October 2010

If you suffer from Cloud confusion, you are not alone. A recent study from Hubspan, an application integration and hosting company, found that about 39% of the companies in the study either planned to move some business application to the cloud or had no interest in to add a cloud or SaaS based project. The top reason…

–Dan Kelly, Attorney

Sometimes the posts just write themselves:

I’m still trying to get “Natural” together with “Spray-on Tanning” in my head.

“Natural” is one of those words that I see frequently to describe a number of products and services, especially food products.  But I’m not sure that it always means what I understand it…

–Susan Perera, Attorney

I was surprised to see the six registrations pictured above for color marks come out of the USPTO this month.   And I bet that most of you can identify the owner of these marks without even checking the registrations. (If you must, registrations: here, here, here, here, here, here, and here.)

Although I wouldn’t consider my childhood one of rural Minnesota, I have still been aware of, and associated, the distinctive green and yellow colors on lawn and tractor equipment with John Deere for as long as I can remember.   In fact, I would consider John Deere’s use of color as distinctive as any of the textbook examples (e.g. UPS brown or Owens-Corning pink). Thus, I was quite surprised to see Deere has just now received trademark registrations for some of these color marks. 

A little research shows that even the most respected name in lawn and tractor equipment can face an uphill battle to protect its brand.  Deere has spent almost 3 decades parsing out the law of color marks and achieving federal registrations for its equipment bearing “John Deere Green” and “John Deere Agricultural Yellow.”

A short summary of Deere color mark history:

  • June 1982 – Deere sought to stop a competitor from using green and yellow on tractor attachments by way of an unfair competition claim. The court held that green and yellow were aesthetically functional and barred any relief.
  • March 1982 – Deere filed an application for a horizontal yellow stripe on a green machine hood or panel. Reg. No. 1,254,339 
  • December 1985 – Deere filed an application for a green vehicle body or frame with yellow wheels. Reg. No. 1,502,103
  • December 1985 – Deere filed an application for the colors bright green and bright yellow in connection with wheeled agricultural lawn and garden machines. Reg. No. 1,503,576
  • March 1988 – Trademark Trial & Appeal Board grants registration for 1985 marks originally refused registration based on aesthetic functionality of marks.
  • February 2004 – Deere sought to stop competition for making yard and garden equipment also bearing green and yellow colors. The court held that Deere could not inhibit the competitor from using the colors green and yellow in the abstract.
  • February 2005 – Deere filed an application for agricultural and lawn tractors consisting of a green vehicle and a yellow seat. Reg. No. 3,132,124
  • 2010 – Deere filed applications for more than a dozen color claims in connection with a variety of machines.

After the jump a discussion of color trademarks and Deere’s role in the history of trademark color law.

Continue Reading Color Marks & One Company’s Long Haul to Color Mark Protection

—Dave Taylor, Taylor Brand Group

In this age of fiercely defended intellectual property, it’s tough developing even a single new product name.  Registered trademarks guard their brand territory in every industry and fence out their competitors. Launching a new product name can take months or years of name generating, testing, and legal process.

Done well, a sound naming strategy can help establish your brand as the high ground in the marketplace battlefield, where it will be aspired to, imitated and competed against by lesser brands struggling to reach the top.

Done poorly, product names can have awkward connotations, comprehension issues, or nagging legal problems that will cause confusion among your prospects and customers, and pay for new furniture in your attorney’s beach house.

Yet amid the difficulty of getting even one product name right, Honda Motors has gracefully created a whole family of product brands that couldn’t have been better if not a single circle R stood in their way. Consider their two most popular models, the Civic and the Accord. Link them together with other successful models, the Prelude, or the Pilot. Ahhh, do you feel it? There is a reassuring promise of peace and harmony that comes from not just one of those names, but all four of them. The Insight, the Fit and even the quirky Element are equally well integrated into the Honda family of pleasant, calming automobile trademarks. Each name has meaning we instantly understand, but in addition they work seamlessly together as a family of brands.Continue Reading In the Brand Name Game, Honda Gets it Done the Hard Way

Seems as though there is a lot of discussion and news reports these days about bullying and how to put a stop to it: School bullying, workplace bullying, and cyber-bullying, to name a few of the most common types. Fair enough, as I recall, my seventh grade PE teacher was a real bully.

However, for those of you who haven’t heard yet, there also is growing interest in examining a brand new type of bully, and they are calling this creature the "trademark bully".

That’s right, the U.S. Patent and Trademark Office (USPTO) is currently seeking information about various litigation tactics, including whether "you think trademark “bullies” are currently a problem for trademark owners, and if so, how significant is the problem?" If you have an opinion on these questions, please share your views below, and the USPTO would like to hear from you here.

So, what is a "trademark bully" you ask? The USPTO’s survey provides this definition: "A trademark ‘bully’ could be described as a trademark owner that uses its trademark rights to harass and intimidate another business beyond what the law might be reasonably interpreted to allow."

The USPTO’s "trademark bullying" inquiry apparently stems from some language in the Trademark and Technical Conforming Amendment of 2010, directing the Secretary of Commerce to "study and report" to Congress on “The extent to which small businesses may be harmed by litigation tactics attempting to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.”

Beyond a "reasonable" interpretation of the scope of rights granted to the trademark owner? Of course, the plaintiff and defendant will never agree on what might be considered a "reasonable" interpretation of the scope of plaintiff’s trademark rights, even in the most routine trademark cases, so whose perspective decides what is reasonable for the purpose of applying the trademark bully label, and what are the consequences, if guilty? Moreover, who decides what "might be" reasonable under the circumstances, since those additional qualifying terms appear in the USPTO query?

