– Mark Prus, Principal, NameFlash

In a recent article in The New York Times, John Williams discussed the evolution of our language through the “vowel dropping” trend.

He mentions the use of vowel dropping in naming tech companies, as tech companies like Tumblr and Flickr dropped vowels “…both for distinctiveness and because the altered names made it easier to trademark, claim domain names on the internet and conduct other practical business.”

In my book The Science of BrandingI noted that the human brain has the ability to “fill in” the gaps caused by vowel dropping. For example, read this sentence and you’ll see how distortion of words does not impair communication:

“It deosn’t mttaer in waht oredr all the ltteers in a wrod are. You can stlil raed it wouthit a porbelm bcuseae the huamn mnid wroks by a porecss of ptatern rceigontion. It dtemrines maennig bfoere porecssnig dteails.”

Isn’t tihs amzanig? Your brain can make sense of even the most chaotic situation.

But just because you can, doesn’t mean you should. Dropping vowels is not always a good strategy for name development. While dropping vowels can make acquisition of .com domains easier, it does not guarantee that getting a trademark will be easier. One important reason for avoiding this strategy is it can distort consumer communication.

One of the most important considerations in evaluating a name is the ability of people to remember the name. Test your “day after recall” with some members of the target audience. Make sure they can pronounce and spell it correctly the day after hearing it. If they can’t repeat it and get it right, then they won’t be able to find your product or service on the web. If they can’t properly recall it then they won’t be able to tell a friend about the name in a way that the friend can find it. Net, net, if the name is too difficult to recall properly, then it won’t be a good name (unless of course you have a lot of money to invest in awareness-generating advertising).

– Mark Prus, Principal, NameFlash

Last year I wrote a “Change Your Name Already” blog post about Overstock.com on DuetsBlog which described the painful way that Overstock.com was trying to communicate that their name did not fit what they were doing as a business…”we are so much more!” My response was to politely suggest that they call me to help them find a new name that did fit their business model.

Recently MailChimp launched an ad campaign that approached the “our name does not fit our business model” issue from a different angle. In this effort, they celebrate the fact that they have outgrown their name and tell prospective customers that they would like to help them do the same thing.

Brilliant…simply brilliant. Both Overstock.com and MailChimp have outgrown their names, but Overstock.com communicates it in a way that makes the potential customer feel stupid (“you thought we only sold overstock items but you are stupid…we actually do more!”). MailChimp admits they do more than what their name implies and desire to have the same impact on the prospective customer’s business, thereby leaving prospective customers feeling hopeful. Big difference.

So the CEO of Overstock.com should still call me to initiate a name development project…but the CEO of MailChimp can just take a bow!

It’s fall, and you know what that means: football season! For many, this means a return to the couch each weekend to spectate America’s most-watched sport. But the popularity of doing so appears to be in decline. This shift isn’t only affecting the NFL, but also college football as well, as ticket sales continue to plummet. Increasingly among my own family and friends, it seems as if everyone is more interested in playing their fantasy leagues than watching reality unfold before them. Which is why, one would think, that leagues and other football organizations would want to promote discussion about football, rather than hinder it.

Credit: Geek.com

But football organizations are cracking down on, rather than encouraging, use of familiar football names and phrases. Some have questioned, for example, the NFL’s bully-like tactics in aggressively protecting the “Superbowl” name. The annual “big game” is so well-known and such a major event that it’s almost impossible not to use its actual name. Yet, the NFL persists, enforcing more than just its famous name, drawing the ire of commentators each year.

Such tactics appear to have inspired a recent filing by the Heisman Trophy Trust against “HeismanWatch.com,” for trademark and copyright infringement. The Heisman Trophy Trust, the complaint says, is the owner of a slew of federal trademark and service mark registrations related to the Heisman Trophy, “one of the most distinguished, prestigious, and recognized awards in all of sports, and perhaps the most famous of all individual awards in football.” The award is given to the most outstanding collegiate football player, usually a quarterback or running back, each year. You might recognize the trophy by its distinctive “stiff-arm” maneuver captured in bronze:

Credit: The Ringer

Defendant HeismanWatch.com is a website that offers information, analysis, and podcasts about the Heisman trophy award. It is known for its “one-of-a-kind regression model that processes simulated Heisman votes,” to predict in advance who will win the Heisman each year. It reportedly correctly predicted the most recent winner, Baker Mayfield.

