Well, here we are — a mere ten years ago today — when we dove head first, or at least, dipped our collective toes into the vast intellectual property blogging pond.

Intellectual PropertyIP — is italicized today, because there is currently a belief among some of those we respect, that trademarks aren’t intellectual property.

According to our friend Ron Coleman of the Likelihood of Confusion blog:

“[N]othing about trademarks is brain-born other than what we might fairly call the ministerial choice to associate a given trademark with a good or service. That process may involve, and often does, a lot of thinking, creativity and intellection. But none of that invests the trademark itself — which may, in fact, be completely lacking in creativity (“Best,” “Ford,” “American”) — with the quality of intellectual, mental, creative or original content such that it should be deemed ‘intellectual property.’”

There’s a lot to unpack there, but until then, just so you know, I’m firmly on the other side of the fence, viewing trademarks as being a recognized subset of the convenient category label commonly referred to as “intellectual property.”

Stay tuned on this topic, there is much more to say, much more than there is time left in this 10th birthday to do the topic justice, but for now, I’ll simply rest with a notable quote from branding icon, Walter Landor:

“Products are made in the factory, but brands are created in the mind.”

While trademarks aren’t brands, not only can trademarks be bought, sold, licensed, and leveraged as property, trademarks protect brands, and they embody all the intangible goodwill of the portion of a business associated with a particular mark.

Dare I say there is nothing ministerial about the brain-born brilliance Landor brought to his craft as a designer, nor is there mere ministerial contribution to the brilliance and creativity that our many non-lawyer guest bloggers have brought to their work over the last decade. Aaron? James? Mark? Agree?

We’ve written a lot over the years about picking a side, the art of taking a position, not waffling; one of the things we love about Ron is he is unafraid to take a position, to plant his flag firmly in the ground — that’s what we’ve tried to do too, and what we intend to continue to do going forward.


 

Here’s a question, what purpose is served by excluding trademarks from the definition of what constitutes intellectual property? Here’s another, who gets to decide?

– Mark Prus, Principal, NameFlash

It’s that time of year! Baseball Spring Training is here! In honor of this, I’m looking at the fun names in Minor League Baseball. Some of them demonstrate the key principles of name development!

Minor League Baseball team names can be dull and boring. For example, there are some that just reflect the name of the parent Major League Team (e.g., Oklahoma City Dodgers, Syracuse Mets, Springfield Cardinals or Iowa Cubs). Yawn.

Or maybe they use a traditional animal such as the Burlington Bees or the classic Durham Bulls. These are a little more interesting, but not especially engaging.

Some teams are “swinging for the fences” with their names. When you think about what is important in naming your minor league team, you should focus on 3 things. Team names should be fun, relevant to the local population, and quirky enough to be memorable.

Here are some examples of team names that are “hitting it out of the park.”

  1. The Madison, Alabama, Rocket City Trash Pandas – Yes, there is a large NASA facility nearby (that includes Space Camp) in Huntsville so the “Rocket City” moniker is no surprise. The Trash Pandas came from a consumer contest and won the public vote by a large margin. The previous team name was the uninspiring Mobile BayBears. For the record, the other finalists were space-animal combinations: Moon Possums, ThunderSharks, Space Chimps, and Comet Jockeys.

    Even though the Trash Pandas won’t start playing until 2020, they broke the three-month sales record for merchandise sold by a rebranded Minor League Baseball team with over $500,000 in merchandise moved in nearly 3,500 online orders.
  2. The El Paso Chihuahuas – When the former Tuscon Padres moved to El Paso in 2013 the team ran a naming contest and fans chose between these finalists: Aardvarks, Buckaroos, Chihuahuas, Desert Gators, and Sun Dogs. While Team Management was initially a little apprehensive about the name, their focus on fun drove sales of Chihuahuas merchandise to record setting levels.
  3. The New Orleans Baby Cakes – According to a team PR release, the Baby Cakes name is “A tribute to the Mardi Gras king cakes where small plastic babies are sought after.” In the 2017 rebranding, the former New Orleans Zephyrs held a name-the-team contest and the finalists were Baby Cakes, Crawfish, King Cakes, Night Owls, Po’boys, Red Eyes, and Tailgators.

