We’ve been writing about the COKE ZERO trademark for nearly a decade now, noting in 2014:

“[I]t will be worth watching to see whether the [TTAB] finds that ‘ZERO’ primarily means Coke or just a soft drink having ‘no calories, you know, a drink about nothing . . . .’”

Turns out, in May 2016, Coke obtained a favorable decision from the TTAB, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

With that victory in hand, we then questioned Coke’s thinking in launching obvious generic use of ZERO, welcoming Coke Zero to the Genericide Watch, given this categorical and non-brand use:

Then, two months ago, the CAFC decided — on appeal — that the TTAB got it wrong, ruling it:

“[F]ailed to consider whether consumers would consider the term ZERO to be generic for a subcategory of the claimed genus of beverages – i.e., the subcategory of the claimed beverages encompassing the specialty beverage categories of drinks with few or no calories or few or no carbohydrates.”

We’re now back to the question we asked in 2014: “[I]s ZERO like LIGHT for beer, STONE OVEN for pizza — basically denoting the name of a product category instead of a source identifier?”

As to the next steps, the CAFC sent the case back to the TTAB, instructing it to “examine whether the term ZERO, when appended to a beverage mark, refers to a key aspect of the genus.”

TM types, is Professor McCarthy right that the CAFC ruling makes it too easy to find genericness?

I’m left wondering, given the floodgates that have opened up to other beverage brands also using ZERO as a generic category term for “no calories” or “no sugar” — is fighting for ZERO worth it?

 

 


 

 


Will Coke continue to fight for ZERO as a trademark? Or, should it make better soda instead?

How can The Coca-Cola Company even keep the trademark pursuit of ZERO going, when it already appears to have made the choice of making a better soda through its independent unit, Honest?


– Mark Prus, Principal, NameFlash

A portmanteau is a linguistic blend of words in which parts of multiple words are combined into a new word. Common language examples include smog, which is a combination of the words smoke and fog, and motel which combines motor and hotel.

Some big companies used the portmanteau technique to develop their names. Microsoft is a portmanteau of microcomputer and software. Groupon combines group and coupon.

However, sometimes companies refuse to admit that their portmanteau name doesn’t work.

Consider this manufacturer of pool maintenance products.

Yes, I get that they slammed “pool” and “life” together to get their name, but no matter how many times you look at this name it is hard to not see “Poo Life” isn’t it? And who wants to live a “poo life” anyway?

Here is another one. Yes, I see what they did here by combining “smart” and “tours.” But step away from the page for a second and look at it…what the heck is a “smar Tour” (or did you mean “smarT ours)?

Portmanteau names can be very good when the combination makes sense, but you have to have some common sense (as in most things in life). Combining words together to make a brand name can work or can look very stupid. Don’t be stupid!

Earlier this year, the Museum of Modern Art in New York City, known as “MoMA,” sued a cafe and art gallery, MoMaCha, also located in New York City, asserting claims of trademark infringement, trademark dilution, and unfair competition. As discussed in my post a couple months ago, although MoMaCha has some well-founded arguments and defenses, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city. MoMA’s motion for a preliminary injunction, filed in the Southern District of New York, is still pending. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

Despite the threat of MoMA’s claims and motion for preliminary injunction, MoMaCha has announced plans to expand to three additional locations in New York City. This type of significant expansion — growing from one to four locations — is a bold move in light of MoMA’s claims, even if MoMaCha is feeling confident in the merits of its arguments and defenses. In particular, damages for trademark infringement under 15 U.S.C. 1117(a) can consist of all the defendant’s profits from its sales of goods/services under the infringing mark, which can add up quickly. Adding three more locations could mean a quadrupling of such potential damages, depending on their profit streams. Furthermore, damages can be tripled under Section 1117(a) based on the circumstances of the case. Therefore, a pending infringement claim can warrant a conservative approach to a defendant’s business expansion — or even limiting the use of the claimed infringing mark — until the dispute is resolved, to mitigate the risk of damages.