The Heisman Trophy Trust, apparently, does not appreciate HeismanWatch.com’s analysis and attention. It alleges that the website is deliberately attempting to free ride on the fame and notoriety of the Heisman Trophy marks, and it says that consumers are likely to believe there is a connection between the website and the actual trophy organization. Of course, the fact that HeismanWatch.com exists at all belies any such connection; the Trophy selection is secretive, but the website helps fans read the field and guess who will win next.

Time will tell whether the Heisman Trophy Trust can prevail against a news reporting and commentary organization like HeismanWatch.com, but it’s not unprecedented. The Academy Awards sued “OscarWatch.com” over a decade ago, prompting the website to change its name to “Awards Daily.” One cannot help but think that HeismanWatch.com has an incredibly strong nominative use defense, though. Under nominative use doctrine, another person can use the trademark of another if:

  1. the thing identified by the trademark (here, a trophy) cannot be readily identified any other way;
  2. the mark is used only as much as is necessary for that identification; and
  3. the use does not suggest sponsorship or endorsement.

The nominative use defense protects free speech and against the need to use “absurd turns of phrase” to avoid liability.

Credit: Wikipedia

It’s difficult to imagine a viable substitute to the name “Heisman,” given the trophy’s actual name–and namesake. What alternatives are there to HeismanWatch.com that do not include the surname? One commentator  offered an idea:

BestOffensivePlayerWithAGreatPRCampaignOnAVerySuccessfulTeamWatch.com.

Of course, this is absurd. And generic alternatives would fail to adequately describe what the website does (e.g., OutstandingCollegiateFootballPlayerWatch.com). One also doesn’t have to look much farther than a simple Google search to find that the media regularly uses “Heisman Watch” as a phrase to discuss anticipation about the next awardee. Even ESPN has a section called “Heisman Watch.” This kind of ubiquity shows the obvious necessity of using the surname. The common use of the phrase also suggests there is a very low likelihood that collegiate football fans are confusing the website–or any other reporting source–with the actual trophy organization. These are hallmarks of fair use.

But setting aside the legal defenses, one has to wonder if organizations such as the Heisman Trophy Trust, NCAA, and NFL ought to relax a little, and encourage the kind of use presented by sites like HeismanWatch.com. These fan centers generate excitement about, and interest in, football. That’s something football desperately needs more of lately.

We’re always looking forward, but every once in a while we look in the rear-view mirror and become amazed at how far we’ve come since our humble beginnings a short nine years ago.

Well, it’s almost time to celebrate another birthday here at DuetsBlog, and if we make it to March 5th, Duey will be ecstatic, thanks so much again to our many devoted readers and guest bloggers.

On Thursday March 8th, we’ll be doing more than cutting and sharing slices of our 9th Birthday Cake (promise it will be fresh, not four days old), we’ll be educating and entertaining our guests.

Beginning at 4 PM, in our newly reimagined cool office space, we’ll host a few hours of trademark and brand protection education, entertainment, food, drink, celebration, and conversation.

For the educational portion of the evening, we have assembled two dynamic panel discussions with valuable insights and guidance from a pair of national branding and design experts and leading trademark counsel for some very notable brands with global footprints.

Yours Truly, will moderate this panel of accomplished luminaries:

  • Shaelyn Crutchley, Former Senior Director, Head of Design – N. American Beverages, Pepsico
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Rosalie O’Brien, Senior Associate General Counsel, University of Minnesota

Our focus will be on the development of a creative, coherent, and compelling brand protection strategy. In addition, we’ll look back together on Super Bowl LII through our collective brand protection eyes, discuss so-called trademark bullying, and the latest on trademark fair use.

Brad Walz, Winthrop Shareholder and Adjunct Professor, University of St. Thomas School of Law Trademark Clinic, will moderate a panel discussion joined by some of our esteemed alumni:

This panel will focus on the implementation and execution of creative trademark and brand protection strategies. Attendees will learn about the effective and efficient use of trademark watch services, brand registries, website complaint programs, USPTO Letters of Protest, cease and desist correspondence, TTAB and UDRP proceedings, and also, when federal district court may be necessary to achieve goals.

