– Mark Prus, Principal, NameFlash

Mastercard has become the latest company to shift to a “no name” approach to branding.

Of course, they aren’t the first to do this (see Nike, Starbucks, Apple, Target, etc.). We are living in an image-driven world (e.g., Instagram) so this trend is not surprising.

A Mastercard spokesperson said: “As the consumer and commerce landscape continues to evolve, the Mastercard Symbol represents Mastercard better than one word ever could, and the flexible modern design will allow it to work seamlessly across the digital landscape.”

One thing that many people forget is the millions (billions?) of dollars invested in the Mastercard name itself. And yes, that Venn diagram logo design is on every single credit card that Mastercard offers. It is no surprise that “…over 80% of people recognized the brand without the name.”

Does this trend mean that professional logo designers are more in demand or professional name developers are doomed? Nope. Mastercard could not have started with a snappy logo and assumed that everyone would get it. They spent years investing in their brand name and now they can reap the benefits. But you can’t just skip to the “image only” logo design. You have to create the meaning first, and that requires a great brand name (and logo!).

Last Friday, the Supreme Court decided it will hear the Brunetti case, and take a closer look at Section 2(a) of the Lanham Act, the portion forbidding federal registration of trademarks having matter that is scandalous or immoral.

So, it appears my big prediction for 2019 is pointing in the affirmative direction:

“In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.”

Now that the Court has decided to review Brunetti, it will be the one to decide whether the “scandalous” and “immoral” bars to registration violate the First Amendment, not the Court of Appeals for the Federal Circuit.

So, perhaps Chief Justice John Roberts was foreshadowing a review of Brunetti, when he was speaking in Minneapolis, and said: “Obviously, if any court finds an Act of Congress unconstitutional, we will take it . . . .

To piggyback on what I wrote back in October:

“There are plenty of good reasons for the Court to decide the constitutionality of the “scandalous” and “immoral” language, separate and apart from the disparagement language found to violate the First Amendment in Tam (here, here, here, here, here, and here).”

“If the Court does hear Brunetti, let’s hope Section 7 of the Lanham Act — the provision expressly noting that federal registrations are issued ‘in the name of the United States of America‘ — won’t be some uninteresting and ignored ‘nuance’ of trademark law to the justices.”

You may recall, I previously said this about the Federal Circuit’s overreach in Brunetti:

“What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.”

“The CAFC did not decide whether the ‘scandalous and immoral’ clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.”

“The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.”

I’m thinking the Court will decide that the Federal Circuit went too far in Brunetti, and it will find a way to retain the “scandalous” bar to federal registration, though I’m doubting the “immoral” bar will survive, so stay tuned.

What are your predictions dear readers?

Before we think predictions for 2019, let’s consider the vast ground we’ve covered in 2018:

Wow, I’m exhausted, and these highlights are only a small fraction of what we delivered in 2018.

You may recall, earlier this year, I predicted more informational and failure to function decisions.

As our friend John Welch reported, there were more than a few (here, here, here, here, and here).

Stay tuned, on March 13, in New York City, I’ll be diving deeply into the failure to function topic, among others, at Practicing Law Institute’s Advanced Trademark Law 2019: Current Issues.

In terms of my big trademark prediction for 2019, it will be revealed whether the scandalous bar to federal registration is invalidated, whether or not the Supreme Court agrees to hear Brunetti.

So, what is your big trademark prediction for 2019?

With the holiday season half way over, and Christmas less than a week away, you’re running out of time to bring some holiday cheer to those around you. Luckily, Chipotle, Taco Bell, and Jimmy Dean have your back and they’re ready to help you surprise and delight your food-obsessed friends and family this Christmas.

Perhaps your spouse just can’t get enough burritos from Chipotle? Well, how about Chipotle-branded guacamole, salsa, or tin foil wrapping paper on their gifts?

Or maybe your childhood memories are filled with the scent of a hearty breakfast on Christmas morning at your grandparents’ home. I’m sure your grandma or grandpa would be giddy with excitement when their gift comes wrapped in this sausage scented Jimmy Dean wrapping paper.

If your best friend is more into Taco Bell. You could go all out and build a tower of gifts, with guacamole, cheese, and the rest of the ingredients filling your gift stack wrapped from top (tortilla) to bottom (tortilla).

In today’s age of social media and cable cutting, creative marketing efforts like the above could encourage and deepen brand loyalty among consumers. It’s also a whole lot of free advertising as consumers share this content on social media platforms like Twitter, Instagram, and Facebook. In fact, the Taco Bell CrunchWrapping paper apparently reached #16 on Amazon Canada’s Best Sellers list before it sold out, so the preliminary results suggest the campaign was a success. With this success, it would not be surprising to see more brands join in on the fun next year, so keep an eye out next November for 12 feet of high definition Arby’s roast beef!

