Hotels, Ice Cream, and Shoes as Canvases for Great Brands

 

Seth Godin has written about how Nike is a great brand because we can imagine what a Nike hotel would look like.

 

So, let me ask a slightly weirder question: If Nike were an ice cream flavor, what would it taste like?

 

My guess would be something like a lemon zest sorbet, perhaps. (I’ll look for your best guess in the comments.)

 

Speaking of ice cream, Ben & Jerry’s is another great brand, like Nike.

 

Maybe you have a favorite Ben & Jerry’s flavor. Maybe it’s Chunky Monkey? My favorite is currently Half Baked:

Although I have to say, the recent collaboration with Netflix, called Netflix & Chill’d, is pretty good too, and not a bad show of brand strength by Netflix:

(For the record, the ice cream gods have decided that Netflix tastes like Peanut Butter Ice Cream with Sweet & Salty Pretzel Swirls & Fudge Brownies).

Based on your experience with the Ben & Jerry’s brand, I bet you can even imagine what a Ben & Jerry’s hotel would look like.

 

How about another test of brand strength?

 

What if Ben & Jerry’s were a basketball shoe? What would it look like?

 

No guessing required this time: I present to you, the Chunky Dunky:

 

 

The Chunky Dunky” is a limited run collaboration between Nike and Ben & Jerry’s that applies Ben & Jerry’s iconic trade dress to the iconic Nike SB Dunk Low shoe silhouette, named using a mashup of “Dunk” with Ben & Jerry’s Chunky Monkey flavored ice cream.

 

I have bad news for you though, if you want a pair, you’ll likely (more on this below) need to spend $2,000 or more, as the very limited run sold out instantaneously and can only be found on the secondary collector’s market on platforms like StockX.  You’ll also want to keep an eye out for fakes.

 

Collaborations like this are excellent ways to strengthen a brand, including its trade dress, well beyond the scope of the core goods of the brand owner. Usually, a brand owner can only enforce its mark against another mark if the use of the other mark is likely to create confusion about the source of the goods or suggests endorsement, sponsorship, or approval, because of similarities in the marks and goods or other factors. That can be difficult to do when goods are seemingly unrelated, for example shoes and ice cream.  In fact, I would generally assume one’s ability to dunk is inversely proportional to the amount of ice cream they consume.

 

By expanding use of marks and trade dress to seemingly unrelated goods like shoes and ice cream, not only is a direct link established between the goods in question, the brand owner can show that consumers expect to see its brand on a wide variety of goods, making enforcement easier against copycat marks appearing on goods not offered by the brand.  When possible, establishing a high degree of consumer recognition, or brand strength, can be a critical factor in the likelihood of confusion analysis used to prove infringement.

 

To my knowledge, neither the strength of the Ben & Jerry’s trade dress nor the Nike Dunk Low silhouette has ever been determined in litigation (unlike the famous colors of John Deere), but it seems fair to say that by now, the Nike Dunks are one of the most recognized shoes on the market, having been commercially available since 1985.  The “SB” version (for skateboarding) was launched in 2002 and has appeared in countless collaborations, many of which are highly sought after among shoe collectors, a.k.a sneakerheads. Indeed, we may soon have a determination about the strength of the Nike Dunk Low silhouette via a recent lawsuit filed by Nike.

 

No doubt relevant to that lawsuit will be the fact that Nike owns multiple federal trademark registrations for features of shoe silhouettes, including the following which shows features of the Nike SB Dunk Low:

(U.S. Registration No. 3711305)

 

As described in the registration, the mark consists of the design of the stitching on the exterior of the shoe, the design of the material panels that form the exterior body of the shoe, the design of the wavy panel on top of the shoe that encompasses the eyelets for the shoe laces, the design of the vertical ridge pattern on the sides of the sole of the shoe, and the relative position of these elements to each other.

 

Meanwhile, Ben and Jerry’s might be the most beloved premium ice cream on the market. Ben & Jerry’s owns an incontestable federal trademark registration for its trade dress,  as shown in this drawing on file with the United States Patent and Trademark Office:

(U.S. Registration No. 4176490)

 

As described in the registration, the mark consists of the image of a cow in black and white, standing on green pasture. The pasture has a shade of lighter green on the horizon where it meets an image of a blue sky with white clouds as part of the background.

