July 2009

Although intellectual property lawyers of the Dr. No variety may not like to admit it — I submit that, not all slippery slopes are created equal. While some slippery slope cautions might prevent a few bumps and bruises in traveling along a particular path (e.g., the one on the left below), I suspect far fewer slippery slope cautions actually prevent life-ending falls from perilous cliffs (e.g., the one on the right below), yet other man-made slippery slopes specifically are designed for fun and enjoyment — not danger — and have generated enormous sales over the years (e.g., WHAM-O’s SLIP’N SLIDE brand products).

  

So, putting aside Professor Douglas Walton’s teaching that the slippery slope argument is “often treated as a fallacy,” it is worth asking what brand of slippery slope most accurately represents the risk associated with marketers using their brands and trademarks as verbs?

As discussed in Part I of my Just Verb It? series, many marketers love the idea of having their brands embraced as verbs, but many trademark lawyers totally forbid any “brandverbing,” i.e., “mis-using” brands (adjectives) as verbs: “Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors.”

No doubt, genericide — the ultimate fear of using brands as verbs — equals certain trademark death, a horrible result from both marketing and legal perspectives; but, I submit it doesn’t necessarily follow that brandverbing activities automatically result in trademark death or genericide. To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?Continue Reading Just Verb It? Part III: Testing the “Slippery Slope” of Using Brands as Verbs

— Karen Brennan, Attorney

Now that the Tour de France is over, it looks like the choices in evening television once again consist of several versions of the same reality show.  I can’t complain, the Tour was phenomenal this year and I enjoyed every minute I was able to watch (thank you DVR).

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Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.Continue Reading Internet Surveys — Powerful Yet Perilous

–Sharon Armstrong, Attorney

What has a head but no neck, feet but no legs, a perfectly tipped hat but no arms, is 7’10” tall, and induces glee and cavities in people of all ages? The world’s largest dispenser of Pez, of course! A creation of the founders of the Burlingame Museum of Pez Memorabilia (the “Museum”) in Northern California, the enormous snowman-headed Pez dispenser likely appears to most consumers as no more than the ultimate homage to this legendary candy and dispenser and the place they have achieved in the popular consciousness.

The makers of Pez, however, beg to differ. In late June, Patrafico AG and Pez Candy, Inc., owners of the PEZ trademarks, trade dress and brand, sued the founders of the Museum for trademark infringement and related causes action stemming not only from the founders’ creation and promotion of the Snowman dispenser, but also from the founders’ alleged unauthorized manufacture and sale of unapproved Pez dispensers and related merchandise at the Museum. A copy of the complaint can be viewed here.

The plaintiff’s filing of this suit raises some crucial questions about the nature of well-known trademarks and trademark owners’ desire to see their brands protected through litigation. First, it is possible that the defendants will raise the defense of nominative fair use, which I’ve blogged about before here. In a nutshell, nominative fair use allows Party A to use Party B’s trademark provided that Party A’s use of the trademark is necessary to identify Party B or its goods and services and Party A doesn’t use the mark to suggest that it is endorsed by Party B. Here, the Museum, which has not only operated for over 14 years, but did so for many years under agreement and with the blessing of the plaintiffs, appears to use the PEZ trademarks and trade dress to refer to Pez candy and Pez dispensers only – not to refer to other types of candy, such as Hershey’s Kisses or Laffy Taffy. Though I’ve never visited the Museum, the Museum’s web site includes a disclaimer of affiliation with the plaintiffs and a note that PEZ is a registered trademark of the plaintiffs. All in all, such use would appear at first blush to pass the nominative fair use sniff test.Continue Reading Sweet Candy or a Bitter Pill?

–Dan Kelly, Attorney

I recently traveled to Omaha and noticed the following billboard:

For those not familiar with these companies, Qwest Communications is a telecommunications company that services many western states.  Cox Communications is another relatively large telecommunications company.  Both serve the Omaha area.  The billboard is an example of nominative fair use, which Steve

Mark Image   

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

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

My early and initial observations of the Geek Squad trademark Complaint are below the jump.Continue Reading Battle of the Nerds? Best Buy’s Geek Squad¬Æ on Trademark Patrol

How would you describe your work environment? Is it a dictatorship or democracy? Is it a cut-throat or supportive environment? Is it an environment of slackers or go-getters? How is your workplace different than other companies or firms in your field? In other words, what sets your company apart from the crowd?  

When most people hear the word “branding” they