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.

–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.)

Recently, a friend and I were watching The Bachelor—I know, I should be ashamed. During one of the commercial breaks, a spot appeared on-screen showing a woman wearing an elegant dress walking through a hallway. She turns into a doorway, and blue, shimmering light projects onto her face, as if she was underwater. A speaker off-screen says, “Open the door to a beautiful new experience for your home.” The commercial cuts to a small bottle with a spray nozzle on top. The bottle has a typical shape, but its packaging includes, near the top of the bottle, a “No. 3.” Are you thinking what I’m thinking? Immediately, my mind goes to Chanel’s timeless No. 5 perfume.

The speaker continues, introducing “Glade Fine Fragrance Mist.” The woman then crosses through a vertical air-water surface, as if she is entering a Stargate. She passes the boundary and floats in the adjoining room, which is filled with water. The speaker describes the “mist” as a bouquet of “florals, beechwood, and lush fruits that whisper a story on the air.” We also learn that the mist is infused with “essential oils” and “artfully crafted. Imagination? We have a fragrance for that.” The screen then shows the “Glade” logo, and the speaker identifies “S.C. Johnson, a family company.”  Take a look for yourself:

After watching the commercial, my friend remarked, “Hey, doesn’t that sound a lot like Chanel No. 5?” I thought the same thing. Just take a look at the branding for the advertised “Glade Atmosphere Collection”:

Now compare the “No 1,” “No 2,” “No 3,” and “No 4” for the above bottles to the Chanel No. 5 registered mark (which, by the way, has been registered since 1960, whereas the “Glade Atmosphere Collection” mark has only been registered since 2017):

Notice the similarities? The ‘o’ of the “No” is super-script in both marks. And, as anyone who passed Kindergarten will surely agree, one cannot help but intuitively notice that No. 5 follows 1, 2, 3, and 4. Combine that with the fact that air fresheners are similar to perfume, in a sense, and you have a formula for some potential consumer confusion. The use of small bottles and elegant advertising furthers the connection. And when you consider the historical fact that Coco Chanel picked No. 5 from a batch of perfumes labeled 1 through 5 (as well as 20 through 24), one cannot help but think that the similarities are more than just coincidence and happenstance.

Although floral scents are common, that Chanel No. 5 has a distinct smell of jasmine, bergamot (citrus/spicy orange), rose, lemon, linen, neroli (bitter orange), ylang-ylang (woody, an “essential oil”), lily of the valley, and iris makes the comparison to Glade’s Atmosphere Collection even more uncanny. Indeed, Glade “No. 1” has scents of jasmine and rose, in addition to cedar and apple. No. 2 smells of sweet pea and pear. No. 3 exudes beechwood, starfruit, and coconut—not that far off from No. 5’s tropical notes.  And No. 4 is a “velvety kiss of patchouli [a member of the mint family] and amber.” These scents certainly seem similar to Chanel’s No. 5, even if spread across multiple bottles.

What do you think? Do Glade Nos. 1 through 4 come dangerously close to No. 5? Given the similar marks and smells, one cannot help but make the comparison.

–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.

–James Mahoney, Razor’s Edge Communications

Admit it, when you saw the headline, many of you finished the jingle featured in Farmers Insurance TV commercials.

Farmers has a great campaign going. Geico has a good campaign going. Both are entertaining. First, Farmers:

Their “Hall of Claims” series, developed by RPA, showcases weird situations that Farmers has paid claims on. RPA’s latest iteration on the “University of Farmers” campaign is terrific. It has a catchy jingle and a catchy tagline, “We know a thing or two because we’ve seen a thing or two.”

Right off the bat, every ad is unmistakably Farmers, from the opening shot of the set to the friendly, matter-of-fact delivery of spokesman J.K. Simmons. A consistent and long-term campaign, it always offers fresh interest.

Geico’s ads, developed by the Martin Agency, take a different tack. You don’t know whose ad it is until the payoff line hits partway through, like “Casual Friday at Buckingham Palace? Surprising. What’s not surprising? How much money [particular customer] saved by switching to Geico.”

The Farmers “Hall of Claims” ads are stronger than Geico’s “Surprising” series for a couple of reasons:

First, Geico’s creative doesn’t relate specifically to insurance the way that Farmers’ does. That doesn’t necessarily mean that it’s a weak campaign, but it does mean that they need to hammer harder and more often to establish the connection.

