Juut, an award-winning salon and spa founded in Minneapolis, has grown over the last 30 years, expanding into Arizona and California, with a focus not only on beauty, but health and wellness.

Juut was founded by David Wagner (author of Life as a Daymaker — How to Change the World by Making Someone’s Day), naturally the Juut name means: “to uplift humanity and serve others.”

“We celebrate individuality, authenticity and real beauty. Our mission is to create dynamic and significant Daymaking experiences that positively impact people, society and the world at large. Our vision at Juut is to transform the world with beauty.”

What is Juut to do when a popular, nicotine-pushing brand, adopts this similar Juul visual identity:

It’s difficult to imagine “Juuling” (notice the brandverbing) being a welcome activity in a healthful Juut salon or spa, and it’s similarly hard to imagine nicotine-containing Juul pods being available for sale at a Juut salon or spa, but neither would be required to show likelihood of confusion.

Juul’s apparent mission is to: “Improve the lives of the world’s one billion adult smokers.” The problem, as noted by the FDA, is the product is being used by minors, not only adult smokers.

In fact, just a few weeks ago, the New York Times reported on the magnitude of the problem:

“The Food and Drug Administration on Wednesday declared that teenage use of electronic cigarettes has reached ‘an epidemic proportion,’ and it put makers of the most popular devices on notice that they have just 60 days to prove they can keep their devices away from minors.”

Juul has been targeted in recent lawsuits for targeting minors, as alleged in this Vaporized ad:

Given Juut’s laudable mission, any risk of its identity being confused with the likes of Juul would seem unwelcome, yet Juut has never taken any enforcement steps, at least none at the TTAB.

On the other hand, Juul has been busy at the TTAB, enforcing its federally-registered trademark rights in JUUL against the likes of JUUC for electronic cigarette chargers, JUUS for electronic cigarette holders, FUUL for electronic cigarette chargers, and MUUL for electronic cigarette cases.

So, what about likelihood of confusion? Do the very different missions of Juut and Juul portend no likelihood of confusion, or do they speak to the significant damage resulting from any confusion?

What do you think of when you hear the word Velveeta? Me too, childhood — complete with piping hot Campbell’s tomato soup — and perfectly melted grilled cheese sandwiches. Later in life, at least for me, came liquid gold and RO*TEL queso dip, usually on weekend game days. And, my daughter might add to the Velveeta memory mix, perfectly smooth shells and cheese.

Velveeta can conjure up some less than innocent and charitable thoughts too. Eventual trips to the doctor. Perhaps cardiac stents. And, even probing medical questions like, is that yellow loaf or brick really cheese? Turns out, it’s technically not real cheese, rather the box even calls it “Pasteurized Prepared Cheese Product.” What does that even mean?

Yet, Kraft apparently has felt no shame, remorse, or even second thoughts in continuing to maintain the original 1923 Velveeta trademark registration for “cheese,” despite an FDA warning letter some fifteen years ago that apparently led to the more accurate “Pasteurized Prepared Cheese Product” appellation.

As a trademark type though, and putting aside the interesting trademark abandonment question of whether Kraft actually uses the Velveeta mark in connection with the recited goods, “cheese” — the notion of a coined trademark comes to mind with Velveeta too. The kind of trademark that is invented, or let’s say, made up, or produced for the exact purpose of functioning as a trademark indication of source.

Some other examples of coined marks include Exxon, Rolex, and Google. Some call those types of marks the gold standard since they are the strongest trademarks along the Spectrum of Distinctiveness. They are often singular in meaning, and ripe for dilution protection.

So, imagine my surprise seeing a “room” dedicated to Velveeta, as I walked 6th Street with one of my sons, this past weekend, in Austin, Texas, inspiring me to capture the image shown above to further document and discuss it: The Velveeta Room.

My surprise was especially fine-tuned since the apparently-non-eponymously named room did not appear — at least, on the surface — to be promoting liquid gold, yellow bricks, golden loafs, queso, or even shells and cheese, much less the almost century old Velveeta “cheese” brand or distinctive box.

Mind you, there was a day when Kraft appeared to give a serving of some serious trademark enforcement attention to the likely famous Velveeta trademark, even when the target showed up selling comedy as opposed to calories.

Back in the day, circa 1993, Kraft opposed registration of Blue Velveeta for “entertainment services in the nature of comedy and musical acts.” It appears the improv act melted away in the mid-90s — not sure whether it was voluntary or not.