Nevertheless, it is possible that MoMaCha might be following this conservative approach. Despite their announcement several months ago to expand to three locations, and coverage of that expansion in the media including articles linked above, after a quick Google search I’m not seeing that any new locations have actually opened, but any New Yorkers out there, let me know if you’ve seen more MoMaCha’s opening up. Stay tuned for updates.

As I’ve been known to do long before now, this past weekend I found myself gazing intently, this time, into the front label and back copy on this S. Pellegrino sparkling natural mineral water bottle:

Putting aside the question of the shiny red star logo, which we already have bloviated about, here, a few years back — my focus is centered on the surrounding Enhance Your Moments tagline.

No gold star for the brand’s failure to capture federally-registered protection for it, despite the obvious association with SanPellegrino, as shown in results of a simple Google search, here.

Another “no gold star” moment that needs a modicum of enhancement would be the back copy:

Why? As you can see, SanPellegrino has taken a perfectly fine, inherently distinctive, and suggestive trademark, and used it in a sentence (without brand emphasis) in a descriptive sense.

Make sense?

– Mark Prus, Principal, NameFlash

Summer is in full swing and that means baseball is top of mind for many of us. As a professional name developer, I continue to get a charge from the names of minor league baseball teams. Following up on my previous post on minor league baseball team names here are some controversial team names:

All of these names were controversial when they were introduced. Think about it…who wants to support the El Paso Chihuahuas? However, according to the brand name developer, Jason Klein of Brandiose, being controversial was the intent.

Today these franchises are successful examples of branding with great ticket sales and high merchandise sales.

Obviously, these are fun names and minor league baseball is all about fun. However, the genius in these names is not that they are just fun…the names leverage a bit of history and are familiar to the target audience.

Take the El Paso, TX Chihuahuas as an example. When the name was introduced there was an uproar in the local community about the derogatory nature of the name. Shortly thereafter, articles of support started appearing (such as this one) and the name became a rallying point.

The same thing was true with the Hartford, CT Yard Goats. Yard Goat is a relevant name in Hartford as “yard goat” is railyard slang for the switch engines or terminal tractors that shuttle train cars between different locomotives, and Hartford has a strong rail presence.

In the 19th century the leading industry in the Lehigh Valley was iron production, and therefore the IronPig name makes sense (“pig iron” is the term for the raw iron that gets melted down to make steel).

Using a “safe” name might seem like a good idea, but safe names are generally mainstream names that don’t stand out.

Finally, please recognize that I’m not advocating “alphabet soup” names that seem to be in vogue with startups. If a name has some relevance, but is different enough to be noticed, then it might be worth the risk in the long run!

-Mark Prus, Principal, NameFlash Name Development

When you finally identify a name for your business, product or service, you must conduct proper due diligence to ensure that you have a legal right to use the name. Trademark searches are mandatory and I’d strongly recommend talking to a great trademark attorney. A little upfront time and money can save you a ton of heartache and cash at a later point (if, for example, the name you decide to use is challenged by someone who is already using a similar name).

One of the other things you should do is conduct foreign language checks using native speakers to identify if the name has unfavorable meaning in a foreign language. Even if you do not plan to market in a foreign country, you do not want your name associated with unfavorable meanings. Here are some examples that prove the point:

  • Barf Detergent – In Persian apparently Barf means snow. But can you imagine the conflict in the mind of an English speaker when seeing a detergent called Barf?

  • Vicks – When Vicks was introduced in Germany, somebody forgot that the German pronunciation of “v” is “f” which made their “Vicks” brand name sound like slang for sexual intercourse (the name in German speaking countries is now Wick which translates correctly).
  • Scat Airlines – An airline based in Kazakhstan. Not sure if an English speaker would fly them.