Space is limited for this special event, but we have set aside a few seats for readers who may not have received invitations, so please let me know if you’re interested in joining us.

-Wes Anderson, Attorney

“Our client is . . . prepared to resolve this matter amicably and without pursuing its claims for damages, but only if you immediately comply with its demands.”

A common paradox of a form demand letter –  offering an “amicable” resolution to a dispute, which means complying with each and every one of the letter’s demands. It’s akin to the famous Henry Ford quote “you can have any color you want, as long as it’s black.”

Comcast didn’t get too far with this hard-line stance. Earlier this month, a Comcast vendor called “LookingGlass Cyber Security Center” sent a demand letter to the registrant of the domain name www.comcastroturf.com. The site, operated by Fight for the Future, is a pro-net neutrality advocacy website calling for the investigation of allegedly fake comments posted to the FCC’s public comment page on new net neutrality regulations. According to the site:

Someone has submitted nearly half a million anti-net neutrality comments to the FCC, many of which appear to be completely fake — using stolen names and addresses. This needs to be investigated and stopped now.

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Comcast’s vendor, presumably scrubbing domain name registrations for any use of “COMCAST,” promptly sent a form letter to Fight for the Future, with a variety of rote citations to the Anticybersquatting Consumer Protection Act and the Lanham Act. According to the letter, the law prohibits “using domain names that are identical or confusingly similar to someone else’s trademark.”

While this may be enough to scare off a layperson, or an unsophisticated domain name registrant, it is an incomplete statement of the law. The Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d), does not simply prohibit registration of any domain name that incorporates a registered trademark. Instead, a plaintiff under the ACPA must also show the domain name registrant “has a bad faith intent to profit from the mark.” Courts have routinely dismissed ACPA claims when the domain was used for noncommercial purposes or for commentary.

Of course, the demand letter did not mention the bad faith element, presumably to make its demands appear ironclad. But this is a risky strategy. And one that didn’t pay off for Comcast’s vendor.

Once the press learned of the letter, Comcast quickly issued a statement backpedaling on any claims against comcastroturf.com:

Like most major brand owners, Comcast protects our company and brand names from being used improperly on the Internet by third parties. We use an established outside vendor to monitor for websites that use our name and brands without authorization, and the vendor routinely sends out notices to those sites. That is what happened here. This particular site also raised other legal issues supporting further investigation (for example, the site appears to collect personal information and has no posted privacy policy). After reviewing the site further, we do not plan additional action at this time.

As the saying goes, “you can send any demand letter you want, as long as it’s legally accurate.”

 

 

Last week the U.S. Court of Appeals for the Ninth Circuit issued a significant opinion on the topic of genericness, Elliott v. Google, Inc., No. 15-15809. The opinion affirmed a federal district court’s grant of summary judgment that “GOOGLE” trademark registrations (Reg. Nos. 2884502, 2806075) are not subject to cancellation for genericness.

Genericness a.k.a. “genericide” occurs when the public appropriates a trademark and uses it as a generic name for a particular type of goods or services, irrespective of the source of those goods or services.  Once a mark becomes generic, it is no longer subject to trademark protection. Examples of trademarks that became generic include aspirin, thermos, cellophane, and escalator.

This case arose out of a domain name dispute back in 2012, when the plaintiffs Chris Gillespie and David Elliott had attempted to register hundreds of web domains with the word “Google” such as “googlebarackobama.net” and “googledisney.com” Unsurprisingly, Google was not pleased, and filed a complaint with the National Arbitration Forum, requesting that the men transfer the domain names to Google pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).  Google prevailed in the UDRP proceeding, and Gillespie and Elliot were ordered to transfer the domain names to Google. Shortly thereafter, Gillespie and Elliot (collectively “Elliot”) filed a complaint in federal court in Arizona, seeking cancellation of the GOOGLE trademark registrations.  The district court granted Google’s motion for summary judgment that its trademark registrations were not subject to cancellation for genericness.