 

Combine the trade dress of these two powerful brands and you have an extremely expensive shoe, almost all of the value of which is derived from the goodwill of the brands and scarcity of the shoe, rather than innovation or materials.

 

It’s ultimately the kind of exclusive collector’s shoe you might see on the feet of a person staying at a luxury hotel adorned in the trade dress of another famous brand, this fictional version imagined by graphic designer Tarek Okbir

(HT: Brand New)

 

It might also be the kind of shoe you could come to own, despite its high price tag. The Atlanta-based rapper / activist Michael Render, known professionally as Killer Mike (blogged about on DuetsBlog here), has donated his own pair of Chunky Dunkys to Ben & Jerry’s get-out-the vote campaign. For more details visit www.action.benjerry.com/rtjsweeps by Oct. 25. Below, Killer Mike can be seen wearing his Chunky Dunky shoes in a recent photo by Diwang Valdez published in Billboard magazine and shared via Killer Mike’s Instagram page a few weeks back:

 

So dear readers, what brands would you like to see as either shoes, ice cream, or hotels?

Hearty thanks to Colette Durst, Stephen Lee, and Susan Perera, for generously sharing their insights and perspectives about trademark nominative fair use.

By all accounts, the Midwest IP Institute was a great success this year despite the limitations of delivering knowledge in a virtual format, thanks Zoom.

Hearty thanks to Draeke Weseman for his great work in helping pull together Chapter 7 in the IP Book, which can be purchased here from Minnesota CLE.

In case you missed it, here is my Trademark Nominative Fair Use of Another’s Logo post from March, leading up to the 2020 AIPLA Annual Spring Meeting.

Welcome back to another edition of Merely Informational and Incapable Marks.

The above neighborhood Applebee’s is on my usual route to going anywhere from our home, so I’m predicting I’ve passed by well more than 10,000 times.

The temporary “Dining Room Open” signage is a recent addition from a few months ago, when Minnesota restaurants began to re-open their dining rooms.

Over the years, I’ve focused on the more permanent Welcome Back! above-door signage, wondering if Applebee’s ever has attempted to seek federal registration.

Seemed like a great blog topic, for some day, given my distaste for the USPTO’s insatiable appetite for fusing informational refusals with trademark incapability.

Since consumer perception controls trademark capability, favoring a review of the facts and circumstances (instead of incapability rules) makes more sense to me.

Nonetheless, I’ve assumed that the USPTO would reject Welcome Back! for registration, considering it merely informational and incapable as a trademark.

So, today’s the day, not because Applebee’s has sought trademark protection, but because of its Welcome Back commercial that ran much of this past summer.

The commercial focuses on the prominent Welcome Back! signage seared with John Sebastian’s Welcome Back tune, made famous by Welcome Back, Kotter.

Seeing how Applebee’s creatively linked its longstanding Welcome Back! signage and other brand messaging to a nostalgic and feel-good tune from the mid-70s, I thought, just maybe, Welcome Back! finally was added to its menu of marks.

After all, in another context, a creative fusion of branding elements led to Owens-Corning overcoming “well-settled” law against color trademarks, when O-C linked its pink-insulation advertising campaign to the beloved Pink Panther cartoon.

Although Applebee’s has not (yet) sought registration, Welcome Back apparently is on the intent-to-use trademark wish-list of a wholesale seafood distributor, for “take-out restaurant services,” and a few weeks ago registration was refused:

“Registration is refused because the applied-for mark is a slogan or term that does not function as a service mark to indicate the source of applicant’s services and to identify and distinguish them from others . . . . In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment . . . . Terms and expressions that merely convey an informational message are not registrable. . . . An applicant may not overcome this refusal by amending the application to seek registration on the Supplemental Register or asserting a claim of acquired distinctiveness under Section 2(f). . . . Nor will submitting a substitute specimen overcome this refusal.”

As predicted, the USPTO found Welcome Back to be merely informational and incapable of performing a trademark function for take-out restaurant services.

While overcoming the incapability refusal may appear an insurmountable climb for the seafood distributor, what if Applebee’s filed and faced a similar refusal?

Would Applebee’s be able to establish favorable evidence of consumer perception of Welcome Back! as a signal of its brand? If so, would the USPTO respect it?