  • Emerdata – This is the reincarnation of Cambridge Analytica. I find great irony in the fact that the name translations in Portuguese and Italian refer to the act of defecation.
  • IKEA – IKEA has a unique naming convention that often leads to translation errors. For example, some product names sounded like sex acts. And in many cases, IKEA names just sound amusing to English speakers:

Perhaps there is an alternative strategy to conducting a disaster check on international translation. What if you actively looked for names that translate well across the major languages of the world? As an example, one of the reasons that Kit Kat is so successful in Japan is the name “Kit Kat” famously translates to “You will surely win.”

“Good Translation” might be an excellent naming strategy!

A couple of years ago, our friend John Welch over at the TTABlog reported about a white color trademark that had acquired distinctiveness, according to a rare precedential TTAB decision:

No, that’s not a roll of toilet paper, it’s a preformed gunpowder charge for use in muzzleloading rifles. And the applied-for mark was described as “the color white applied to gunpowder.”

The application was filed almost five years ago. And after multiple responses over the years to various USPTO refusals, in 2015 the Applicant appealed the lack of acquired distinctiveness.

And, as John reported, the TTAB reversed the lack of distinctiveness refusal, instead being persuaded that Applicant’s look-for advertising and other evidence established distinctiveness:

But, that’s not the end of the story. Turns out there is a relevant utility patent, called White Propellant Compositions, which led to the filing of a weighty 50-page Notice of Opposition.

It spells out in dramatic detail the functionality of the color white for the gunpowder charges, among other grounds for registration refusal, and judgment has been entered against Applicant.

In case you’re wondering, yes, we were privileged to light the match on this one. Word to the wise, never forget the timeless ticking time bomb of functionality. It kills trademarks in its tracks.

Kaboom, but judge for yourself whether the claimed mark is looking more like toilet paper now.

Suspended high above Chelsea Market in New York City are these eye-catching ads for OWYN:

That’s a new brand for me, I’m unsure how to pronounce it (Own, Owen or Oh Win), but OWYN apparently stands for Only What You Need — for dietary supplement protein products that “use nutritious, plant-based ingredients and leave out inflammatory animal products and allergens.”

Meanwhile, another kind of suspension has occured deep within the bowels of the USPTO, where the OWYN federal trademark application is presently suspended, because of a prior-filed pending intent-to-use application for EWYN, covering overlapping goods, including dietary supplements.

Fortunately for OWYN, it had filed an even earlier intent-to-use application for the spelled-out mark OWYN ONLY WHAT YOU NEED, beating the EWYN filing date by six months, giving OWYN the ability/leverage to file a Notice of Opposition against registration of the blocking EWYN application.

Actually though, had the OWYN application been filed when the earlier OWYN ONLY WHAT YOU NEED application was, the suspension and ITU log jam at the USPTO could have been avoided.

As it stands now, the OWYN application is suspended pending the outcome of the prior-filed EWYN application, which in turn is suspended pending the outcome of the opposition against it, which is suspended while the parties attempt to settle the conflict and discuss likelihood of confusion.

In the Opposition, OWYN contends there is likelihood of confusion between EWYN and OWYN ONLY WHAT YOU NEED, which is a bit dangerous to allege. If it loses that argument, it won’t be able to knock out the blocking EWYN application, making it difficult to then convincingly say there is no likelihood of confusion between the more similar OWYN and EWYN marks, for the same goods.

Working backwards, and as a practical matter, unless the parties are able to reach an agreement as to peaceful coexistence, the OWYN application likely will remain suspended unless and until the prior-filed EWYN application is knocked out of the way or otherwise abandoned.

This train of suspensions is a good reminder to file all pertinent intent-to-use applications sooner than later, once a bona fide intention exists to make commercial use of the mark in commerce.

It also illustrates how important intent-to-use application filing dates can be in determining priority, especially when there is a long period of time that elapses before actual use is made.

On a lighter and less technical note, and for any Lord of the Rings fans out there, do any of the marks in this discussion remind you of EOWYN (pronounced A-O-WIN)?

How, if at all, might you rely on the existence of EOWYN to argue either side of the likelihood of confusion argument between EWYN and OWYN?