The Velveeta Room apparently began around the same time as Blue Velveeta, circa 1988. Perhaps either of their fans can help explain their branding, because I’m at a loss. Did the improv group or does the comedy lounge specialize in cheesy humor? Pasteurized jokes? Fake laughter and chuckles? Or perhaps, unhealthy routines and the need for medical attention?

The irony has not escaped me that the Velveeta product was invented to solve the problem of “broken cheese” and the Velveeta brand and trademark was invented or coined to identify, distinguish, and indicate the source of an engineered — or to some, fake cheese product.

It remains to be seen whether the Velveeta trademark registration is itself “broken,” whether the brand simply melts away over the next century, whether its meaning will further evolve and blend into a smoothly-delivered butt of jokes, or whether Kraft will laugh all the way to the bank.

Glove4
Chou #1
Glove1
Digitcare
Glove3
Chou #2
Glove2
Chou #3
Glove5
Chou #4
Glove6
Avent Green

 

 

 

 

 

 

 

Back in 2009, we wrote about what was then Kimberly Clark’s pair of single color purple trademark registrations in connection with “gloves for medical and surgical uses” and “disposable nitrile gloves for general use,” now owned by Avent and sold under the HALYARD brand:

HalyardPurpleNitrile

Those registrations are still big deals since they both exist on the Principal Register (as opposed to the Supplemental Register), and as far as I can see, no other medical examination glove colors have been able to withstand the reliable USPTO probing to attain Principal Registration status.

As the above six hand drawings reveal, growing numbers in the medical examination glove world have raised their hands at the USPTO to gain federal registration of a single color or a contrasting pair of colors (one appearing on the inside and the other on the outside).

Let’s wait and see what happens to the six pending applications for the drawings shown above (Chou #1, Digitcare, Chou #2, Chou #3, Chou #4, and Avent Green) after the USPTO rolls up its sleeves, and begins a different kind of hands-on examination. We’ll follow the drama as it unfolds.

From where I’m sitting, it seems doubtful that any will pass the vigorous Principal Register examination, but there are also serious questions as to whether survival of the appropriate Supplemental Register probing is warranted either, as explored more deeply further below.

In addition to #1-4 above, Chou also has a blue/white — outside/inside color combination mark and the inverse of those same colors — both on their way to the Supplemental Register.

Ascend Eagle also has a few hands in the color trademark pot for medical examination gloves, orange is registered on the Supplemental Register (tangerine never made it), but this peach and this red one are both suspended for consideration on the Supplemental Register.

Colur World has a suspended pink single color application too, apparently now attempting Principal Registration, since it already has a Supplemental Registration for pink medical gloves.

While, Xela has secured single color copper and single color magenta trademark registrations — both have landed on the Supplemental Register stretcher too; as did this individual’s single color application for gold colored medical gloves.

With all this focus on gaining Supplemental Registrations in the medical examination glove field, you’d think the USPTO’s probing on the question of functionality has been, perhaps a bit soft.

Turns out, the Digitcare trademark application for an outer-white/inner-black medical exam glove contains an enlightening bit of information that could shine like a flashlight on the question of functionality:

  • “Contrasting Black and White ApexPro identifies conformance to infection control protocols”
  • “High contrast perma-white exterior for improved visibility with infectious fluids”

If so, what kind of future does that signal for this otherwise nearly identical Supplemental Registration, interestingly assigned from Chou to Digitcare, a few years back.

Show of hands, how many see the functionality scalpel removing even the Supplemental Registration option to one or more of the above six pending color applications, given the revelations in the Digitcare file history?

A couple of weeks back, I captured this image from a t-shirt for sale in Starbucks’ backyard — at a shop in the Pike Place Market area of Seattle:

StarbucksCannabisOne of the things it brought to mind for me is the dozen year long trademark dilution case that Starbucks lost, over and over, a few years back, against a New Hampshire coffee roaster, who lawfully continues to sell its Charbucks coffee blend of beans.

It also brings to mind the difficulty of predicting the outcome of a trademark parody defense, especially since the case Tim wrote about earlier this year, highlighting Louis Vuitton’s inability to prevail in the recent My Other Bag case.

Last, at least for now, it also brings to mind the moving target of the legality of marijuana, at least at the state level, especially recognizing that Starbucks’ backyard happens to be a safe haven for doobie lovers.

Back in the day, associating the visual identity of a famous brand owner with an illegal product, was quite helpful in proving up tarnishment type damage, remember the Enjoy Cocaine posters?

