Over the weekend, Seth Godin shared some wisdom that resonated, In or out:

Often overlooked is how uncomfortable it is to sit on a fence.

Get in or get out. Wasting time sitting on the fence wastes far more time and emotion than you’d expend committing to something.

I’d add to that sentiment, when you’re in the business of providing professional services, it’s a disservice to sit on the fence, not pick a side, or take a position.

In a similar vein, here are some illustrations, shared over the last dozen years:

J.D. Waffler: The Art of Taking a Position

Yes, No, and the Ever Confusing Maybe . . .

What’s 50/50 Legal Advice Worth to You?

To sum it up, flipping the coin shouldn’t be an option, when someone is paying for your honest opinion on a subject that you purport to know something about.

The really big news that commanded attention was back in July 2020, when the NFL franchise near Washington, D.C. announced it would be “retiring the R*dskins name and logo.” You may recall this gem: NEVER Means Forever, Until it Doesn’t.

Honestly, after two seasons of the team using the generic Washington Football Team name, I had wondered whether Daniel Snyder had given up on brands and if a new name ever would come, but today there is some news to report.

As NPR has reported today: The Washington Football Team’s New Name is the Washington Commanders. Apparently the Today show broke the story.

The team didn’t break any speed records, however, as nearly thirteen years ago, I made this observation: Re-Branding Madness in Washington Overlooks Obvious.

While Daniel Snyder may not have given up on branding, stay tuned as to whether he has given up on trademarks, as of today, I could only find two federal applications on file at the USPTO containing WASHINGTON and COMMANDERS.

Neither Washington Wolf Commanders nor Washington Space Commanders appear to be associated with the team.

Over the past dozen years, we’ve been admiring Rapala’s annual creative billboard campaign that continues to maintain the same eye-catching look and feel.

Love the white canvas, the red stylized Rapala brand name, the Original Floating lure, and a creative and often humorous attention-getting term or phrase in black ink, sandwiched in between (and hooked by) the lure and the brand name:

In case you’re wondering, I’ve listed my 2021 favorites in order above, with “Smooth whopperator” receiving top marks, presumably blending an eclectic nod to this song and catching a “whopper” (or telling a “whopper” as anglers are known to do). Also could be a reference to that large burger brand.

But probably not this beer brand, based on this candy brand? And hopefully not to be confused with this registered Whopper Plopper® brand lure.

Which Rapala billboard is catching your attention in 2021?

We can all think of and relive a multitude of reasons over the past year to embrace Dean’s timely #Flush2020 billboard ad as we prepare to ring in the New Year.

We also can look for silver linings before we bid farewell to 2020, some glimmers of hope and thankful reflections to provide fuel for 2021, here are some of mine:

  • Quality-time with our daughter when she studied remotely and still thrived;
  • Trading my commuting time for coffee and conversation with my soul-mate;
  • Two college graduations in our home and gainful employment that followed;
  • Quiet times meditating in the hot tub under the stars with falling snow;
  • Opportunities of escaping to enjoy the beauties of Northern Minnesota;
  • Good health for family and close friends in the midst of a global pandemic;

 

  • Enhancing my home office without knowing what was about to happen;
  • Visits to a dozen GT offices before knowing what was about to happen;
  • Engaging walks around the lake with colleagues, mentees, and clients;
  • Close collaboration with many incredible GT colleagues across the globe;
  • Amazing technology support from Greenberg Traurig’s IT Department;
  • Trading the previous faceless phone calls with more face-to-face video calls;

 

  • Bountiful, new and meaningful work in the midst of a global pandemic;
  • Opportunities to speak virtually and share insights with smart colleagues;
  • So many brand new client relationships both locally and from a distance;
  • Incredible teamwork both locally and across the entire global GT platform;
  • Fun and humor we were able to share in the midst of a global pandemic;

 

What are you thankful for about 2020 that gives you hope toward a better 2021?

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.