In addition, I’ve heard before that "reasonable" minds can differ on just about anything. And, in my experience that is especially so when it comes to arguing and deciding trademark disputes, where litigants argue over and decision makers are asked to carefully balance the evidence according to a number of multi-factor tests, including likelihood of confusion, trademark fame, likelihood of dilution, and bad faith intent to profit, to name just a few. This isn’t exactly black and white material. Then, add to all that, an understanding that trademark rights are dynamic, not static, their scope can shrink or grow over time, and also recognize that trademark attorneys have an ethical duty to zealously represent their clients. 

So, even with all that, we’re still to decide how to apply the trademark bullying label based on mere reasonableness? Sorry, but that seems, well, unreasonable to me.Continue Reading The Mark of a Real Trademark Bully

–Dan Kelly, Attorney

Last Friday, MVL Rights, LLC, a Disney subsidiary and apparent owner of rights in the HULK name and character of Marvel Comics origin, filed a lawsuit in the U.S. District Court for the Southern District of Ohio against Airbase Industries, LLC regarding Airbase’s use of HULK in connection with air compressors.  [Insert obligatory Hulk-angry-lawsuit quip here.]  The first newsflash I read reported that Airbase’s HULK-branded compressors are green (like the Marvel Comics Hulk character).  Even so, without further investigation, knowing only the word marks (identical) and goods and services of the parties (fictional character vs. air compressors), and potential color similarity, I reserved initial judgment, envisioning a host of scenarios that could cut in different directions, for or against either party.

A back-of-the-envelope trademark infringement analysis usually focuses on the two leading elements in the likelihood of confusion analysis:  the similarity of the marks and the similarity of the goods.  Here, the word components of the marks are identical–both are HULK.  The goods and services?  Much more difficult.  I am not accustomed to seeing comic-book characters adorn or endorse shop equipment, but I suppose it is not beyond the realm of possibility.  The word “hulk,” after all, has a dictionary definition of “a large or unwieldy boat or other object,” which could describe or suggest many types of shop equipment.  (In terms of a character to endorse or sponsor heavy-duty shop equipment, I suppose that a company could do worse than The Hulk.  On the other hand, he is not terribly eloquent and is a bit juvenile.)

Today I had time to actually review the complaint and exhibits filed with the complaint, and here’s an image of the accused infringing goods:Continue Reading Shop Tools by Marvel Comics?

—Joy Newborg, Winthrop & Weinstine, P.A.

As Election Day, November 2nd,  is fast approaching, I thought it would be timely to do a piece on politicians and how they periodically run afoul of the copyright laws.

Over the past few years, there have been several political candidates accused of using copyrighted material in…

–Susan Perera, Attorney

It’s that time of year again, when retail stores featuring ghosts, goblins, and all things spooky begin to appear. This year multiple parties went trick or treating at the USPTO to register their trademarks for Halloween retail store services, and apparently they weren’t all reading Steve’s post from earlier this year regarding…

—Anthony Shore, Operative Words

Let’s be honest: There’s a lot of bullshit in branding.

It’s a pity — and it’s a threat. Because today, brand or marketing communications exuding any whiff of bull will be distrusted, discredited and derided by today’s cynical audiences.

And no audience is more cynical than the 18-34 years-olds — the Millennials — who were born into an online marketplace awash in spam, paid “user” reviews, phishing and other greedy deceptions.

These cynics can sniff out bullshit from a mile away. Actually, they’re waiting for it. And when they zero-in on the source of a communication’s stench — an exaggeration, an ambiguity, an inconsistency, nonsense, a promise too good to be true — they’ll pounce. And rather than just take their business elsewhere, they’ll take up a cause to expose and punish the bullshitting offender by urging others to boycott.

Bullshit-free branding has always been important. Today it’s important and urgent.

Because nowadays, you can’t fool any of the people any of the time.Continue Reading Does Your Branding Pass The SNIFF Test?

by James Mahoney, Creative director/writer at Razor’s Edge Communications

What does a 42-year-old military offensive have to do with branding and social media? Quite a bit, as it happens. Consider four seemingly unrelated situations:

First, clothing purveyor Gap experienced an alleged misadventure recently when it unveiled a "new logo" on its website, only to reinstate the old logo a week later in the face of withering online vilification.

Second, Tropicana experienced a real misadventure when the company jettisoned its venerable and valuable "straw in an orange" for a new look and identity. That disastrous move was reversed in the face of actual withering response: a precipitous sales drop that validated the hue and cry.

Third, a few years ago, The Wall Street Journal revamped its look and feel. As change like this always does, this generated initial resistance in the readership, who had to recalibrate their familiarity with the paper. But the change was durable and the transition period short. Since then, the WSJ has continued to successfully tinker with the design and content.

Fourth, history students, and those of us old enough, will be familiar with the 1968 Tet Offensive of the Vietnam War. For others, here’s a brief description: At a critical moment in that war, the North Vietnamese launched simultaneous attacks across South Vietnam during the normal New Year’s armistice. While the offensive was a resounding and crippling military defeat for North Vietnam*, it was perceived as a convincing victory for them by the American public, whose only points of reference were frightening scenes of bloody combat in near-realtime on our living room TVs, and commentary in the media.

So, what’s the connection? All four were abrupt events that dislocated a status quo. All four involved branding and media, social and otherwise. Two were successful; two weren’t.Continue Reading Gap, Tropicana, The Wall Street Journal, and the 1968 Tet Offensive