    Although the Baby Cakes name was initially met with mixed reactions, the team reported increased merchandise sales after the announcement and the rebrand set a record for online merchandise orders. Of note, the team awarded a free lifetime pass to any baby born in the state of Louisiana during 2017 and was entered into a raffle to win a full four-year tuition to a state college in Louisiana upon their 18th birthday in 2035.
  4. In 2019 the Amarillo Sod Poodles begin play – Per the team, Sod Poodles is a “pioneer’s nickname for ‘Prairie Dogs.'” This name emerged victorious in a “Name the Team” contest, triumphing over other selections rooted in Amarillo’s Texas Panhandle location: Boot Scooters, Bronc Busters, Jerky and Long Haulers.
  5. The Jacksonville Jumbo Shrimp – Previous renditions of teams in Jacksonville included the Jacksonville Expos (referencing the parent Montreal Expos) and the Jacksonville Suns. You’ve got to admit that the Jacksonville Jumbo Shrimp is an upgrade, even if it is an oxymoron.

    And speaking of oxymoron, the Jacksonville Jumbo Shrimp was an answer on Jeopardy earlier this year!Jacksonville Jumbo Shrimp✔@JaxShrimp

    Hey @thereal4smo – we loved your work on @Jeopardy tonight. Can we interest you in to coming to Jacksonville for a ballgame this season? Follow back and message us if you’re interested!

 

If you want to check out the bible of the weird team names of Minor League Baseball, check out this book: Root for the Home Team: Minor League Baseball’s Most Off-the-Wall Team Names and the Stories Behind Them.

Someday I’d like to work in the “Funnest” brand name category in America–Minor League Baseball Teams!

Welcome to another edition of Single Letter Brands. This one was uncovered in the far southwest corner of the country, if you haven’t been, I highly recommend a visit:

Q is a casino/resort near Yuma, Arizona. Here’s a question, what does Q stand for?

In this context, near Yuma, we’re not talking this Q casino, but rather, The Quechan, a Native American tribe, living on the Fort Yuma Indian Reservation, located on the lower Colorado River in Arizona and California, just north of the Mexican border:

The Objects in the Rear May Appear Closer Than They Are, Really.

Here’s another question: Why do you suppose The Quechan haven’t pursued registration of Q at the USPTO? Perhaps this federally-registered Q casino mark?

Here’s yet another question: Is there room on the Principal Register, for multiple differently stylized Q casino marks? I’ll answer that one with another question: Would you rather have really thin national rights or broad, but more local rights?

And, your Answers?

Does Sanas Health Practice Ltd. (“Sanas Health”) think that Daenerys or Sansa will win at the end of the wildly popular Game Of Thrones series and ultimately sit on the Iron Throne?  Sanas Health filed two applications for the mark “QUEEN OF THRONES” with the United States Patent and Trademark Office (“USPTO”). Interestingly, the Applicant’s name Sanas is extremely similar to the Game of Thrones show leading character Sansa Stark. This may be merely a coincidence but could be argued to enhance confusion between the GAME OF THRONES® marks and the applied for “QUEEN OF THRONES” mark.

I guess there could even be those out there that think Cersei will not die in the final season (not me) and instead will end up on the Iron Throne at the end of the series. But, I am thinking most people agree with me that she will not survive (and will likely be killed by one of her brothers – my bet is on Jaimie).

Not surprisingly, Home Box Office (“HBO”) believes that Sanas Health is trying to capitalize on the goodwill of its famous GAME OF THRONES® mark and brand; and thereby, diluting its distinctive and famous GAME OF THRONES® marks. HBO further believes that the “QUEEN OF THRONES” mark is confusingly similar with its marks. Accordingly, HBO has filed a Notice of Opposition against these applications (No. 91246195).

By way of background, HBO has thirty-one (31) registrations and applications for GAME OF THRONES marks (including design marks and GAME OF THRONES with additional words such as GAME OF THRONES CONQUEST®, GAME OF THRONES THE THREE-EYED RAVEN®, GAME OF THRONES ASCENT®, and GAME OF THRONES BEYOND THE WALL) in connection with various goods and services.