Back in 2018 (seems like a decade ago during these unusual times), I posted a couple times about a trademark infringement complaint by Stone Brewing, a craft brewery in California, against MillerCoors. The complaint alleged that the rebranded cans and packaging of the Keystone beer, which added separate emphasis of the word “STONE,” infringed Stone Brewing’s registered rights to its “STONE” trademark for beer.

In the couple years since my last post, the parties have been duking it out in discovery. The contentious nature of the dispute, already evident in the complaint and answer, continued escalating in discovery. Last year, discovery sanctions were imposed against MillerCoors when the court determined that MillerCoors withheld relevant marketing materials that should have been produced.

More recently, the parties both filed motions for summary judgment, which had the potential to end the case. Neither party prevailed, however, as the court granted in part and denied in part both parties’ motions earlier this year. The most significant issues raised in the motions were Stone Brewing’s trademark infringement claim, MillerCoors’s laches defense, and MillerCoors’s claim of prior use of STONE.

The court denied Stone Brewing’s motion for summary judgment on its trademark infringement claim. Some of the court’s analysis favored Stone Brewing, and the court even observed that summary judgment “[was] a close call.” But the court ultimately concluded that the fact-intensive issue of a likelihood of confusion “should be answered … by a jury” at trial.

The court granted Stone Brewing’s motion for summary judgment on MillerCoors’s laches defense (unreasonable delay in bringing the lawsuit), concluding that laches cannot apply to Stone Brewing’s lawsuit filed in 2018 because the infringement claim accrued only a year prior in 2017, when the Keystone packaging was rebranded.

MillerCoors argued in its motion that it had established priority, based on its use of “STONE” for beer since 1991. The court denied the motion, concluding that disputed factual issues remained concerning whether “STONE” was continuously used as a trademark by MillerCoors prior to 2017, whether there was a 14-year gap in the alleged use of STONE by MillerCoors, and whether the MillerCoors marketing materials containing “STONE” were ever used in commerce.

With neither party obtaining a complete victory on summary judgment, the case is headed to trial this October, unless the parties settle before then. There is a lot at stake, with Stone Brewing seeking to recover $1 billion in damages based on the alleged infringing sales of Keystone beer.

We’ll see what happens in the next couple months before trial. In the meantime, if you want to taste what this trademark fight is all about at your next virtual happy hour, Stone Brewing’s well-reviewed STONE IPA is available at Total Wine (and so is Keystone, if you’d like to check out the disputed packaging). Cheers, and stay tuned for updates.

Never is supposed to last forever. Forever is never supposed to come to an end. Neither are possible to measure in time, for as long as they continue to be true.

The wait for either to fail, can last for an infinite period of time, until they collide. We have witnessed such a collision during the past week in our Nation’s Capital.

Despite majority owner Daniel Snyder’s 2013 promise to “NEVER change it, the Washington R*dskins NFL franchise team name is about to become history.

Speaking of history, 25 years before Snyder’s promise, previous owner Jack Kent Cooke conveyed basically the same message, but he used more words to do so:

“There’s not a single, solitary jot, tittle, whit chance in the world” of a name change. “I like the name and it’s not a derogatory name.”

More than fifteen years before that in 1972, then team owner Edward Bennett Williams, met with a group of Native American leaders to hear their objections, yet the name survived; only fight song lyrics and cheerleader uniforms changed.

A decade before that in 1962, George Preston Marshall, founder and owner of the team for nearly forty years, finally agreed to allow African Americans on the team, but only after the federal government threatened to block continued use of the D.C. stadium located on federal land; before that he’s reported as proudly saying:

“We’ll start signing Negroes, when the Harlem Globetrotters start signing whites.”

With that awful history and dogged grip on the indefensible name, the arrival of NEVER and the end of Forever for the the R-Word brand name is long overdue.

On Juneteenth 2020, the George Preston Marshall statute at RFK Stadium was removed and taken away, but only after it was defaced and spray-painted red.

Only Mr. Snyder knows the true tipping point for the inevitable name change that insiders say will follow a “thorough review,” and the timeline to effectuate it.

Most suggest the tipping point was when the sponsors spoke up, starting with FEDEX on July 2, the day before the team announced the “thorough review.”

Presumably the “thorough review” won’t require revisiting dictionary evidence of the racial slur, or re-examining the mountain of evidence and legal briefs against the name, during the Harjo and Blackhorse cases, spanning a quarter of a century, or the two TTAB decisions and one federal court finding disparagement.

