–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.

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!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

– 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).

Wow, what a start to 2019!  We already have a Supreme Court case to look forward to, some great guest posts here and here, and plenty to build on from 2018.  Our first trade show of the year is also in the books – this time in Louisville, Kentucky for the Archery Trade Association’s annual trade show.  In addition to supporting clients in the industry, we had the privilege of working with the ATA in 2018 to develop an IP Guide for its members and help launch a new brand for the ATA, seen in the photographs below, along with a few other shots from the week:

Craig Krummen, Steve Baird, and Draeke Weseman at the ATA Trade Show (L to R, Dipak Shah not pictured)

 

Archery Trade Association – New Logo
Archery Trade Association – Express Pass Signage
Creative Brand Protection Video – Steve Baird
ATA Member Interview Video – Steve Baird
IP Guide Prepared for ATA Members by Winthrop & Weinstine

Along with predictions, also part of every new year is setting resolutions and goals. Aside from the usual, I’ve set a goal for DuetsBlog of joining Steve with posting something interesting once a week (unless the calendar is already full), which is easier typed than done.  So stay tuned, more to come from me and all of us at DuetsBlog in 2019!

–James Mahoney, Razor’s Edge Communications

I try to focus my commentary on good creative work. Otherwise, I’d be posting multiple times a day because there’s so much mediocre or outright poor work.

But today, I can’t resist

Moen’s running full-page ads for its new Flo product. On a field of irregularly scattered, different-size circles filled with ones and zeroes—”digital” water, get it?—the headline reads We Hacked Water (So It Can’t Hack You).

Huh?

The body copy is equally puzzling:

“…While [water is] seen as a vital resource that powers life, it’s also a network in your home that can be programmed. Introducing Flo by Moen, a revolutionary device that takes smart home technology to water with the first-of-its-kind whole home water supply control system. Intuitive design gives you the power to control, conserve and secure your water to protect the things you love.”

Okayyyy… So nefarious characters may hack into my water pipes and open the floodgates of my faucets? Or add some unhealthy stuff to my water so it “hacks” me, like security consultants say could happen to municipal water-treatment plants?

Since that doesn’t make any sense at all, I knew I had to DuetsBlog about it, and so headed to the Moen website.

Turns out that Flo is a control valve that detects whether there’s a leak somewhere in your home’s water system. Via smartphone (of course) it notifies you if it detects one. Moen notes some pretty good reasons why this might be a good idea.

In fact, the website offers a lot of good nuggets that you could use to build a compelling argument. So why on earth would Moen and the creative team go with such an opaque and confusing storyline, especially when introducing a unique and useful new product line?

I suspect a couple of factors diverted them.

Elsewhere on its website, Moen’s trying to chart new marketing waters with a lofty corporate story about being a company that has “given over to the power and beauty of water…[and] that also happens to make faucets.” (Commenting further on this is a subject for another day.)

Since they apparently want to be seen as the spiritual lovechild of water and more than just a fixture manufacturer, leading with the practical value of Flo isn’t hip enough. Rather, Flo advertising needs to signal that Moen’s in step with the brave new “smart” world.

And that leads to seductive creative ideas that make sense only when you know how they got there. I’m certain that everyone involved thinks this ad nails it because they know what they intend to communicate. Meanwhile, many of us scratch our heads to try to figure out what they heck they’re talking about.

Contrast that with this on the website: “Runs daily tests to ensure your home plumbing network is running efficiently. Continuously checks for leaks and potential vulnerabilities in your pipes. Automatically shuts off water to your home in the event of catastrophic failure.”

Freud said, “Sometimes a cigar is just a cigar.” And sometimes, the best campaign is one that just says it plain.

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

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

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

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

When we are not walking the trademark walk (or posting the trademark posts) we are talking the trademark talk.  Dear readers, I would like to invite you to join me and my esteemed colleague Patrick Gallagher, member of the Cozen O’Connor firm’s Trademark & Copyright Group, for a live online talk through the often seemingly confusing law of likelihood of confusion in trademark prosecution. The webinar will be held from 12:00 to 1:30 PM CT this Thursday, December 6.  Learn more and register through this link.

Strafford, an excellent resource for CLEs, has generously offered a few complimentary passes, good for CLE credits, too, all you have to do is ask.  Simply send me an email requesting a pass before 10:30 AM CT on Thursday, December 6, and if passes remain, I will gladly share one with you!

In the meantime, enjoy this oldie-but-goodie, and still relevant treat from 2015, sure to be mentioned in the presentation Thursday:  Peace, Love, and Trademarks, all!  Hope you’ll join us!

— Jessica Gutierrez Alm, Attorney

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

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

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

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

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

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

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

–James Mahoney, Razor’s Edge Communications

It was festival time in Italy when I passed this food truck at an Abruzzo village’s celebration. I understand a little Italian (and speak even less), so what initially caught my eye was the crowd and the fun-loving couple serving up the goodies.

I knew that “Amici delle” on the sign and t-shirts means “friends of,” but didn’t know what “Fregne” means. Turns out, it’s the name that Elena Iannone gave to her special take on a type of Abruzzo pastry that she and her husband sell from the truck.

Only later, when I was gazing at the photo, did I spot the clever warning on the sign in the bottom-right corner of the case:

“Gli amici delle ‘Fregne’ declinano ogni responsabilita da un eventuale dipendenza!” (Loosely: Friends of the “Fregne” take no responsibility for you becoming addicted!)

How’s that for a not too subtle boast about the quality of your tasty pastries?

Not content with that, though, the Amici take it further. The offerings have names like Exotic, Delicate, Greedy, Widow, Kinky, and a few others that hint at the meaning of Fregne, which none of my Italian dictionaries defines. Suffice to say that the jovial Elena has both a sense of humor and a marketing instinct.

Most of the time when we talk about marketing and advertising campaigns, the subject companies are well-known, at least regionally, and often nationally or internationally. But lots of little one-offs, like the Amici delle Fregne, produce creative, consistently on-brand approaches that are qualitatively right up there with the big leaguers.

And like the big leaguers, when your marketing is good, your product better live up to it. Based on what I saw that night, when the Amici were happily handing over a steady stream of Fregne, they more than deliver on that front.

An NFL team and an NBA team are duking it out over trademarks with the word “UPRISING” to be used with eSports.

What is eSports you may ask? It is professional competitive video gaming. Anyone with a teenager has probably heard of Fortnite. Fortnite is a world-wide phenomenon. Over three nights during TwitchCon (which is a Fortnite competition), Fortnite averaged around 65,000 viewers per day across Twitch, YouTube and Facebook. However, there are also numerous other video games such as Hearthstone, Tom Clancy’s Rainbow Six Siege, Star Craft II and Overwatch, among others. Indeed, Overwatch is related to the trademark dispute involving the owner of the New England Patriots.

The dispute involves the marks BOSTON UPRISING and NORTH UPRISING. Specifically, last month, the billionaire owner of the New England Patriots Robert Kraft’s company, Kraft Group, filed a Notice of Opposition against an application filed by the NBA’s Toronto Raptors for the mark NORTH UPRISING (stylized) in connection with clothing and other merchandise that is to be used with video games. The Kraft Group alleges that the stylized mark in the application is similar in stylization and font of its applied for stylized mark for BOSTON UPRISING.

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