–James Mahoney, Razor’s Edge Communications

Recently, I came across a snappy-looking website with unconventional design for a small consulting company. It’s cleverly done, easy to navigate, and appears to have good information.

I say “appears to have” because there’s one slight problem: it’s challenging to read it. The design motif has small white type on large circles that are color-coded for the different sections. You have to be very motivated to read more than a few paragraphs on some of those circles.

It reminded me of an anecdote related by a writer colleague that occurred at a design staff meeting. The creative head held up a print piece the group had recently produced, and asked, “What’s wrong with this?”

Lots of designers chimed in with thoughts, each of which she dismissed with a “Nope.”

My colleague, who was the only writer in the room and had known right away what the problem was, finally spoke: “You can’t read it.”

“Right!” said the design chief.

Like the website, it was an interesting design and looked good. But as often happens, the designer(s) saw text as simply a design element and failed to remember that the copy needs to be readable, too.

Vampire video falls into a similar trap. It starts out as a good idea for communicating marketing information. But somewhere along the line, both the creative team and the marketers get seduced by the idea itself, and lose sight of the communications objective.

You usually wind up with a really well-produced video that’s interesting and even fun to watch—so much so that the original marketing objective has inadvertently taken a distant second place to the idea.

So how does this happen? Whether we’re predominantly on the visual or the writing side, even the most pragmatic among us chose this career because we love the creative part of the business.

Most marketers do, too. As one once told me, “You guys get to do all the fun stuff.” (Hard to remember that when it’s midnight and you’re still banging away to meet an 8 a.m. deadline.)

When solving communications problems with creative ideas is your stock in trade, it’s no surprise that some of those ideas will sweep you down a very different pathway than the one you set out for. It’s a seduction that we need to be continually on guard against.

Of course, neither showcase design nor vampire video has ever occurred in any of my projects. (Cue the trombones.)

–James Mahoney, Razor’s Edge Communications

Awhile ago, I wrote about how casting decisions almost always make someone cranky. Lately I’ve been seeing lots of commercials that speak to the flip side of the crankiness factor.

Creative teams are always on the lookout for ways to connect with the zeitgeist. Most of the time, if you see a “hip” reference in an ad, it’s already gone mainstream and it ain’t hip anymore.

But advertising can move the social needle and get more people to migrate their views from the fringe of the bell curve into the big bulge of it. The more we’re exposed to an idea, circumstances or conditions, the more we tend to accept them as within the norm.

Case in point is the increasing portrayal in advertising of nonconventional families and pairings.

The first time or two some people see this, it can be jarring for them. But for the majority of people, I venture, this reaction fades over time as the imagery becomes part of the mainstream. I think one result is that while an individual’s feeling about, say, mixed-race couples might not change, regularly seeing nonconventional portrayals helps move people closer toward at least tolerance, if not acceptance.

Incidentally, despite the popularity of nonconventional casting in ads, there isn’t some vast coordinated conspiracy at work here, though some may suspect that. The advertising/communications community isn’t monolithic, except in its desire to connect with target audiences and to appear tuned in. That means independently latching on to the latest nifty trend.

So how do you “authentically” ride a social trend? In a word, subtly.

Here’s an example:

Years ago, we did a marketing video that included a planning session in a typical conference room and featured a half-dozen people representing various departments and responsibilities.

One of the actors we cast was a young woman in a wheelchair. The crew made two shots of her delivering her lines; one where the wheelchair was obvious, and the other, where only elements of the chair were visible and not immediately noticeable.

I told the editor to use the second shot.

“But don’t you want people to see that she’s in a wheelchair?” the producer asked.

“Not obviously so,” I replied. “The idea here is for the audience to focus on her and what she’s saying. The power of the wheelchair is that you don’t see it right away, if at all, and that it’s irrelevant to a person’s ability to contribute and be good at the job.”

The point? When nonconventional casting is not the star of the show, advertising can influence attitudes as well as sell product. When you make it the star—”look how hip we are”—you’re more likely to irritate people rather than influence them.