Instead, the “thorough review” more likely signals to impatient sponsors that change is coming; and as news reports continue to pour in, it appears that the team is unlikely to use Native American imagery as part of the new brand name.

As you know, I’ve been passionate on this issue always maintaining a name change for the team was only a matter of time; it appears that time is finally here.

As loyal readers will recall, more than a decade ago, I published this observation:

‘Re-Branding Madness in Washington’ Overlooks Obvious

Then in 2017, I wrote the following, in a long overdue tribute to Suzan Harjo:

“[I]n the end, it is about the money, and the NFL clearly has had sufficient funds to defend the indefensible for a quarter century now, so isn’t it time FEDEX and other NFL sponsors step up and get on the right side of this issue, with their money? Let’s all follow the money.”

What we have witnessed within the last week demonstrates not only a dramatic continuation of the racial justice movement spanning the world, but the extraordinary power of brands and the sponsorship dollars they invest, and perhaps as importantly, the power of those who choose to invest in those brands.

Daniel Snyder surely meant NEVER to mean forever, but in 2013, he could not have foreseen how quickly the world has changed over the last six weeks.

Most of the focus now appears to be on what the new name will be. One report suggests the Washington Warriors, without Native American imagery. Good luck.

Another suggests the Washington Redtails, in honor of the Tuskegee Airmen who fought in World War II. If so, Above the Law has identified a trademark problem.

How likely is it that Snyder’s current “thorough review” is focused on the idea of NEVER moving from the frying pan into the fire? If so, that could take Forever.

UPDATES:

USA Today reports team will announce name change today, Monday July 13, 2020.

It’s official, the team has confirmed retirement of the name and logo, and the announcement of a new name will follow, to last for the next 100 years.

Obi-Wan Kenobi, Chuck Norris, and a Walleye Sandwich have what in common?

Well, each of the three are called to mind in Rapala’s 2020 billboard ad campaign.

If you’ve been with us since the beginning, more than eleven years ago now, you’ll appreciate that we look forward to seeing Rapala’s creativity each year.

And, by the way, what is your all-time favorite from the annual Rapala line up that we’ve been covering for a dozen seasons now (minus 2019, given my move)?

Rapala’s “More Hits Than Google” Billboard Update (Photo Included) (2009)

Good Bye Google, Hello Whudjagiddumon? (2010)

Rapala Taunts a Monster? (2011)

Rapala: Happy Fishing on Mother’s Day (2012)

Rapala Billboard Ads Continue to Engage (2013)

Eat More Walleye? (2014)

Top Ten Questions About Rapala Minnocchio (2015)

I Get It, Rapala Will Fill Up Your Fish Cooler! (2016)

Rapala’s Public Service Announcement? (2017)

Rapala’s 2018 Fishing Opener Billboard Ads (2018)

OK, I’ll go first. My personal favorite, looking back is: More Hits Than Google. The blogpost I enjoyed writing most was: Good Bye Google, Hello Whudjagiddumon?

My vote for lost creative opportunity of the decade, circa 2014: Eat More Walleye.

Given the 2020 collection shown above, if you were Chuck Norris, WWCND? That is, What Would Chuck Norris Do? Yes, it’s actually a registered trademark.

Here’s a question for our design-minded readers: If survey evidence told you that consumers recalled only certain elements of a beloved logo, would you remove the rest, and reduce it to only the most commonly remembered features?

 

Most likely, your answer doesn’t involve analysis under trademark law.

 

So, maybe, this post will influence how you think about the answer to that question.

 

One of the often-ignored principles of trademark law is that the determination of similarity between marks is not made through “side-by-side” comparison.

 

Rather, marks are evaluated based on all relevant facts pertaining to appearance, sound, and connotation, with the emphasis on the “recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks.”

 

The predecessor court to the Court of Appeals for the Federal Circuit stated it more bluntly in 1969: Consumers “may have but dim recollections.”

 

Despite this long-standing expression of the law, trademark attorneys for both plaintiffs and defendants still can’t help themselves from making “side-by-side” comparisons, routinely leading with them in pleadings or letters, often setting the marks side-by-side in a table, or one-after-the-other in paragraphs. Here’s an example snipped straight from the pleadings in a previously blogged about case involving a beaver in a ball cap and an alligator in a cowboy hat:

 

 

Of course, it’s fair that a plaintiff or defendant would like to point out exactly, side-by-side, the common elements or differences in the marks.