Yet, with the ever-changing environment of what is legal and where, at what point will the tarnishment argument become tainted, especially with the apparent growth of First Amendment defense successes in trademark cases?

In the end, given the utter prevalence of Coca-Cola script inspired Enjoy Cocaine t-shirts available for sale online (a substance legal in no state), is the most logical explanation for a famous brand owner’s apparent tolerance best explained by the Wack-a-Mole pest and problem?

Chipotle has certainly had a rough few weeks. With news of at least another 80 people sickened (apparently from a norovirus this time) after eating at a Boston area Chipotle (on top of at least 52 people in six states from E. coli), I can’t help but think of Jack in the Box.

Jack in the Box logo

For those of you who don’t remember, in 1993 an E. Coli outbreak at Jack in the Box restaurants sickened more than 700 people, resulted in the deaths of four children, and brought the company to the brink of bankruptcy. The damage to its brand was so extensive that the chain atrophied, shrinking from a national chain to regional one in the West (it’s birthplace). So intense was the media coverage and public fear that it forever imprinted “Jack in the Box = E. Coli” on my then 7 year old mind. I still haven’t eaten at one, though I don’t often have the opportunity as there aren’t any near me that I know of.

Of course, there are a few differences, not least of which is the size and severity of the outbreak(s). For one, the public had never really heard of E. coli until the Jack in the Box outbreak. The novelty of the bacteria and lack of understanding by the public probably hurt Jack in the Box more. There have also been a number of high profile outbreaks since then, making the topic at least more familiar to consumers now. Importantly though, Jack in the Box is, or at least was at the time, just like any other fast food joint. Chipotle, on the other hand, pioneered the “fast casual” concept and markets itself to health conscious people (1000 calorie burrito aside).

Chipotle Homepage

Chipotle touts its use of free range, locally sourced, non-GMO, fresh ingredients. While everyone is concerned about contaminated food, I can’t help but think this may cause more harm to Chipotle’s reputation than your average fast food chain. The drop in its stock price bolsters that view. On October 13 its shares closed at $750.42 and today are around $550. That’s an impressive drop in about 2 months time.

Food with Integrity

In some ways, Chipotle is a victim of its own success. Chipotle took a new concept and branded it brilliantly. Rapid growth is difficult to manage with a commitment to locally sourced, non-GMO, etc. foods. It had to set up numerous local relationships with producers that met their label criteria. These producers tend to be fairly small as well. This led to supply chain issues earlier this year resulting in Chipotle’s carnitas being pulled from the menu in many of its locations because some suppliers were not complying with the company’s animal welfare standards. All of these requirements, though noble, make it difficult to grow rapidly without some things falling through the cracks. With suppliers providing only a few of Chipotle’s ingredients, and at more local levels, Chipotle has to monitor far more sources.

Responsibly raising the bar

Though an outbreak of E. Coli linked to other fast food chains would hurt their sales, Jack in the Box is a testament to the fact that they can recover. The damage to most would be far less now that people have actually heard of E. Coli. Chipotle may have a tougher time of it though. I’m not suggesting it will fail. But it certainly is taking a hit. When you market yourself with the healthy food tags, you can’t expect to bounce back from an E. Coli outbreak as quickly as some of the less healthy, MSG soaked alternatives.

Perhaps they should add an E. Coli free tag to their advertising.

Today, we’re not talking about that Purple Rain, that Color Purple, or those Purple People Eaters, and we’re especially not talking today about Purple Gloves, Purple Bags, Purple Jackets, Purple Candy Wrappers, or Purple Tags, no today, we’re talking about “The Purple Pill,” a/k/a Today’s Purple Pill — AstraZeneca’s blockbuster Nexium brand acid reflux medication.

Just last week, AstraZeneca brought a federal district court action in the District of Delaware, to relieve its heartburn and other forms of damage over Dr. Reddy’s competing generic version of Nexium that is also sold in purple colored capsules.

NexiumPurplePill

The Purple Pill Complaint is loaded with references to and colorful examples of “look for” advertising, something we have covered a lot here (don’t forget the Purple Host Jackets at the Phoenix Sky Harbor International Airport):

“To reinforce the brand significance of the color purple, in addition to its ‘purple’ websites, [AstraZeneca]’s advertising and promotional efforts from as early as 2000 to present have consistently focused on educating the public to associate the color purple as applied to capsules for treatment of gastrointestinal (“GI”) diseases and the phrase ‘The Purple Pill®’ (collectively, the “Purple Marks”) with its . . . products, first with Prilosec® and then Nexium®. The express purpose of this ‘look for’ advertising was to establish the purple color and the phrase ‘The Purple Pill®’ as symbols of origin and quality of GI drugs that emanate only from [AstraZeneca], i.e., as brands of [AstraZeneca]. [AstraZeneca] has devoted significant resources over the years to advertise and promote its Prilosec® and then Nexium® purple pills using this ‘look for’ purple advertising.”

Although “look for” advertising is a helpful key to establish distinctiveness of a non-traditional trademark like a single color, the striking and dominant emphasis in AstraZeneca’s complaint seems more designed to help establish fame, and perhaps for fending off any potential aesthetic functionality defense that Dr. Reddy’s might raise, since acquired distinctiveness is not in question, given the incontestable registrations already in place. THE PURPLE PILL word mark, also federally-registered, is another effective form of “look for” advertising.

Oh, one more thing we’re not talking about today, Glaxo’s Purple Inhalers to dispense Advair brand medication for respiratory ailments, as opposed to gastrointestinal ailments. Perhaps this explains why AstraZeneca made this express point in its complaint:

“[AstraZeneca] is not aware of any third-party trademark registrations covering the mark purple applied to capsules or pills for the treatment of GI diseases. Moreover, [AstraZeneca] is not aware of any third parties that have promoted the color purple as a trademark for any pharmaceutical preparations for the treatment of GI diseases.”

So, does this signal that AstraZeneca’s rights in purple are limited to pharmaceuticals for the tummy, or what other types of ailments might need to be covered by a medication to upset their non-traditional trademark stomach?

– Mark Prus, Principal, NameFlash

There is a new drug for overactive bladder with the brand name Myrbetriq. I don’t know about you, but my first thought upon hearing the brand name was “HUH?” What is a Myrbetriq? How do I pronounce it? Surprisingly, the FAQ section on their website does not have a “how to pronounce Myrbetriq” button but the physician website does, and it is pronounced “meer-BEH-trick.”

I’ve named Rx drugs before and I can tell you that the landscape is not a simple one due to numerous FDA regulations about implying benefits in the name, as well as potential trademark issues. However, I have never resorted to choosing random letters out of a hat…which is the only explanation I can come up with for why Astellas Pharma US, Inc. chose this name. Clearly the person who chose this name was not aware of the science behind complex and/or difficult-to-pronounce names.

Science is solidly in the camp of simple brand names. A study at the University of Michigan looked at fluency, familiarity and risk perception in names. Specifically, in one study, the researchers asked participants to rate the potential harm of food additives with easy-to-pronounce or difficult-to-pronounce names. Consumers consistently rated names that were difficult to pronounce as being more risky than those additives with names that were easy to pronounce. In another study, the researchers asked people to assess amusement park rides with easy-to-pronounce or difficult-to-pronounce names as to whether the ride would be adventurous and exciting or too risky and likely to make them sick. Consistent with the food additive study, difficult-to-pronounce names led to more people thinking the ride was too risky and likely to make them sick. The researchers concluded that “people perceive disfluently processed stimuli as riskier than fluently processed stimuli.” In other words, if it is difficult to pronounce then it must be risky.

Given this conclusion, the makers of Myrbetriq should have branded their drug with a friendlier, easy-to-pronounce name since some consumers may be reluctant to try a drug with such a difficult-to-pronounce name!

–Susan Perera, Attorney

One aspect of trademark law that we haven’t discussed here at DuetsBlog is FDA approval of trademarks for pharmaceuticals.  While there are certainly many benefits to federal trademark protection (and we would recommend seeking federal registration as the best way to solidify the broadest rights in your mark) trademark owners can choose to rely on common law rights rather than seeking federal registration of a trademark.

However, in the field of pharmaceuticals, FDA approval of a trademark is required prior to use.  Further, the fact that a trademark has been approved by the USPTO does not mean that the FDA will likewise approve the mark.  While the USPTO focuses its review on the likelihood of confusion between a proposed mark and prior filed trademark applications and registrations, the FDA is concerned with reducing medication errors which could be related to the similar sound and appearance of drug names but also similarities to drug ingredients, as well as names that may exaggerate the efficacy of a drug.  Accordingly, traditional trademark clearance may not clearly identify whether a trademark for a potential drug will be allowed.

Watch for future posts about the FDA trademark approval process.