views are expressed here, here, and here.

Well, a couple more of the cringers have raised their hands.

Our good friend John Welch over at the TTABlog reported yesterday that he doesn't like "seeing the word 'trademark' used as a verb," and he republished a recent article by Daniel Kegan entitled "The grammar of intellectual property: Copyright is a noun, trademark is an adjective," originally published by the Illinois State Bar Association, linked here. In his article, Mr. Kegan similarly writes: "Trademark is an adjective, not a verb."

Actually, according to the English dictionary, "trademark" is both a noun (you know, a person, place or thing?) and a verb (an action):

trade·mark

–noun

1.

any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate his or her goods and to distinguish them from those manufactured or sold by others. A trademark is a proprietary term that is usually registered with the Patent and Trademark Office to assure its exclusive use by its owner.

2.

a distinctive mark or feature particularly characteristic of or identified with a person or thing.

–verb (used with object)

3.

to stamp or otherwise place a trademark designation upon.

4.

to register the trademark of.

Indeed, even this quote from Mr. Kegan's article confirms the proper use of "trademark" as a noun: "A trademark is obtained by use." This is a correct statement of fact and law, but the word "trademark" is clearly the object -- the thing -- of this sentence, i.e., the noun. Furthermore, with respect to the proper use of "trademark" as a verb, as I have previously written:

[T]he words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; 'trademarked goods'".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

Given the various definitions for these words, the speaker might mean labeling a product or advertising material, utilizing or marking such materials with the appropriate trademark notice or symbol, registering a trademark or service mark, or perhaps, all of the above. Since the described actions (labeling and registering) are quite distinct, it becomes important to seek clarity on the speaker's intended meaning.

So, again, really, what's the big deal?

No need to cringe, in my humble opinion, this is just another example of where the use of a word in the English language begs for some follow-up questions by the listener to clarify the speaker's intended meaning. Seems to me this potential for confusion is an opportunity for us trademark types to engage the speaker by asking some questions and then offering to explain and enlighten.

Where do you camp on this issue? Are you a cringer when it comes to IP grammar?

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The Tavern on the Green dispute came to a swift end, for the time being. U.S. District Court Judge Miriam Cedarbaum granted summary judgment in favor of the City of New York, ordering cancellation of LeRoy’s federal trademark registration for the TAVERN ON THE GREEN mark in connection with restaurant services on the basis of fraud. (See opinion here.)  On May 6, 2010, LeRoy filed an appeal.  For a detailed background on this case, see my prior blog posts here and here. 

By way of brief background from the opinion, the Tavern on the Green restaurant opened in 1934.  In 1973, LeRoy Adventures entered into a license agreement with the City of New York to operate the Tavern on the Green restaurant in Central Park.  After losing a bid to renew the restaurant lease to another party last year, LeRoy and the City of New York were disputing ownership of the valuable TAVERN ON THE GREEN trademark. 

The license agreement between LeRoy and the City provided for certain approval and oversight by the City and included a provision wherein the licensee could change the name of the restaurant upon written approval. The agreement was later revised, giving more control to the City and removing the name change provision. 

In 1978, LeRoy filed a federal trademark application for the TAVERN ON THE GREEN mark in connection with restaurant services claiming a date of first use of August 31, 1976 – the date LeRoy reopened the restaurant after renovations were complete.  As part of the application, LeRoy signed a declaration of exclusive ownership of the mark (noting that to the best of his knowledge and belief, no other party had a right to use the mark).  The City’s fraud claim is based on the fact that  LeRoy signed the declaration and did not disclose the license agreement with the City or acknowledge his status as a licensee. 

The City claimed it was not aware of the federal registration until 2006, at which time it requested that LeRoy assign all rights to the City. LeRoy declined, disputing the City’s claim of ownership of the mark. LeRoy filed a second federal trademark application for the TAVERN ON THE GREEN mark in 2007 in connection with “cooking oils, salad dressing and dipping oils.”  While the City filed two extensions of time to oppose the application, it did not oppose and the application registered in 2008. 