 

I wondered, how often courts strictly enforce a side-by-side comparison from making its way to a jury, since once the side-by-side comparison is shown, it is sort of hard to unsee, and couldn’t that potentially mislead a jury by giving them a false experience with the marks?

 

In the Buc-ee’s case, it appears no attempt was made to shield the jury from such exposure, as a slide deck was purportedly used as a demonstrative to the jury during opening and closing statements, it is literally only side-by-side comparisons:

 

 

In the wild, with few exceptions, this is not how consumers interact with brands.  Instead, in between the interactions with the alleged rightful brand owner in the first instance and the alleged brand infringer some time after, there is the memory of the consumer, dim as it may be.

 

Thus, there is infringement when a plaintiff can show that upon seeing the defendant’s junior mark, factoring in the consumer’s fuzzy recollection of the plaintiff’s senior mark, the similarities of the defendant’s mark are such that consumers are likely to be confused, mistakenly believing they are encountering products or services of the plaintiff.

 

In such situations, the law views the defendant’s enjoyment of the goodwill earned by the plaintiff under its mark as a harm to the plaintiff.

 

So it seems that if what consumers recollect ultimately drives the infringement analysis, it is important then to understand: Just what do consumers remember about trademarks?

 

Recently, Van Monster, “the UK’s largest choice of quality used vans” published the results of Motors by Memory, an informal, non-academic, study of British consumers’ recollection of car logos.  The study asked 100 British consumers to draw 10 car logos, purely from memory.

 

The results are presented along an approximate spectrum of accuracy, and as you might expect range from impressively accurate to incredibly terrible.

 

Take a look at the results for BMW, below:

 

 

As analyzed by Van Monster, in the BMW example, 92% were able to recall the colors white and blue, and 59% drew a quadrant.

 

However, despite more than 90% drawing a circle of some kind, by my own calculation, only about 20% specifically recalled the black outer circle.

 

Recently, BMW updated its logo to remove the black outer circle.  Although BMW’s decision was met with mixed reviews, perhaps similar survey results contributed to the controversial redesign?

 

Below is a side-by-side comparison, old versus new:

 

 

Take a look back at consumer recollections of the old BMW logo. Doesn’t it seem that the new logo falls right in the middle of the chart, perhaps representing some sort of mean or median of “consumer recollection?”

 

Whether or not BWM actually took this approach, I have no idea – but, designers, what would you say about taking this approach to design?

 

And trademark attorneys, would the new BMW logo, backed potentially by survey evidence about how strongly the elements are recalled, make it that much easier to support enforcement against similar marks using those same elements, without resorting to any side-by-side comparison?

 

And finally, just curious, if a beloved logo is changed, do those with tattoos care?

Almost forty years ago, that question prompted me to rethink my engineering path after three semesters, knowing an electronic circuits lab awaited my fourth.

Over winter break, thumbing through the University of Iowa catalog in my dad’s office, looking for an alternative, I happily discovered the pharmacy curriculum.

Had I known that law school would follow pharmacy school, perhaps a few years could have been saved in the serial approach to my 80s educational decade.

And, if a deep focus on trademark law had been in the crystal ball at the outset, shaving a full three years would have been possible, but believe me, no regrets.

This past weekend, I had the opportunity to reflect on the difference between series and parallel again, following the College of Pharmacy’s virtual ELB meeting.

In addition to the exciting things going on at UI Pharmaceuticals, other news reports tout the benefits of parallel work to bring a Covid-19 vaccine to market.

When time is of the essence, running parallel tracks to solve a problem is key. While a parallel approach necessarily produces some waste, the benefits of achieving the goal sooner are considered to outweigh any increased cost.

But when subsequent decisions can only be made best by knowing the outcomes of earlier decisions, actions, or events, calculated serial thinking is essential. Clearly, serial thinking is driving the decision whether and when to reopen society, as that decision only can be made in the context of knowing about the success or failure of last week’s efforts at flattening the curve.

Since these decisions are being made State by State and City by City, in some sense serial thinking is at work in parallel across various portions of the country.

As it turns out in trademark law, although hardly life and death problems or goals, or resembling anything close in terms of financial investment, the same principles that drive whether to use parallel thinking or serial thinking apply.

By way of example, before adoption and use, most often potential trademarks are searched, cleared and considered in parallel, not serially.

Given the variety of business factors that go into the decision of which mark to adopt and use, it is typical to determine the availability of several options at once.

In fact, when the stakes are high, the timeline is tight, and focus group testing is used to compare options, even intent-to-use applications may be filed in parallel.

Since the required bona-fide intent-to-use a trademark can be contingent on future and unknown events at the time of filing, parallel pursuits are plausible.

Parallel thinking is also used when considering where protection will be sought outside the United States, since international trademark law treaties allow for filings to be made in parallel within six months of the U.S. filing, and still benefit from the original U.S. priority date.

Other times, serial thinking is better suited to the trademark problem at hand.

For example, when conditions warrant, it may be wisest to file just a single application narrowly, dipping a toe in so to speak, only to dive in later once the waters of examination and third-party interest have been tested.

Another example where thinking long-term and serially is key is in protecting descriptive and non-traditional marks, where registration on the Supplemental Register is possible first, to be followed by registration on the Principal Register, often five years or more later, after building a record of acquired distinctiveness.

Further along the trademark life-cycle, brand owners may be happy to learn that delays in pursuing infringement actions can be explained when serially pursued.

In other words, courts have excused brand owners from suing multiple infringers at the same time; in this context, it can be reasonable to pursue one at a time.

Brand owners, when preparing to launch a new brand, do you prefer a series or parallel approach to trademark clearance?

Trademark types, how many parallel intent-to-use applications have you filed at once for the same planned product/service?

Baseball fans, what will the World Series look like in 2020?

Finally, how will “parallel play” be impacted by social distancing, if at all?

Photo Credit: G. Baird

The Gong Show was a quirky and absurdly amusing talent show from the 70s.

It was created, produced, and hosted for a number of years by Chuck Barris.

The gong was beaten by one or more judges when they’d had enough of an act.

In reviewing some video of early episodes, shockingly there was no gonging of this mouth percussion, despite the obvious lack of any hand-to-face hygiene.

Until two months ago, Wuhan brand gongs and cymbals were unknown to me.

They reportedly had been used by the late, great Neil Peartdrummer of Rush.

My cymbal arrived a few weeks ago — after being quarantined in our garage, it was wiped down before entering the house for my daughter’s photo shoot.

It will serve as wall-art and a powerful cymbal to never forget this time of pain.

The much larger Wuhan wind gong is still in the garage, but you’ll hear it sound, believe me, when the present crisis is safely in our collective rear-view mirror.

Until then, not surprisingly, there’s a trademark story behind the Wuhan name.

Apparently the Wuhan name is a portmanteau merging portions of the names of three other Chinese cities on the Yangtze river: Wuchang, Hankou, and Hanyang.

The city of Wuhan has the ninth largest population in China, it is considered the commercial and political center of Central China, and is a manufacturing hub too.

In terms of trademark meaning, under the test applied by USPTO trademark examining attorneys, Wuhan could be considered primarily geographically descriptive, requiring proof of acquired distinctiveness for registration.

At the USPTO, there is only one live application and three Wuhan registrations, none of which required proof of acquired distinctiveness before issuance.

Perhaps, despite its size and importance as a Chinese city, Wuhan was indeed obscure to the average U.S. consumer back in 1997, yet is unlikely to be so now.

The three Wuhan word and stylized trademark registrations are owned by Cardinal Percussion, who reportedly purchased all trademark rights in 2018:

While it appears the cymbals/gongs always have been hand-made in Wuhan, China, the U.S. trademark rights have been held by U.S. companies, with confusion about “fake Wuhans,” gongs coming from other factories in Wuhan, and even litigation in 2016 over Wuhan references to sell competing products.

The registrations are all more than five years old and now incontestable, meaning they cannot be challenged as merely descriptive, but what about genericness?

Incontestable registrations aren’t safe from genericness challenges, so it will be interesting to listen for how this claimed mark might be enforced in the future.

Even if a successful genericness challenge could show the existence of Wuhan as a category of cymbals/gongs, the brand owner likely still could assert logo rights.

Never forget, Miller owns rights in the stylization, for the generic category term:

Given recent events in Wuhan, cymbals and gongs aren’t the only goods that U.S. companies have considered associating with the Wuhan designation.