Congratulations to Stanford University’s Women’s Volleyball Team, winning the NCAA DI National Championship this past weekend in Minneapolis’ Target Center, defeating Nebraska in Set 5:

The competition was incredible, a real seesaw battle, Stanford winning Set 1 (28-26), Nebraska Set 2 (25-22), Stanford Set 3 (25-16), Nebraska Set 4 (25-15), setting up the Set 5 tiebreaker.

Even from our elevated vantage point, it was a challenge to ignore Stanford’s wild band, erratic cheerleaders, and bizarre dancing tree, during the many breaks in the action.

The Stanford Tree, not in the University’s official logo and seal, instead the spastic and gyrating Tree mascot, is simply “a member of the band” — as the University has no “official” mascot.

 

As the Sets progressed, an interesting pattern emerged, but not related to the random, spontaneous, and irrreverent motions and defiant gestures of the merry band of cheerleaders and Tree mascot. Any choreography appeared impossible to script.

No, the pattern I noticed was that each of the first 4 Sets was won by the team that had its back to the band, in other words, turned 180 degrees away from the Stanford Tree.

 

 

In contrast, the losers through Set 4, always faced the Tree, in defeat, coincidence, I think not.

The teams switched sides at the close of each Set. During Set 5, with its back to the Tree, Stanford was up 8-7 at the half, then switched sides again to face the Tree, but somehow was able prevail, in the end, while facing the Tree, winning the 5th and final Set: 15-12.

So, with all this turning away from the Tree mascot, positioning the team to win a National Championship on the one hand, and disavowing the Tree mascot on the other hand, specifically rejecting it as not the University’s mascot, I’m left wondering, who owns it?

In other words, clearly there is intellectual property wrapped up in the Tree mascot costume, I’m seeing both trademark and copyright at work here, but really, who owns it?

Put yet another way, who should Reese’s call for a co-branding opportunity to have the Tree mascot appear on packaging for these little gems, or perhaps, the gems themselves?

Can the University automatically own the intellectual property in an “unofficial” mascot? What are the legal distinctions, if any, between official and unofficial mascots?

For what it’s worth, disavowing the Tree, and its unofficial status, apparently hasn’t prevented the University’s payment of NCAA fines against Stanford when the Tree is especially unruly.

At Stanford, it appears that the student selected by the band to perform as the Tree for the academic year, wears the costume created by his or her predecessor from the previous year.

As to copyright, do you suppose there is a work for hire arrangement in place? So, who would you call to license the IP associated with the Tree? Here is a list of the apparent creators.

Earlier this year I posted about a trademark dispute regarding the use of the term “Square Donuts” for square-shaped donuts. The case involved proceedings both in federal court and at the Trademark Trial and Appeal Board (TTAB), between the Square Donuts cafe in Indiana (which claimed decades of prior use and a trademark registration); and the Family Express convenience-store chain (which sold square-shaped donuts called “square donuts,” claiming the term is generic). As we discussed, the case raised the interesting question of whether the term Square Donuts is generic for cafe services that feature square-shaped donuts (which still look delicious by the way, see below).

Perhaps fortunately for the parties involved, but unfortunately for our curious readers, it appears there will never be a decision answering this question, as the case is headed to a settlement and dismissal. A docket entry on August 30, 2018 in the federal court proceeding states “Settlement Reached,” following a settlement conference between the parties.

However, the case has not yet been dismissed, as the parties have not yet finalized the settlement and dismissal documents. After the court recently granted a joint motion for extension of time, the deadline to file dismissal papers is by the end of this month. In the meantime, there do not appear to be any public updates or press releases yet, regarding the nature of the settlement, on the parties’ respective websites (here and here). However, I do note that the Family Express sub page, “Our Brands,” no longer features “Square Donuts” as one of their “our proprietary brands,” as it did at the time of my previous post in May.

Therefore, just a guess, but perhaps the parties have reached a licensing agreement, in which Square Donuts will maintain its registration and claim to trademark rights, and Family Express will have a license to continue using the Square Donuts name for its donuts. Alternatively, perhaps Family Express has agreed to entirely give up calling its donuts “Square Donuts.” Based on the deadline for dismissal at the end of this month, I’m sure there will be more significant news soon, regarding the nature of the settlement and any changes to the parties’ branding and websites. What do you think will happen — any predictions? Stay tuned for updates.

As I mentioned last week, Apple’s present iPhone Xs billboard advertising campaign is ubiquitous at the moment, especially this image, totally flooding the Minneapolis skyway system, and beyond:

Putting aside whether the unique lighting and reflective nature of the indoor billboards do justice to the art of the iPhone Xs ad, I’m also questioning whether the Xs repetition might be, excessive?