Second, there’s no immediately discernable Geico style since the scenarios are wildly different from one another. That raises the odds that, except for the more intriguing scenarios, someone will skip or otherwise tune them out with nary a thought of Geico. It’s also a factor that other companies are running campaigns that use the same “surprise” approach. That makes the competition for mindshare that much harder when there’s no obvious or intuitive link to the advertiser.

Our personal favorite Geico ad is Casual Friday at Buckingham Palace. As we fast-forward through commercial breaks, we’ll actually stop at that one to see it again. Funny stuff, well written and brilliantly acted.

Now compare that to any Farmers ad of the weird things they’ve insured. The difference is that one is entertainment sponsored by Geico, the other is indelible proof points, unforgettably Farmers, presented in an entertaining fashion.

That’s the difference between a great campaign and a good one. I like them both.

Growing up with a farm in the family, I learned early on that Nothing Runs Like Deere®.  As people tend to do, we named all of the tractors –  after Masters of the Universe characters, of course.  There was a front-loader type tractor of a brand I don’t recall named Skelator, another old tractor named Cringer, and a John Deere that we called He-Man.

John Deere, like other iconic brands, holds an elevated status among farmers and inspires a certain tribal loyalty – the kind that reminds me of Seth Godin’s quote about Harley Davidson: “Nobody gets a Suzuki tattoo.”  Well, people get John Deere tattoos:

John Deere Tattoo John Deere Tattoo John Deere Tattoo John Deere Tattoo

A couple things you’ll notice is that these tattoos prominently feature actual tractors, not just the famous John Deere deer logo, and they are in color: John Deere’s iconic green and yellow.

It should be no surprise that these are colors John Deere values and protects.  Colors can function as trademarks, just like brand names or logos, but only if they acquire distinctiveness.  Color, planted as seeds on products, packaging, in logos, and in “look-for” advertising, grows into a trademark over time as the public begins to associate the color with a source of products or services and recognize it as a mark . Once that association is made, the color becomes part of the story of the brand, and the brand owners have significant power through it.

Last month, John Deere showed just how much power it has in its color marks when it won a hard-fought court battle against FIMCO, maker of these sadly named, “Ag Spray Equipment” agricultural sprayers (the name is not surprisingly not registered as a trademark):

Ag Spray Equipment

Here is one being pulled by a John Deere tractor.  Confusing?  Would you assume the tractor and the equipment come from the same source?  What about a defense that farmers want their equipment to match the color of their tractor, because it is aesthetically pleasing?  Is it fair to give John Deere a monopoly right on a color combination?

Ag Spray Equipment and John Deere

Perhaps even more importantly than the immediate legal victory, in the 107-page decision the district court also called John Deere’s green and yellow color combination “famous,” a meaningful label for trademarks from which John Deere may potentially harvest even greater long-term value.  Under the Lanham Act, the owners of famous marks can enjoin subsequent users of similar marks that are likely to dilute distinctiveness of the famous mark “regardless  … of actual or likely confusion, of competition, or of actual economic injury.”  Powerful stuff indeed.

So, hey, John Deere, if you ever need a new slogan, how about “These Colors Don’t Run?”

P.S. On second thought, for a tractor, “not running” might be the wrong message ;)

One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!

–James Mahoney, Razor’s Edge Communications

Recent travel on Aer Lingus and a perusal of The Boston Sunday Globe brought two very good ads to my attention.

The first, which ran in the Aer Lingus on-board magazine, is a terrific marriage of great concept and excellent execution plus situational relevance: you’re on a plane on your way to Ireland.

As a writer, I love the spot-on call to action in the headline. As a visual communicator, I love the clever blending of the windows (how do people come up with these ideas?!). As a creative director, I love the combination of a smart team working in tandem and hitting the target dead-center.

Bottom line on this one: Even if it’s not the first thing you do, a visit to EPIC, The Irish Emigration Museum gets on your radar and likely becomes a new-found option.

Moving on. So, nobody reads long-copy anymore, eh?

This ad for Needham Bank caught my eye for its sheer flaunting of convention. It’s got lots going for it: A headline that doesn’t look like a headline (the Goliath graphic), opening copy that quickly establishes the premise, sequential subheads that tell the story, and well thought-out, well-written copy that fleshes out the story the subheads outline.