Sanas Health applied for its “QUEEN OF THRONES” mark in connection with:

  • “Castor oil for medical purposes,” IC 5 (Ser. No. 87/839,043); and
  • “Nutrition counseling; Dietary and nutritional guidance; Providing a website featuring information about health, wellness and nutrition; Providing information about dietary supplements and nutrition,” IC 44  (Ser. No. 87/922,698).

This is not HBO’s first time seeking to protect its marks related to the Game Of Thrones series and brands. HBO has three (3) trademark registrations and an application for WINTER IS COMING®, which is the House of Stark-centric premiere episode of the Game of Thrones series. The Purple Wine Company attempted to register the “WINTER IS COMING” mark in connection with wines. HBO opposed the application and the Purple Wine Company failed to respond. The mark is now abandoned.

The Examining Attorney found the recent application for “WINTER IS COMING” filed by Chen Yufang to be confusingly similar with HBO’s WINTER IS COMING® marks and issued an Office Action preventing registration. We will have to see if Mr. Yufang serves a response to this Office Action or abandons the application. If he does not abandon the Application and is able to overcome the Office Action, I would anticipate that HBO would file a Notice of Opposition against his application for the famous “WINTER IS COMING” mark.

Fans of the Game of Thrones series are aware of the fanciful word “Dracarys” as a command to Daenerys’ the fire breathing dragons. HBO opposed an application filed by Hangzhou Wanry Imp. & Exp. Co., Ltd.  (“Hangzhou”) to register the “DRACARYS” mark in connection with numerous automobile related accessories. HBO opposed the application and Hangzhou failed to respond. The mark is now abandoned.

Fan favorite Tyrion Lannister proclaimed, “That’s what I do. I drink and I know Things” in season six of Game of Thrones, and HBO’s official trailer for the sixth season included this saying. When Francis Collins from Florida tried to register this mark in connection with t-shirts, HBO relied upon its common law rights associated with its sale of t-shirts having the “That’s what I do. I drink and I know Things” mark to oppose the Application. Ms. Collins defaulted and her application for the mark is now abandoned and dead.

DuetsBlog has featured other posts related to the famous show and its brand, including Martha’s post here, and mine here.

The wait is almost over.  The final six episodes of Game of Thrones start on April 14.  We will have to see if there is a King or Queen who ends up on the Iron Throne and what happens to the “QUEEN OF THRONES” applications.

No worries, I’m back at the keyboard, refreshed after a busy January, from the ATA Show in Louisville to Las Vegas for the SHOT Show, then Austin, and well beyond.

2019 is off to a rapid start, not sure where the first half of February went, so I’ll make sure this is a good one, and with a little luck, it might even be a great one:

Did my iPhone capture a production anomaly in the soap on display? Note the disconnect between the word and the stuff that I’m not sure I’d want to rub on me.

How often do we hear, “Oh it’s good enough,” or “Yeah, it’s pretty good”? — Good seems pretty watered down today, bordering on being just OK, a passing grade.

Kind of reminds me of AT&T Wireless’ funny Just OK Is Not OK commercials. Let’s just say, good seems much further from CNP than BGE — Barely Good Enough.

A Friday evening shopping run to Whole Foods provided inspiration for this blog post; as you will recall, it’s not the first, others preceed it, e.g., here, here, and here.

So, imagine my surprise that someone actually would try to “brand” soap as good.

Turns out, that someone has infused more than the common meaning into the word, incorporating the more active “do-good” kind, with a real social impact.

Before learning of that aspect to the brand, I was left wondering, is good — well, enough to serve as a distinctive trademark, in other words, is it ownable, as IP?

Turns out, it apparently is, Good Soap is federally-registered for “sustainably manufactured beauty products, namely fair trade shea butter soap” — no less than 500+ pages of evidence was submitted to establish acquired distinctiveness.

At the end of the day, I’m still left wondering about the reasonable scope of rights?