See what I mean? Above and especially below, with stretches of hundreds of feet — in the frozen tundra of our Minneapolis skyway,  nothing in sight, but the same, glaring and reflective Xs ad:

A few questions come to mind. Repetition in branding, yes it’s important, but are there no limits?

In other words, we know Apple can afford to dominate our skyway billboard space, but should it?

And, if so, with what? Apple’s user-generated content campaign was welcome, brilliant and unique.

But, what is the end goal of covering the Minneapolis skyway, with a train of identical Xs boxcars?

Isn’t the art of the ad lost when it is the only thing in front of you, or should I say Outfront of you?

A boring train of Xs boxcar ads builds no momentum to a destination, like Wall Drug ads on I-90.

Where is this train of repetitive ads supposed to take us, online to drive more holiday unit sales?

That seems doubtful, the ad doesn’t explain why one should replace an earlier version with the Xs.

Ironically, Apple’s current struggle is distancing itself from the stock market’s focus on unit sales.

Billboard advertising is said to be effective for brand awareness, but Apple hardly struggles there.

I’m not seeing the point of this ad, and repetition won’t solve the problem of a saturated market.

I’m just left feeling like I paid too much for my Xs, because Apple wasted too much on these ads.

If you’ve paid attention to any billboards in the Twin Cities over the last year or so, you’re probably wondering why I haven’t discussed this one yet, knowing my passion for billboard ads:

The Kris Lindahl billboard ads — especially this one —  are hard to ignore. They are almost as ubiquitous as a certain iPhone Xs ad. Plus, this one strikes a pretty distinctive wingspan pose.

Apparently there is an art or science behind poses for real estate agents, but as far as I can tell from a Google search, none appear to cry out “wingspan” like Kris’ does, so is the pose ownable?

Seems pretty clear from how his name is used as a mark on this billboard that Mr. Lindahl’s eponymous Lindahl Realty firm is on the way to registering his personal name as a service mark.

While it isn’t always a cake walk, in obtaining federally-registered service mark rights in a personal name, what I’d really like to see Mr. Lindahl attempt next is registration of his wingspan pose.

What would you rate his chances, putting aside whether you like the above billboard ad or not?

— Jessica Gutierrez Alm, Attorney

The Boy Scouts of America (BSA)’s decision last year to end its boys-only policy was met with mixed reactions.  Some lauded it as a progressive victory.  Others, including former Girl Scouts, viewed it as a thinly-veiled corporate strategy and a loss for girls.  As part of an early adopter program, more than 3,000 girls have already signed up to be BSA Cub Scouts.

To help solidify its more inclusive policies, the Boy Scouts also announced a new branding strategy.  Beginning in 2019, the organization will be known as Scouts BSA.  The rebranding efforts include a new tag line: “Scout Me In.”

The Girl Scouts of the United States of America (GSUSA) has been openly and decisively against the Boy Scouts’ policy change.  In a public letter to the Boy Scouts, the GSUSA expressed its concern regarding what it perceived as the “short-sightedness of thinking that running a program specifically tailored to boys can simply be translated to girls.”

In a blog post on its website, GSUSA wrote, “We believe strongly in the importance of the all-girl, girl-led, and girl-friendly environment that Girl Scouts provides, which creates a free space for girls to learn and thrive.”  It continued, “The benefit of the single-gender environment has been well-documented by educators, scholars, other girl- and youth-serving organizations, and Girl Scouts and their families. Girl Scouts offers a one-of-a-kind experience for girls with a program tailored specifically to their unique developmental needs.”

The Girl Scouts are now suing the Boy Scouts for trademark infringement, trademark dilution, and unfair competition.  The GSUSA asserts that its right to use the SCOUT and SCOUTING marks in connection with development programs for girls has been long recognized by the TTAB and the Boy Scouts.  GSUSA notes that the two organizations’ use of the SCOUT, SCOUTS and SCOUTING marks have, until recently, “either been preceded by words like BOY or GIRL . . . or appeared in a context making clear that the programs at issue were developed by one organization or the other.”  In the complaint, the Girl Scouts provide evidence of confusion among the public resulting from the Boy Scouts’ use of the ungendered terms.  Cited examples include cases of girls accidentally signing up for Boy Scouts programs and parents believing the two organizations have merged.

The GSUSA seeks an order blocking the Boy Scouts from using SCOUT, SCOUTS, SCOUTING, or SCOUTS BSA without “an inherently distinctive or distinguishing terms appearing immediately before it,” in connection with services directed to girls.

This is not the first time the two groups have fought over branding.  Prior to 1917, the Girl Scouts were instead known as the Girl Guides.  When the change to “Girl Scouts” was announced, the chief executive of the Boy Scouts accused the group of “trivialize[ing]” and “sissify[ing]” the term.  According to the Atlantic, the Boy Scouts even sued over the name change.

You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.