This combination led me to read the darn thing, despite not living close enough to Needham to be a prospect even if I were in the market for a new bank.

The only quibble I have is there’s no contact information. A website address and a phone number would have put the cherry on top. As it is, interested people have to be motivated enough to seek that information out themselves.

One final point, and it’s an important one, is to pass along atta-boys not just to the creative team, but also to whomever in the bank had the courage to approve the concept and the ad. Often we hear that clients want to do something different, to stand out from the crowd. And nearly as often, they get cold feet when we give them an option like that.

But this ad proves that when you have the goods, and you have the guts, you get the glory. Needham Bank reports that the ad response is exceeding their expectations.

–James Mahoney, Razor’s Edge Communications

As I perused The New York Times on Sunday Aug. 20th, Chiquita Banana burst forth amid all the brouhaha reporting with a full page of the best ad I’ve seen in a long time.

I feel sorry for those who missed it, because most of us can use a good belly laugh these days. There aren’t many print ads that will do that for us. Chiquita commandeering the eclipse as the banana sun is definitely one of them.

Among the many clever and on-point lines, this beauty comes at the tail end of the body copy: “Please note: If the banana sun is obscured by inclement weather, it will be rescheduled for April 8, 2024.”

A mentor of mine once observed that there are two kinds of creative projects: those you wished you’d done, and those you’re glad you didn’t. Hats off to Chiquita, Wieden & Kennedy (with a shout out to writer Becca Wadlinger), and Funny or Die for a print and video campaign that I wish I’d done.

We’ve written a lot over the years about Adidas’ three-stripe non-verbal, non-traditional trademark. Turns out, Adidas actually owns a federally-registered trademark for the verbal, spelled-out, look-for advertising equivalent too, called: The Brand With The 3 Stripes®.

We haven’t until now probed the meaning of “stripe” though: “A long narrow band or strip, typically of the same width throughout its length, differing in color or texture from the surface on either side of it.” Synonyms include, lines, bands, belts and bars, among others.

See where I’m headed? What is a reasonable scope of rights for this likely famous mark?

Interestingly, whether by strategic design or unintentional lack of consistency, Adidas has called versions of its three-stripe device mark at the USPTO, three parallel bands, three diagonal quadrilaterals, and three slanted quadrilateral bars too.

 

 

 

Whatever the verbiage though, the first time I encountered the competing Lululemon brand, my eyes were drawn to the consistent application of three parallel lines positioned on the upper chest/shoulder area of the shirt, leaving me to wonder why Adidas tolerates this non-functional marking and symbol, especially given its heavy enforcement appetite:

Turns out, Adidas spoke up a few years back when Lululemon applied to federally register a non-traditional trademark described as “three parallel bars applied to the front left-hand seam of the upper chest/shoulder area of the shirt, t-shirt, sweatshirt, sweater, tank-top or jacket,” as shown in the drawing below:

 

It’s curious that Lululemon chose to call the three parallel lines, “bands,” (Adidas verbiage) especially since during prosecution it described a “Three Stitch Design mark,” which seems more accurate, yet after convincing the USPTO that Lululemon had a distinctive non-traditional mark, Adidas came knocking and opposed anyway.

Having said that, Adidas knocked only so hard, as its mission appears to have been focused on preventing registration only, not use, since the use persists several years later. Wouldn’t you enjoy the opportunity to view the apparent settlement and coexistence agreement?

Had Adidas not opposed, or had Lululemon been able to defend the opposition, perhaps Lulu would be in a stronger position to do something about these Reef shoes that I initially mistook for an extension of the Lululemon brand (until spending more time handling them):

 

What do you think, do you suppose Reef shoes felt more comfortable adopting the three stitch device on shoes because Lulu has no non-traditional trademark registration and would have to establish non-functionality and common law rights to enforce, or perhaps, because Lulu has apparently stopped selling footwear and shoes?

Do you suppose that Reef shoes has focused on the registration of other non-traditional marks and refrained from seeking federal registration of its three stitch design because it doesn’t want to hear from Adidas?

Is it fair to say that the Adidas’ stripes, bands, and quadrilaterals don’t cast a shadow on stitches, at least when it comes to use, as opposed to registration?

Hello, B&B Hardware, and what do you have to say for yourself?