With the mildly laudatory Good, it’s probably no surprise that other coexisting soap marks have slipped into the same laudatory-themed bubble bath as Good Soap:

Besides all those, why did the USPTO allow this Good soap mark to coexist, much less achieve federal registration without a showing of acquired distinctiveness?

Perhaps another less-than-wonderful style of truncated examination at the USPTO?

With a broader identification of goods, covering simply “soaps” — and no apparent “do-good” double meaning, how did the informational matter refusal slip by too?

Back to what Good might mean to consumers, at first blush, it seems facially about managing normal expectations, but Great is about exceeding them.

Assuming the product attributes live up to the name, wouldn’t a brand rather be great than simply good? In other words, can Good Soap, ever be a Great brand?

By the way, this is not anywhere close to our first soapbox when it comes to getting lathered up over soap trademarks:

You can be the judge of what is good versus great. Yes, lather, rinse and repeat.

–James Mahoney, Razor’s Edge Communications

Every now and then, lightning strikes where a creative team sees a terrific, fast-turn opportunity to have a little fun. I think of them as targets of opportunity.

We had one some years ago when we were in the midst of creating a series of mailers for a search-technology client. Early in December, the spark hit and we scrambled to make this idea happen in time:

Looks like lightning struck for the GMC creative team when the LA Rams made it to the Super Bowl. I don’t know if this was a national ad, but it appeared on my Super Bowl Sunday morning doorstep in its full-page, Boston Globe glory.

Perfectly timed delivery 12 hours before the game, perfectly targeted to Boston.

The only quibble is whether there actually was a competition to introduce the first six-function tailgate, or even if that’s a deciding factor for a substantial percentage of truck buyers. It would have been perfect all around if it were announcing that GMC sales had been tops.

But that’s a minor point. This one’s a winner for the creative team and GMC for seeing the opportunity, seeing the target, and hitting the short window to take advantage of it.

Over the last decade, we’ve covered Super Bowl topics, it’s that time of year again!

We’ve probed the NFL’s overzealous activities and asked hard fair use questions.

And, with Big Game LII in our backyard, we had a front row ambush marketing seat.

With digital marketing, that front row seat can be anywhere your iPhone takes you:

The top half of the email advertisement from Tuesday, landing in my inbox (shown above), seems to have a better argument for a nominative fair use defense than the the bottom half of the same ad (shown below), agree?

Assuming Birch’s is not an actual licensee, seems to me a rather difficult argument that use of the Super Bowl LIII logo is really fair and necessary for communicating truthfully, but, what say you?

UPDATE:

Hot off the email press and inbox from yesterday, here is another Super Bowl ambush, note their favoring of “Big Game” over “Super Bowl”:

So, they may have avoided the NFL’s wrath, but what about the Patriots and Rams logos on the helmets, fair use, or not, friends?

Here’s to looking at you again, James!

Can a gang become a brand? This is a question asked in the new Netflix show, Trigger Warning,  produced by and starring Michael Render, AKA Killer Mike, one half of the Grammy-nominated rap group Run the Jewels.

Killer Mike of Run the Jewels performing at Pitchfork Chicago on July 19, 2015 (Photo Credit: Me)

In episode three, “White Gang Privilege,” Mike explores America’s love of the Outlaw, real and imaginary, and typically white: Al Capone, Tony Soprano, Tony Montana, Michael Corleone, Johnny Cash, Gordon Gecko, and Hells Angels, to name a few.  The episode begins with Mike asking: How is it possible for Hells Angels, a known biker gang, to sell t-shirts on Amazon? And what’s stopping black gangs from doing the same thing?

As Mike drives to a trap house in Atlanta to find out, he comments that “even though black gangs … are as well known as the Hells Angels, they haven’t been able to cash in and trademark their brands in the same way.”  So he meets with Crips gang members Yayo, Murdo, AC, and Newny to discuss legitimate business ideas, like zipper and button manufacturing, and, eventually, the gang lands on a new brand of soda: Crip-a-Cola.