More than two months ago, in asking whether it is Curtains for Corona, we drew attention to some surprising “Wuhan” intent-to-use trademark applications:

“What puzzles me are the intent-to-use trademark filings last week for Wuhan Vax, Wuhan Corona Vax, Wuhan Mvax, and Wuhan Corona Mvax, all for vaccines.

If a vaccine became available to treat the deadly virus soon, wouldn’t those names be appropriate descriptive or generic vaccine names (not brand or trade names)?

Or, given the USPTO’s heightened focus on incapable informational matter, let’s stay tuned to see how these claimed virus marks are treated during examination.”

We’ll never know for sure how the USPTO would have treated the applications, as the Applicant sounded the gong itself last month, expressly abandoning them all.

We also may never learn if the abandonment was initiated for trademark reasons, or to avoid the debate as to whether using “Wuhan” with the virus stokes racism.

With Section 2(a) of the Lanham Act stripped of its previous protection against scandalous and disparaging marks, even if racist, 2(a) could provide no help now.

For the final act of this (Wuhan) Gong Show, introducing Wuhan Water. Love the alliterative quality, but given recent events, it’s hard to take the filing seriously.

As Barris promised: “We’ll be back, with mor-re ssstuff – right after this message!”

Upon seeing/hearing Orchid, how many will commit Orchard to memory instead?

Based on my experience, in residing on Orchid Lane more than a quarter-century, I’d venture to say, far more than you might believe — a real appreciable number.

Just this past weekend, during the age of “social distancing” guidance, someone having our address to make a delivery was confused, unable to find Orchard Lane.

I’ve noticed this confusion many, many times over the last twenty-five plus years.

More often than not, when a business seeks to verify our loyalty program status, we’ll give our name and phone number, then they’ll try to confirm, “on Orchard?”

I’ve corrected these errors too long, now I simply agree, knowing what is meant.

To make sure it isn’t just me, I asked my daughter whether she’s ever experienced others confusing Orchid with Orchard, she responded, “all the time,” so there it is.

Polling other family members yielded the identical response: “Yes, all the time!”

Funny thing is, we’ve never compared notes on the subject, until I began writing.

So, what does this discovery mean for trademarks and likelihood of confusion?

Trademark likelihood of confusion typically determines a brand owner’s scope of rights, and the similarity of marks factor considers sight, sound, and meaning.

Orchid and Orchard clearly have different meanings, and they sound different, but there must be something about this pair of words that leads to confusion.

Perhaps the principle that people tend to remember the beginning and the end of things is at work — leaving people to forget or pass over what’s in between?

If so, how is it that Orchid for watches and Orchard for chronometric instruments peacefully coexist on the Principal Register, with no refusal issuing at the USPTO?

I’m not too surprised by the lack of a USPTO refusal, despite this search guidance:

“Don’t forget to use truncation devices (*) or wildcards (?) to look for marks with word stems similar to yours.”

“Consider searching with alternative spellings and homonyms to your mark. Use words that have the same or similar meanings to your mark. Also try words that have similar sounds or appearances or even phonetic equivalents.”

Had the Orchard search disclosed Orchid (it appears not), perhaps the different meanings of the words still would have led to passing over the prior Orchid mark.

When a brand owner may assume a different word mark falls outside its scope of rights, could it inform a strategy by consulting lists of commonly confused words?

I’d like to know whether uniquely confused word pairs like this are overlooked or if they’re routinely swept within normal trademark search protocols, any thoughts?

More simply, based on my observations, if someone were inclined to capitalize on this common word confusion, why not create Orchard to compete with Orchid?

The situations aren’t identical, but could a brand owner find relief in countering a different mark/meaning defense, by relying on typosquatting trademark cases?

Both possible harms to the brand owner might be viewed as seizing the benefit of another’s brand equity by setting traps sprung by very predictable mistakes.

This also may be where the bad faith intent factor plays a role in analyzing all of the likelihood of confusion factors, including the similarity of the marks factor.

Since my frame of reference is that Orchid can make people think Orchard, I’m wondering, is the opposite true too: Does Orchard make people think Orchid?

Or, does the likelihood of confusion door only swing one direction with this pair?

How many other word pairs exist that are demonstrably and readily confused?

Finally, if you managed the Angry Orchard cider brand, would you be bothered by Angry Orchid beer? If so, no worries, that one is discontinued, at least it appears.

Too many questions to ponder, I’ll stop now, as we all continue “social distancing.”