Elliot argued, both at the district court and on appeal, that “google” had become a generic word for searching on the internet.  In particular, Elliot argued that a majority of the public understands the word “google,” when used as a verb, to mean the indiscriminate act of searching the internet without regard to the search engine used. Further, Elliot argued that verb use constitutes generic use as a matter of law.

The Ninth Circuit firmly rejected Elliot’s arguments on two grounds: “First, Elliott fails to recognize that a claim of genericide must always relate to a particular type of good or service. Second, he erroneously assumes that verb use automatically constitutes generic use.”

First, the court firmly rejected Elliot’s argument that the genericness inquiry must be framed as whether the relevant public primarily uses the word “google” as a verb for the indiscriminate act of searching the internet.  Instead, the court held, the claim of genericness of the word “google” must be made with regard to a particular type of good or service, i.e., a generic word for internet search engines generally.  Specifically, the court explained the following:

[W]e take this opportunity to clarify that a claim of genericide or genericness must be made with regard to a particular type of good or service. . . . But here, Elliott claims that the word “google” has become a generic name for “the act” of searching the internet, and argues that the district court erred when it focused on internet search engines. We reject Elliott’s criticism and conclude that the district court properly recognized the necessary and inherent link between a claim of genericide and a particular type of good or service. . . . [T]he Lanham Act specifies that the relevant question under the primary significance test is “whether the registered mark has become the generic name of [certain] goods or services.” In this way, the Lanham Act plainly requires that a claim of genericide relate to a particular type of good or service. . . .

If there were no requirement that a claim of genericide relate to a particular type of good, then a mark like IVORY, which is “arbitrary as applied to soap,” could be cancelled outright because it is “generic when used to describe a product made from the tusks of elephants.” This is not how trademark law operates: Trademark law recognizes that  a term may be unprotectable with regard to one type of good, and protectable with regard to another type of good.

Second, although Elliot presented evidence that the mark GOOGLE is used as a verb among the general public, the court held that “verb use does not automatically constitute generic use.”  The court held that even if the general public uses the word “google” as a verb, it is only a generic use if the public is referring to an internet search generally.  If the general public uses the word “google” primarily to identify a search on the Google search engine, the GOOGLE mark still serves a source-identifying function and its use as a verb is not generic.  The court also set forth a “discriminate” / “indiscriminate” distinction to evaluate verb usage of trademarks, stating that “an internet user might use the verb “google” in an indiscriminate sense, with no particular search engine in mind; or in a discriminate sense, with the Google search engine in mind.”   The court explained that much of Elliot’s admissible evidence were only examples of verb usage–which is not automatically generic use–without showing whether that verb use was discriminate or indiscriminate.  For example:

Elliott purports to offer an example of generic use by T-Pain, a popular rap music artist. But we will not assume that T-Pain is using the word “google” in a generic sense simply because he tells listeners to “google [his] name.” T-Pain, Bottlez, on rEVOLVEr (RCA Records 2011). Without further evidence regarding T-Pain’s inner thought process, we cannot tell whether he is using “google” in a discriminate or indiscriminate sense. In this way, many of Elliott’s admissible examples do not even support the favorable inference that a majority of the relevant public uses the verb “google” in a generic sense.

The court also tied in an oft-used Kleenex example to further emphasize that the type of semantic usage of a mark by the public is not dispositive of genericness:

We acknowledge that if a trademark is used as an adjective, it will typically be easier to prove that the trademark is performing a source-identifying function. If a speaker asks for “a Kleenex tissue,” it is quite clear that the speaker has a particular brand in mind. But we will not assume that a speaker has no brand in mind simply because he or she uses the trademark as a noun and asks for “a Kleenex.” Instead, the party bearing the burden of proof must offer evidence to support a finding of generic use.

What do you think about this decision?  Google, Inc., is likely celebrating a big win for its GOOGLE mark–one of the most valuable marks in the world.  It’s also a helpful decision for many famous brand owners, who, as an ironic consequence of their own success and ubiquitous use by the public, are also put at risk by genericness challenges (e.g., Kleenex® facial tissues, Band-Aid® adhesive bandages, Xerox® photocopiers, etc.).

-Mark Prus, Principal, NameFlash Name Development

I sometimes get asked by prospective clients if they should change their name, and I help them evaluate if a change is necessary. But sometimes there are stubborn companies who persist in marketing a name that is not right. Overstock.com is a prime example of this behavior.

In early 1999, Dr. Patrick M. Byrne recognized the potential in liquidating excess inventory through the Internet. He started Overstock.com as a way for consumers to gain easy access to closeout merchandise. Overstock.com is a pretty good name for that business model.

In January 2011, Overstock.com acquired the O.co URL and began incorporating it into its marketing. CEO Dr. Patrick M. Byrne said, “When we first started our business in 1999, we only sold surplus inventory. We are no longer just an online liquidator. Our current offerings span from furniture and home decor to cars. We want an identity that more accurately reflects our company as it has evolved: hence ‘O.co’.”

I’ll admit I’m biased, but the strategy shift provided the prime opportunity to change their name.

However, Overstock.com doubled down and tried to leverage its name through a sexy sell with a campaign about “It’s All About The ‘O’ “(wink, wink added for emphasis). While the Overstock.com name faded into the background it was still the official name of the company.

Fast forward to today. Overstock.com continues to use the name that the CEO admitted didn’t fit six years ago. But now, instead of hiding their name embarrassment, they want to draw attention to it. Their latest campaign uses offensive “name shaming” language to point out that people also look at Overstock.com and think they only sell closeout items.

Dear Overstock.com CEO:

WILL YOU PLEASE JUST CHANGE YOUR NAME ALREADY?????

Signed,

Mark Prus
Principal @NameFlash

Overstock.com has spent years explaining their business model because they continue to use a name that does not fit it. How much further ahead would the company have been if they had just changed their name when given the right opportunity years ago?

We all get attached to things and letting go is hard. But there are times when you need to suck it up and change your name rather than continue to use a name that does not fit your current or future strategy!

President Trump has been in office for less than a month. Yet it would be fair to say that his time in office has been, if nothing else, eventful. While the more important aspects of his policies have received far greater attention, President Trump has also had a profound impact on trademarks. In fact, he is a one man machine for generating catchy slogans. As expected, a number of individuals have sought to capitalize on these slogans, with applications filed for “Drain the Swamp,” “Lock Her Up,” “Bad Hombres,” “Fake News,” and more. As of the time of publication, it does not appear that any one has yet filed for “I’m, Like, a Smart Person” yet.

The validity of these applications is a question for another day. Yet the deluge of applications raises a new rallying cry for anyone about to launch a new product or service: TRADEMARKS FIRST!

Before you unveil your catchy new product or company name to the public, ask yourself: am I adequately protected? It can be very difficult to force a third-party to give up a domain name, Twitter handle, or other social media account, even if you later obtain a trademark registration. Instead, button up these important items early. Register any available domain names. Sign up for any social media accounts that you might want.  You can always cancel the account later. Plus, the domain names are likely cheaper now than they will be after you generate a buzz.

You should also take these steps before, or at the same time, as filing a trademark application. The USPTO database is a public database. As you know, people are constantly trying to use the internet to make money as easily and unscrupulously as possible. It should be no surprise third-parties often scan the records and attempt to register domain names for recently filed applications, with the goal of reselling them to the trademark owner at a profit. Trying to buy back a domain name can cost a lot of time and money; avoid it if you can.

So please, include some down time in your product rollout for a conversation with an attorney, a review of your intellectual property, and a summary of your social media strategy and, together, we can put Trademarks First again.

The Academy of Motion Picture Arts and Sciences is planning to appeal a September judgment finding that GoDaddy did not violate anti-cybersquatting laws. Part of the Academy’s claim centered around the common practice of having “parked pages” which are basically placeholders sites. The practice allows a domain owner to reserve a domain until it finds hosting or completes the website.

The Academy claimed that GoDaddy improperly profited from the use of its OSCAR mark by allowing the registration of domains that included the OSCAR mark, and sharing in the proceeds of ad revenue on parked pages.

The Court found that the Academy had failed to prove that GoDaddy had the bad faith intent to profit required for the claim and also that GoDaddy had met its burden on its affirmative defense that it acted with a good faith belief that the use was lawful.

It didn’t help the Academy’s case that GoDaddy took a number of proactive steps to limit potential infringement and acted quickly whenever infringement was brought to its attention.

The case, lasting five years, highlights the policy tension among intellectual property laws and the internet economy. The Court cited the automated process of registering domains and the high cost of manually reviewing each new registration to ensure that no infringement occurs in its findings regarding bad faith.

Traditionally, the burden of policing a trademark falls to the mark holder. The Digital Millenium Copyright Act provided some additional tools for job in the internet age and attempted to strike a balance between the benefits of the internet and the burden on intellectual property holders. Here, the Academy seemed to make an attempt to pass the burden of policing its mark on to providers like GoDaddy. The Court stated towards the end of its ruling that the Academy’s “ACPA claim would impose upon GoDaddy (and presumably any other company offering parking, hosting, or other basic internet services) the unprecedented duty to act as the internet’s trademark police.”

It’s not yet clear exactly what the Academy plans to attack in its appeal. We’ll have to wait to see if the Appeals Court thinks that GoDaddy should act as the internet’s trademark police.

-Wes Anderson, Attorney

As the INTA Annual Meeting winds down, one memory for me that certainly stuck out was an on-site ad campaign revolving around the new “.sucks” top-level domain (“TLD”). Depending on whom you ask, it’s either ingenious or diabolical.

Just outside the San Diego Convention Center, the throngs of orange lanyard-wearing conference attendees were greeted by some rather cheery folks holding white signs with the “.sucks” TLD laid over some speech bubbles.

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That nice lady who graciously agreed to pose for the picture is handing out — of all things — condoms (she’s holding one in its .sucks packaging in the photo). It goes without saying that INTA attendees receive a variety of knick-knacks, but generally not of this nature.

Also spotted in the wild was a truck carrying a bright blue advertisement with “INTA.sucks” which made frequent appearances puttering around the San Diego Convention Center (though, sadly, I never had my camera handy). They were even present in the exhibitor’s space.

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It turns out that the company behind the whole campaign is Vox Populi Registry Ltd, which runs the www.nic.sucks website and refers visitors to various authorized .sucks domain name registrars. You can obtain your very own .sucks domain name for the low, low price of $2,500 (if, that is, your domain name isn’t among the “Premium” domain names that range upwards to an undisclosed amount). And with the general public window to purchase a .sucks domain name opening on June 1, time is running out for brand owners in the Trademark Clearinghouse to beat the traffic.

Much ink has been spilled about the .sucks TLD and its effects for brand owners. For its part, Vox Populi generally ignores the uproar surrounding the TLD’s very existence and instead adopts a marketing angle that is decidedly more altruistic. According to the nic.sucks site:

By building an easy-to-locate, “central town square” available 24 hours a day, 7 days a week, 365 days a year, dotSucks is designed to help consumers find their voices and allow companies to find the value in criticism. Each dotSucks domain has the potential to become an essential part of every organization’s customer relationship management program.

The nic.sucks website directs users to a video entitled “Our Vision for the Conversation,” featuring excerpted video footage of Martin Luther King and an appearance by consumer advocate Ralph Nader. “The word ‘sucks’ is now a protest word, and it’s up to people to give it more meaning,” Nader says in the video, as the words “Let Your Voice be Heard” appear on the screen.

So it appears that Vox Populi, the “voice of the people,” advertises the .sucks TLD as a means for John Q. Public to take action against corporate malfeasance. But that doesn’t explain their presence in San Diego at all. If .sucks is meant to spark a consumer-driven populist movement, then why in the world would Vox Populi seek the attention of a niche group of trademark practitioners and brand counsel? Wouldn’t they stand to benefit if brand owners miss the chance to scoop up and thereby “neutralize” the domain name? Shouldn’t the appropriately outraged customer have first dibs? Given the hefty price tag for a .sucks domain name, it’s hard to ignore the feeling of a shakedown going on.

Indeed, by appearing among us suits at INTA rather than to a general consumer base, Vox Populi sent a stark message to brand owners and their counsel: hurry up and register your .sucks domain name before an angry customer does. A “prophylactic” measure, if you will.