Crip-a-Cola packaging as shown on The Late Show with Stephen Colbert

Spoiler alert: The episode proceeds to follow the gang through all of the typical startup business challenges: getting a loan (or at least trying), creating a minimum viable product (needs more sugar), working with a graphic designer (his first time working with a gang), consulting a beverage industry expert (impressed by the polished product), focus-group testing (everyone is afraid or skeptical at first, especially Mario!), advertising (a music video like commercial), and making that first sale (at a local farmer’s market), all while handling a new market rival (Blood Pop soda produced by the Crips’ rival gang, the Bloods).

Considering everything that went into the episode, and the seriousness of the effort, I was left scratching my head over the obvious, and perhaps true-to-life, startup oversight:  where’s the trademark lawyer?  I spotted at least four issues where a good trademark lawyer could have really helped.

Trademark Notice

Do you see the little circle-R next to the word Crip-a-Cola on the product packaging?  That means “registered trademark” and indicates that Crip-a-Cola is federally registered in the United States.  The only problem is that it’s not registered.  In fact, there isn’t even an application pending!  We’ve blogged before about misuse of the trademark registration symbol here (fraud?) and here (false advertising?).  A good trademark lawyer would have corrected that to a “TM” and filed an intent-to-use application before going live on Netflix (or even to that first farmer’s market).

Clearance

Another possible problem a trademark lawyer could have helped with: Clearance.  Can the Crips actually use “Crip-a-Cola?” despite at a minimum, perhaps calling to mind Coca-Cola?  While “calling to mind” is not infringement, does Crip-a-Cola step to closely to Coca-Cola, since Coca-Cola is a famous brand, and able to wield the full power of anti-dilution law?  What has Coca-Cola done with similar attempts?  A good trademark lawyer would investigate and find out: of course, Coca-Cola will protect its corner, just take a look at the mark CropaCola, which popped up in 2014, and which Coca-Cola quickly opposed, on likelihood of confusion and dilution grounds, asserting the following:

[Coca-Cola] is the world’s largest beverage company, serving more than 1.6 billion consumers each day, in more than 200 countries around the world.  [The] COCA-COLA brand is the cornerstone of its portfolio, which presently includes fifteen billion dollar brands.  COCA-COLA and DIET COKE are the top two soft drink brands in the world. . . .[T]he ‘CROPA’ term in [CROPACOLA] is confusingly similar in sight and sound to the ‘COCA’ term in [COCA-COLA], containing the same number of syllables and a similar phonetic impression, which is compounded by the addition of the ‘COLA’ suffix, in and identical manner as the use of [Coca-Cola’s] COLA suffix.”

Seems plausible that Crip-a-Cola could expect the same treatment from the largest beverage company on Earth.  This is where having a trademark lawyer in your gang would really help.  For one, to identify issues like these (never mind taste infringement) and identify strategies for going forward, but more importantly, to look for defensible legal positions and creative solutions, for example, perhaps seizing on this line in Coke’s opposition: “Furthermore, the ‘CROPA’ term has no independent meaning, further failing to distinguish it from [Coca-Cola].”  (emphasis added).  Here, Crip-a-Cola may have an advantage: unlike “Cropa”, the term “CRIP,” does have several independent, distinct meanings (perhaps the most helpful is the possible backronym: “Common Revolution In Progress.”) and is likely famous, or infamous, in its own right.

Ownership

What else could a good trademark attorney help with?  How about determining ownership?  Absent a legal entity to own the CRIP-A-COLA mark and the related business, Yayo, Murdo, AC, Newny, and Killer Mike would own Crip-a-Cola jointly as individuals in a general partnership, the worst form of legal entity, due to the shared, personal, and unlimited legal liability each partner shoulders. Better to form an LLC at least, not only to more cleanly own the trademark, but also to remove personal liability, formalize ownership, management, and tax decisions, and adopt buy-sell provisions.

Furthermore, what about competing claims of ownership? Is there an official Crips entity that could claim false association?  Maybe – one trademark application filed July 5, 2018 for the mark CRIPS for “association services” and “Organizing chapters of a Community Revolution In Progress club and promoting the interests of the members thereof” suggests that an entity called Crips, LLC, may have been formed to claim leadership of the Crips.  This would be something any good trademark attorney would investigate, and develop a strategy for dealing with.