The City prevailed in its fraud claim.  The Court ordered cancellation of the registration after finding that LeRoy’s failure to disclose the license agreement was a deliberate and material omission regarding another’s right to use the mark, justifying cancellation.  The Court noted that LeRoy “adduced no facts which would permit a reasonable fact finder to conclude that LeRoy’s conduct was anything but a deliberate attempt to mislead the PTO.”  The Court held that by entering into the agreement, LeRoy acknowledged the City’s right to the trade name “Tavern on the Green” and, accordingly, found that the undisputed facts established that LeRoy deliberately attempted to mislead the PTO about his status as a licensee. 

Without knowing the facts apart from those in the opinion, I was left with some questions as the finding of fraud in this situation. 

Last year, the Federal Circuit held that fraud in procuring a trademark registration occurs when an applicant knowingly makes a false, material representation of fact in connection with his application.” (See In re Bose available here.)  An “intent to deceive, however difficult to prove, is an indispensable element in the analysis” which must be proven by clear and convincing evidence by the party claiming fraud. (Id.) 

The Court appears to place the burden of proving intent on the registrant, LeRoy, rather than the party seeking cancellation.  The opinion does not discuss any evidence as to an intent to deceive, but rather the absence of any evidence to the contrary submitted by LeRoy.  The opinion also suggests that LeRoy did not believe that the agreement dealt with trademark rights in the name (suggesting an argument made by LeRoy that the license agreement was not a “trademark license agreement”).  Thus, it appears LeRoy argued that he believed he was the owner of the mark at the time the application was filed (no intent to deceive the PTO).  In addition, the fact that LeRoy made similar claims of ownership in 2006 when the City sent him a letter requesting the assignment of the registration supports the notion that he believed he owned the mark. 

As noted, Leroy has filed an appeal and, once again, we will have to wait and see what happens. 

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While watching the Academy Awards on Sunday night, the winner of the Animated Short Films category definitely caught my attention. The winner was Logorama - a 16-minute French anumation created around the use of 3,000 well-known trademarks.  

The plot is described as a police chase through Los Angeles which includes a machine gun-toting Ronald McDonald who is a fugitive running from the police, played by the Michelin men.  Every inch of the picture is made up of a trademark, logo or character, instantly causing sensory overload (see a prior blog by Brent Lorentz titled Sensory Overload here).  According to Wikipedia, the creators described the film as the presentation of “an over-marketed world” where “logotypes are used to describe an alarming universe (similar to the one that we are living in) with all the graphic signs that accompany us everyday in our lives.”   During his Oscar acceptance speech, the producer opened by thanking "the 3,000 unofficial sponsors" and assured them that "no logos were harmed in the making of the project."

Talk about Logorama is heating up on the Internet with most people wondering how they got away with it.  In a brief clip, I noticed sporadic use of the registration symbol.  One blog includes a quote from one of the creators after the film aired at Sundance, noting "no brand owners had objected yet," but "we hope there is no CEO of McDonalds here tonight."   While everyone has a right to present artistic commentary, it will be interesting to see if any brand owners object now that the film has received so much press.

Another interesting tidbit - when I tried to watch a YouTube video clip on one website, it had been removed due to a copyright claim.   

Update: Here is a link to the video that has not been removed due to copyright (yet, anyway).

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Shaun White recently won gold in Vancouver in the halfpipe with a near-perfect score.   At 23, this already his second Olympic games and his second gold metal in this event.  Since 2002, he has also won 9 gold, 3 silver, 2 bronze medals in the X Games.   Anyone who saw him in the Olympics has to be as awe-struck as I am.  

He has many "trademarks," including the name Flying Tomato for his long red hair or, more recently, Animal.  His most recent trademark is a move - the Double McTwist 1260 (see him perform it here).  While the “McTwist” isn’t his to claim (move invented by a skateboarder 25 years ago), he is the first and only to perform the Double McTwist 1260, a two board-over-head flips inside of 3 1/2 turns.  Apparently, he developed this move over two years before he tried it out at the Grand Prix in Park City, Utah a month before the Olympics.  

While he can’t really protect his “trademark” move, maybe he can own it by virtue of the fact that no one else can do it.  He has already suggested he might be back in 2014 with more new moves. 

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In light of the recent Super Bowl victory by the New Orleans Saints, I think a brief discussion of the recent squabble over ownership of the phrase “who dat” is in order.

In case you have not been following the story, the phrase “who dat” is commonly used by football fans and, in particular, New Orleans Saints fans.  With the success of the Saints this year, “who dat” merchandise has been popping up for sale which has led to a battle over rights in the phrase.  There are generally three opinions as to ownership of the phrase: (1) the NFL believes they own it; (2) Who Dat Inc. believe they own it; and (3) Saints fans (and merchandise retailers) believe no one owns it.

According to Wikipedia, the chant originated in minstrel shows and vaudeville in the 1800’s and was later adopted by jazz and big band performers in the 1920’s and 30’s.

According to ESPN, Saints fans began using the phrase “who dat” (shortened from “who dat say dey gonna beat dem Saints”) as a cheer over 25 years ago.  Other sources note the phrase has been used as a southern football chant since the early 1970’s.  As such, the general feeling is that no one owns it or it belongs to the city and the people.

The NFL believes they own a trademark in the phrase or at least as used in connection with the Saints.  Numerous t-shirt makers and retailers have received cease-and-desist letters from the NFL over use of the phrase on t-shirts and other Saints memorabilia claiming the unlicensed products lead fans to believe the Saints endorsed the products.

Finally, ESPN also notes that Who Dat Inc., a company run by two brothers who are long-time Saints fans, claim trademark rights in the phrase for “branded products.”

Interestingly, there are numerous trademark applications for the phrase filed with the Trademark Office in connection with clothing and related goods.  However, no registrations have issued.  In fact, many of the applications were filed within the last month.  I have heard of bandwagon fans, but bandwagon trademarks claims?

So who, if anyone, owns the phrase "who dat?"  Who knows, but I am sure it will continue to be an interesting fight. 

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If you have been following the bankruptcy of the Tavern on the Green, you have most likely heard about the controversy surrounding the famous trademark.  

There are a few parties claiming ownership of the Tavern on the Green trademark, recently appraised at $19 million according to the New York Times. The current licensee, the LeRoy family, has run the restaurant since 1974 when they turned a former sheep barn into a magnificent restaurant known around the world by name.  Warner LeRoy licensed the space from the City of New York under the name Tavern on the Green Limited Partnership.  Mr. LeRoy filed federal trademark applications for the name which registered with the PTO in 1981.  The Tavern's gross revenues in 2007 were $38 million, making it the second highest-grossing independently owned restaurant in the United States (according to Wikipedia). 

Apparently, in August 2009, the LeRoy family lost a bidding war for a new 25-year contract with the New York City Department of Parks and Recreation to Dean J. Poll, who runs The Central Park Boathouse.  However, on September 9, 2009, months before the LeRoy’s license expired, they filed for Chapter 11 bankruptcy  with 452 listed creditors leading to the current controversy over the Tavern on the Green trademark. 

The second party claiming ownership of the trademark is New York City.  According the another article, the City asserted ownership of the trademark at the bankruptcy proceedings claiming rights dating back to the original opening of the restaurant in 1934.  Apparently, as a back-up plan the City has registered the name Tavern in the Park with New York State. 

Based upon the limited facts available, it is very difficult to determine who has the better claim to ownership of the Tavern on the Green mark.  The creditors certainly hope the LeRoy family prevails but, if so, will the mark survive?  It will be interesting to watch. 

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As an intellectual property lawyer, a common thing I notice is the public treatment of the terms copyright, trademark, and patent.  In the legal community, each of these phrases represent distinct rights and doctrines of law.  A trademark is a word or symbol that identifies source, a copyright protects original literary or artistic works, and a patent protects an "invention."  (Go here for more information if your really interested.) 

However, in general usage, people often use these terms interchangeably as shorthand for something unique to an individual.  For example, there's Allen Iverson's "patented cross over dribble" (or carry, if you're a basketball purist) and there's Cameron Diaz's "trademark smile" (which was selected for this post because it was the first Google hit).  It's admittedly more difficult to come up with an example for general usage of copyright, so I'll pass on that for now.  Regardless, the point is that generally the public sees patent, trademark, and copyright as the same thing when they really are not.

Now, although each of these are distinct areas of law, there are circumstances where they do overlap.   One example in particular is where copyrighted characters (i.e. original literary characters) become indicative of a particular source, which brings us to the inspiration for today's post:  Mystique from the X-Men. 

Tragically, I'm not particularly knowledgeable about comic books (who is, right?), but when I see blue skin with green, lizard eyes, I think Marvel Comics and X-Men (Women).  I also think mutant, which means there's only one of her.  So, imagine my surprise when, out of the blue (that's one of Brent Lorentz's trademark bad puns) I saw this movie preview appearing to take place on an entire planet filled with Mystique-like inhabitants.  Except, this movie has nothing to do with Mystique or the X-Men.  Instead, it's an entirely new race of characters from the imagination of filmmaker James Cameron -- the Navi from the movie Avatar.

There are likely too many differences between the characters for there to be either trademark or copyright infringement.  But, this is just one example of a situation where both copyright and trademark need to be considered.  If the Navi were found to be substantially similar to Mystique, there would arguably be a case for copyright infringement.  If the Navi lead to people confusing Marvel Comics as the source of Avatar, rather than James Cameron, there may be a case for trademark infringement.  This is just something to think about when considering how different intellectual property rights may affect your branding.

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While browsing through a toy store recently, I noticed what appears to be a trend in branding this holiday season – reintroducing classic or “nostalgic” toys.   It is very hard for me to accept that the toys I played with as a child could be considered “nostalgic,” but upon first sight of the Chatter Phone™, my childhood was calling.  

The beauty of these toys is in their simplicity.  They require imagination; as a toy should, but often doesn’t today.  Another great thing is that the toys and packaging are identical to the originals.  This is interesting from a branding and trademark standpoint in that the product, product packaging and stylized trademarks have been modernized over the years, only to return to the original version.   Some great examples include:  

Fisher Price® Chatter Phone™ (with rotary dial): 

Snoop n Sniff™, first introduced in 1938 (please note – this one is well before my time):

The Classic Slinky® in a retro box:

The Classic Etch A Sketch®:

For some fun reading on other beloved brands and trademarks, check out the Brandland USA blog - “home of America’s best-loved legacy brands.”  

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Last week, the Minneapolis/St. Paul Business Journal reported that Coach filed a complaint in New York against Minneapolis-based Target Corporation, alleging infringement of two of its handbag designs.  Coach claims Target’s new designs are too similar to two of its bags, including the Ergo and Signature Patchwork bags:

Target is not alone.  Coach also filed a lawsuit against Brown Shoe Co., Inc., parent company of Naturalizer, in June, 2009, accusing the company of copying the Ergo Pleated bag. 

Lookalikes have long been an issue in the fashion world.   While counterfeits are illegal, the rules are much less clear in the world of lookalikes and can come down to just how similar a design is to an "original."  What is clear is that designers and manufacturers in the fashion world are becoming more and more aggressive in protecting their designs.  A few more recent examples include:

Gucci filed suit against Guess earlier this year for trademark infringement for use of the “g” logo on handbags. 

Alexander McQueen recently accused Steve Madden Ltd. of trade dress infringement over a designer bootie. 

Deckers Outdoor Corp. (Ugg) filed a lawsuit against in California against numerous defendants alleging infringement of its Classic Cardy boot. 

Finally, the tables have turned in one recent lawsuit.  Louis Vuitton, known for avidly protecting its designs, has recently become familiar with the other side of case.  New Balance Athletic Shoe Inc. accused Louis Vuitton of trademark infringement, alleging Louis Vuitton copied one of its popular shoe designs.  

As noted on Stylelist, the New Balance sneaker (top) retails for around $75, while the Louis Vuitton sneaker will run you around $590 (bottom).  

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In case you're wondering, this design is a federally-registered non-verbal trademark.

The owner identified it as a "Miscellaneous Design," without further detail or description (since it predated the more rigorous rules on supplying the Trademark Office with an accurate and detailed description of the mark).

The U.S. Trademark Office assigned to this design mark Design Code 24.15.25 ("other arrows") and in some cases 26.17.09 ("bands, curved; bars, curved; curved lines, bands or bars; lines, curved.").

So, now that you're armed with all this valuable information, certainly you can answer three simple questions: (1) Who owns it? (2) What is it? and (3) What goods or services are identified and distinguished by this non-verbal design mark?

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Yesterday, Under Consideration's Brand New Blog discussed the redesign of the Nickelodeon trademark. Nickelodeon has decided to drop the well known splat design that encapsulated the NICKELODEON term. As reported by Under Consideration, Nickelodeon’s “splat” has existed in one form or another for over 15 years. Although the orange “splat” has evolved over the years, it was a recognizable symbol of a Nickelodeon product. 

This leads to an important issue, designs are important branding tools. Trademark law argues that the words are the most dominant portion of a trademark because it is the element that consumers use to ask for the goods or services. However, this is not always true. Often times, the word portion of a mark is subordinate to the design component and consumers rely on the design or other matter to identify the source of the goods or services. Good examples include the Nike swoosh or the Under Armour “UA” design. But a design or non-traditional trademark does not need to reach the status of Nike of Under Armour to have a significant market affect. A good example is Christian Louboutin women's shoes. Most people do not know the brand of any women’s shoe at first blush, but most people recognize the red sole. Well, Christian Louboutin has federally registered the red sole of these shoes. Therefore, it is important not to overlook or discount the branding power a design can have and it is worth considering the highest level of protection for this element of a trademark.

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Yellow Book USA, Inc. has embarked on a marketing campaign telling consumers to “Yellowbook  It” when they need to search for something.  Although Yellow Book USA, Inc. does not own a federal registration for YELLOWBOOK, its does use the ™ symbol behind the term on its Web site to signal to consumers that it is a trademark.  From a marketing perspective, having consumers use your trademark as the term to signify searching a directory certainly increases the visibility of the brand.  On the other hand, from a trademark perspective, when consumers start using a trademark to identify to a specific thing or action, it signals the end of all trademark rights.

The function of a mark is to identify and distinguish the goods or services of one seller from those sold by another seller.  A “generic” term does not identify and distinguish goods or services.  A mark may be generic for one product but not for another.  For example, APPLE is generic for the fruit of the apple tree, but not for computers, and CATERPILLAR is generic for the larva of a butterfly, but not for earth moving equipment.  Furthermore, a mark may become generic if the owner fails to properly enforce its rights in the mark or educate the public on the proper way to use its mark.  This occurrence is known as genericide and DuetsBlog has discussed this phenomenon before.  Therefore, because generic matter does not identify and distinguish goods or services, it possesses no distinctiveness and falls on the unprotectable side of the spectrum of distinctiveness.

Yellow Book USA, Inc.’s strategy is reminiscent of the issue Google faced.  However, Google did not embrace consumers referring to searching the Internet as “Google it.”  Rather, Google aggressively went the other way educating consumers on the proper use of its trademark.  Today, Google has included trademark use guidelines on its Web site, which include the following rule: “Use a generic term following the trademark, for example: GOOGLE search engine, Google search, GOOGLE web search.”

Therefore, while Google and other companies are trying to avoid genericide, Yellow Book USA, Inc. seems content with running full speed towards it.  I assume they are aware of the risk they are taking, at least I hope so.

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More than a few trademark types cringe when their clients or others say things like "let's trademark it," "they didn't trademark their logo," or "we don't want to trademark this name," and, when they ask questions like "is it trademarked?" or "is that trademarked software?" or "did we ever trademark our logo?" or "should we be trademarking this packaging?"

Indeed, some have written: “'Trademark' is not a verb. There is no such thing as 'trademarking' a word or phrase." Similar views are expressed here, here, and here.

Perhaps any cringing may result from the fact that the Lanham Act -- the federal trademark statute -- defines the word "trademark" as a noun, not a verb or adjective:

The term "trademark" includes any word, name, symbol, or device, or any combination thereof --

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

Section 45 of Lanham Act, 15 U.S.C. 1127.

Turns out though, the words "trademark," "trademarked," and "trademarking," are recognized words with established verb meanings that have formed part of the English language: "(1) To label (a product) with proprietary identification; and (2) to register (something) as a trademark." Moreover, the word "trademarked" has an established adjective meaning too: "labeled with proprietary (and legally registered) identification guaranteeing exclusive use; 'trademarked goods'".

From my perspective, there is no need for cringing or even correction, just further inquiry into how the words "trademark," "trademarked," and "trademarking" are being used.

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Recently, I stopped in a neighborhood coffee shop for an iced coffee. It was a fabulous little coffee shop in a neighborhood I don’t frequent and whose name I won’t mention. Anyway, while perusing the menu, I noticed they offered a blended coffee drink under the name Frappuccino.  Noting the teenager behind the counter, I did not feel it would be beneficial to provide a trademark tutorial or a warning as to how Starbucks would react to this use of its arguably famous trademark for identical goods. 

Sipping my delicious frozen beverage, I could not help thinking it would be a good blog topic to discuss the importance of trademark policing and enforcement.   Obviously, this is not always an easy task and these types of uses are especially difficult to detect.  In fact, Starbucks has been very active in protecting its trademark rights, even against small, mom-and-pop coffee shops which it discovers are using a similar name or logo mark such as Conga Coffee & Tea (similarly shaped green logo mark).  However, identifying an infringing name of a shop is one thing, but identifying an infringing menu item is a far more difficult task. 

Companies spend a lot of time and money developing brand names for products and services and many companies have hundreds of branded products in their portfolios.   An important part of branding is protecting those brands and companies need to determine how to best monitor their marks.  Employing a watch service is always a good idea for major brands and/or a company name.  However, the cost of a watch service is by the mark and can quickly add up if a company has numerous brands to protect.  Thus, a few suggestions as to steps a company can take to protect its marks include:

1. Apply for federal trademark registration whenever possible;
2. Proper and consistent use of the ® ™ symbols in connection with each and every brand;
3. Undertake periodic Internet searches for potentially infringing uses;
4. Create champions for your brand - highly loyal customers, distributors, retailers, and other partners, who will bring potential infringements to your attention;
5. Internal education for employees to keep their eyes open and listen with an open ear when others bring potential infringements to light; and
6. If you become aware of a potential infringement, take action sooner rather than later by sending a formal letter.  You may want to consider hiring a trademark attorney to send the letter; investing in a well written cease and desist letter will often pay off by putting an end to the infringement. 

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As promised earlier this week, in my post entitled "Without Words, But Not Speechless: More On Non-Verbal Logos That Can Stand Alone," here is my effort to identify, from a legal perspective, some of the pros and cons of non-verbal logos and other trademark styles. 

But, before addressing the legal implications, it is worth noting that a number of our insightful readers and commenters already have helped articulate a variety of pros and cons from a business and marketing perspective, here. By my count, there appears to be consensus on at least two important points: (1) Having an iconic stand-alone non-verbal logo or wordless trademark symbol is highly desirable, especially for truly international brands; but (2) be prepared to spend a lot of time, effort, and significant resources to achieve one.

In addition, at least one designer has written that having a logo without words "can be a big branding pain," for a variety of reasons. She identifies three basic logo styles: (1) Text logos; (2) symbol logos; and (3) combination logos. Examples of text logos would be the Coca-Cola script, the Yahoo! stylized word, and the Google stylized word, all three illustrated in my earlier post. The highly stylized Ebay logo is another good example of a text logo. On the other hand, the Shell logo, McDonald's Golden Arches, and the Nike Swoosh, are all good examples of symbol logos. In addition, here is a message board collecting a number of other possible candidates for symbol logos that are capable of standing lone -- without words -- yet, they still have a lot to say to consumers. Many of them, in fact, were mentioned by commenters to my prior post.  

Anyway, the designer referenced above contends that for a variety of reasons, combination logos often make the most sense. According to her, a combination logo "combines both a symbol and the company name. The symbol and text can be integrated together, side by side, or with one located above the other."

Generally, from a trademark owner and legal perspective, I prefer the combination logo too, but not the "integrated" type, instead the "side by side" type or the "one above the other" type. The Mercedes-Benz combination logo shown below nicely illustrates the "one above the other" type of combination logo:

Why do I generally prefer this type of trademark logo format and style?

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Mars recently introduced a new candy bar, Fling, marketed exclusively to women, advertised as “an un-regrettably indulgent new product for women”.  The website is predominantly pink and is littered with very stereo-typical one-liners meant to be sexy such as “you never know when you’ll want to have a Fling” and “so tear it open and sneak in a quickie.”   The packaging is shiny pink and silver with the tag-line “Naughty, but not that naughty.” 

The marketing campaign is nothing more than a concoction of cliches directed toward women simply because it is a low calorie candy bar, touted as under 85 calories per stick.  Interestingly, since there are two sticks in a package, Fling has about the same number of calories as other, gender neutral, candy bars such as Nestle's Chunky Bar (190 calories; I don’t believe Nestle was thinking about marketing directly to women when it named this candy bar), Nestle's 100 Grand Bar (190 calories), or Mar's Milky Way (approximately 220 calories).

I can’t decide whether this marketing campaign is smart or insulting.  While the company claims it is for women, the target audience is obviously younger women (late teens - 20’s) who may not be as insulted as slightly older women (lets say 30's).  In researching this blog, I did find numerous comments from women who were insulted, such as www.wonderbranding.com, (Fling blog) and Creative Skirts.  Mars is marketing this new product as a guiltless fling.  However, like any other fling, you don't realize how bad it is for you until its too late. 

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The Merriam-Webster On-Line Dictionary tells me that “green”—that word that kindly describes that most vilified of veggies and represents the very being of a beloved character—has been a verb since before the 12th Century. I will take their expert word for it, in spite of the fact that it is only in the past few years or so that I have noticed that this word, so commonly used as a noun and adjective, has come into common use as a verb, as evidenced here, here and here. 

Common sense would say that the meaning of “green” as a verb has changed over time—whatever it meant then, I’d wager that most consumers now recognize the infinitive “to green” to mean something along the lines of “to make ecologically/energy/environmentally more safe/sound/smart/sensible than it was before.” This is all well and good if you want the majority of consumers to know what your “green” brand means. But what if you want to protect your “green” brand?  

The Trademark Office requires owners of marks incorporating merely descriptive terms—those that describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services – to disclaim those portions of the mark. Disclaimers narrow the exclusive rights that a registrant may claim in its mark. While the (re-)morphing of “green” from a noun and adjective to a verb does not necessarily support a claim that all marks using green to indicate some environmentally friendly connection are non source-identifying, it does indicate that the meaning of the word “green” among consumers is changing, and quite rapidly at that. At present, there are over 8,000 live marks on the Trademark Office database that incorporate the term “green”; of these, over 1,400 have disclaimed “green.” While a good portion of these disclaimers no doubt cover marks that mean “green” in the color sense, my random clicking on more than a few marks indicates that the word “green” is increasingly recognized by the Trademark Office as a descriptive term for “environmentally friendly” goods and services. 

The moral of the story? Hurry up and get your “green” marks registered before consumers associate the color with Earth Day and energy as quickly as they associate it with, well, the color.

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The overlap of virtual reality and intellectual property is a relatively recent phenomenon. The advent of virtual worlds, such as Second Life, has created increased opportunities for legitimate marketing and branding, as well as, increased opportunities for infringement. Second Life even has its own bar association for those interested in virtual legal practice.

If you noticed the dates from the links above, you'll see that I'm not the first blogger to address some of these topics. Indeed, questions about intellectual property in virtual worlds have been percolating for years. However, recently a real-world lawsuit was initiated over virtual-world infringement. Taser International, Inc. has sued Second Life's creator, Linden Research Inc, alleging that Linden is selling virtual weaponry that infringes its rights. Among the interesting issues likely to arise in this suit will be vicarious and contributory trademark infringement and whether or not the use of a trademark in a virtual world constitutes a “use in commerce” which is necessary for trademark infringement. It will be interesting to see how traditional trademark principles are actually applied in the virtual environment.

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Recently, UnderConsideration's Brand New blog commented on the new logo adopted by Much Music. After 10 years of using MUCHMOREMUSIC, the logo was changed to MUCHMORE. The new logo is aesthetically more pleasing, but the change raises an important issue. Modernizing old logos can result in abandonment of the old mark, which means a loss of all trademark rights in the old logo.

In order to retain the trademark rights from the old version of the mark, the modified mark must contain what is the essence of the original mark and the new form must create the impression of being essentially the same mark. In other words, the new mark must retain the same overall commercial impression of the old mark. Generally, modernizing a mark will retain the same overall commercial impression of the old mark. However, the risk of creating a different commercial impression looms when elements are added to or deleted from the old mark.

In Much Music’s case, they deleted the term MUSIC, added color, and stylized the terms in a different way. The different stylization of the terms probably does not create a different commercial impression. However, the addition of color when the old logo did not have color and deletion of the term MUSIC could cause the new logo to create a commercial impression that is different from the old logo. The potential loss of 10 years of use could have a significant impact on the brand going forward. Therefore, it is important to keep this issue in mind when modernizing marks especially marks that have been used for many years.

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