Legal Notices

Finally, the last issue in the episode I spotted, where good trademark lawyer would lend a hand, arises from the fine print claim made at the end of the Crip-a-Cola commercial (NSFW):

The fine print states that “unauthorized use of the Crip-a-Cola font is prohibited by law.”  The problem? Fonts, or typefaces, are only indirectly protected by law, and not in gross.  Sure, if your typeface is displayed as a result of computer software code operating on a device, then copyright protects the computer code necessary to display the typeface as a font. This is the main reason why certain fonts are licensed. But if the typeface is “copied” or used without authorization through other means, there is no recourse under copyright law.  Instead, one would have to turn to trademark protection of the stylized mark, which, absent a federal registration would be limited geographically by common law rights based on use, perhaps as narrowly as Atlanta or the State of Georgia.  And except for the famous typefaces of famous brands (for example the Coca-Cola script), such rights would be further limited by the goods in connection with which the typeface is used, to prohibit use on only identical or related goods (for example, complimentary goods, or goods within the likely “zone of expansion”), in this case, rival beverage or food products. So the claim that the “unauthorized use of the Crip-a-Cola font is prohibited by law,” while not entirely untrue, is mostly inaccurate.

Outlaws are known for having their criminal defense attorneys on speed dial.  Maybe it’s time to add the number for a good trademark attorney.

Better Call Saul? Only if he practices trademark law!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

You may recall that DuetsBlog informed you in May of 2016 (here) that Beyoncé filed suit in New York federal court against a company and its owners who were using the mark Feyoncé on apparel and other products, such as mugs. She has now dismissed the lawsuit—likely based on a settlement (although the settlement has not been reported yet, and if there is a confidentiality provision in the agreement we may never know for sure).

Beyoncé was understandably troubled when the company began using both Feyoncé (rhyming with her name, the only difference being the beginning letter) and “Single Ladies,” which is the same name as Beyoncé’s famous Grammy award winning Song of the Year. In her complaint, Beyoncé explains that the song “tells the tale of female empowerment – the protagonist celebrates her newly found status as a single woman in a dance club telling her ex-boyfriend (who is jealous of the attention that she is receiving from other men) that if ‘you liked it, then you shoulda put a ring on it.” Beyoncé alleged that defendants were “seeking to capitalize on the notoriety of ‘Single Ladies’… defendants are selling merchandise bearing the ‘Feyoncé’ mark – a misspelling of ‘fiancé’ intended to call to mind ‘Beyoncé’ and her famous song.”

Beyoncé brought a motion for summary judgment. In denying the motion, the court found that there were genuine questions of fact regarding whether there was a likelihood of confusion. It was not enough that the company had tried to “capitalize off the exceedingly famous ‘Beyoncé’ mark.” There were still questions as to whether consumers would believe that Beyoncé was associated with the ‘Feyoncé’ products.

Beyoncé takes intellectual property rights seriously (as we all should). You may recall we blogged about her efforts to protect intellectual property related to her daughter Blue Ivy Carter, here, here and here.

We have likely not seen the last of Beyoncé’s efforts to protect intellectual property.

Las Vegas has a welcoming brand, probably best known by the nearly decade old famous and iconic slogan: What Happens in Vegas Stays in Vegas.

LVCVA owns it for gaming machines, slot machine services, and “promoting the Las Vegas, Nevada area as a destination for leisure and business travelers.”

If you’re not aware of the origin and the connection to Minnesota, here you go.

Las Vegas has welcomed the SHOT Show for many years, so here we are, once again, connecting with our many brand-toting friends in the industry.

Although I haven’t yet noticed evidence of it on the streets or the strip, the famous WHIVSIV slogan is reportedly back from its brief hiatus.

MGM Resorts’ Aria appears to be building on the meaning of Vegas with a fairly new slogan of its own that interestingly employs the term being used as a verb:

Given all the other places we’ve seen and reported on brandverbing to date, and now that we know it happens in Vegas too, only time will tell if it stays in Vegas:

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

All that said, Aria’s This is How We Vegas, should not be confused with This is How We Hotel, much less, This is How I Vegas, for sure, or even this one either: