How important is the DREAM ANGELS brand to Victoria’s Secret?

Victoria’s Secret has a robust portfolio of federally-registered trademarks to protect the DREAM ANGELS sub-brand for undergarments and a line of personal care products and fragrances. Years ago, apparently Victoria’s Secret entered into a consent-to-use agreement with Airs International, a company that had rights in ANGEL DREAMS for fragrances and personal care products.

Although the exact terms of the agreement are unclear, Victoria’s Secret was supposed to pay $25,000 each year to Airs International, but in late 2007 it sought registration of eight DREAM ANGELS marks itself and ceased making payments in 2008.

I’m thinking the payments must have been contingent on the continued existence of exclusive rights in ANGEL DREAMS. If so, nice lawyering because it appears those rights became abandoned. Had there been a license as opposed to a mere consent, I’m thinking it would have much more difficult for Victoria’s Secret to make the moves that it did.

In any event, Airs Aromatics, the successor to Airs International brought a breach of contract claim and a claim to cancel the DREAM ANGELS registrations obtained by Victoria’s Secret, but the district court dismissed both claims, and then Airs Aromatics appealed the dismissal, but only as to the cancellation claim.

Just over a week ago, the Ninth Circuit Court of Appeals affirmed the dismissal of the attempt to cancel the DREAM ANGELS registrations in Airs Aromatics, LLC v. Victoria’s Secret Stores Brand Management, Inc.

The Ninth Circuit made clear that the cancellation claim could not go forward, at least in federal district court:

“The plain language of Section 37 states that cancellation is available in ‘any action involving a registered mark.’ 15 U.S.C. § 1119. This language specifies that cancellation may only be sought if there is already an ongoing action that involves a registered mark; it does not indicate that a cancellation claim is available as an independent cause of action. Furthermore, each circuit to directly address this statutory language has held that it “creates a remedy for trademark infringement rather than an independent basis for federal jurisdiction.” Nike, 663 F.3d at 98; see also Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873 (3d Cir. 1992); Windsurfing Int’l Inc. v. AMF Inc., 828 F.2d 755, 758 (Fed. Cir. 1987). This interpretation also helps preserve the use of actions before the USPTO Trademark Board as the primary vehicle for cancellation. See McCarthy on Trademarks and Unfair Competition § 30:110 (4th ed.).

We therefore hold that Section 37 of the Lanham Act does not provide an independent basis for federal jurisdiction. Because Airs Aromatics has not appealed the dismissal of the only claims it brought that could support jurisdiction, the district court’s judgment dismissing this action with prejudice must be affirmed.”

So, will we now see petitions to cancel filed at the TTAB of the USPTO — “the primary vehicle for cancellation” — or have we seen the end of this DREAM ANGELS pillow fight?

Based on this decision, it would appear that DREAM ANGELS is a valuable piece of intellectual property to Victoria’s Secret, but if that’s true, why has it allowed the nearly identical DREAMANGEL mark to be federally-registered by another for pillows? Aren’t these Victoria’s Secret DREAM ANGELS registrations (here, here, and here) covering related goods?

Actually, I’m not sure I’d be able to sleep at night knowing this nearly identical mark is out there and unchallenged. How about you?

Does the thought of Cristal with ice sound weird to you?  Yeah, it did to me too – until I went to Mexico.

I am not a discerning champagne purchaser, but I’m familiar with a few well-known champagne brands like Moet, Cristal and Dom Perignon.  I can thank Jay-Z for some of that (You can’t even drink Cristowl on this one, you gotta drink Cristal).  I recently tried my first French 75, which is a delicious gin and champagne beverage, and last week, I was lucky enough to be in beautiful Tulum, Mexico, toasting with champagne to friends at their lovely wedding.  I can’t say I’ve ever had champagne with ice though, and certainly not Cristal.

Despite being in Mexico, I couldn’t get away from thinking about brands and intellectual property.

I spotted this Coca-Cola fountain at my hotel, and I couldn’t believe it – Cristal was right on the tap!  (And apparently also available in iced tea flavor).

Now reasonable consumers may immediately appreciate that CRISTAL sparkling water (soda water, “gassy water”, whatever you wish to call it) is not CRISTAL champagne (at least I would hope so).  However, it could make a person wonder whether there is some connection between the source of the two beverage products, especially given the bubbly nature of both champagne and sparkling water.

Do you think a company should be able to register a trademark like CRISTAL for sparkling water if one is already registered by another company for champagne?  How about if the mark is registered for beer, and you are trying to file for it on wine?  How about FRAPPUCINO beer v. FRAPPUCINO coffee?

 

 

 

 

– Mark Prus, Principal, NameFlash

Since Spring Training is now in full swing (no pun intended), I thought I would use a baseball analogy to introduce a marketing concept. In a baseball game it is common for a player to go to the “on-deck circle” when awaiting his/her turn at bat. While in the circle, the player usually puts a weight on the bat and swings the weighted bat around a few times.

Psychologists would call this a demonstration of the principle of perceptual contrast. It is hard to observe an object in a vacuum because everything is considered in comparison to everything else. The weighted bat feels heavy, which then makes the unweighted bat feel lighter, thus making players believe they have a “faster bat” or a quicker swing.

The Russian revolutionary Leon Trotsky said “Everything is relative in this world, where change alone endures.” In my profession of brand development, the relative nature of product names is solid rationale for in-depth consideration of the competitive set.

An experiment by psychologists Zakary Tormala and Richard Petty applied the principle of perceptual contrast by measuring persuasion based on the amount of information people think they have about something in relation to the amount of information they learn about something else. The researchers asked people to read a persuasive message for two fictitious department stores, Brown’s and Smith’s. The message for Brown’s was always the second one read and never changed during the experiment; it described three departments of Brown’s. The message for Smith’s, which was always read first, varied from discussing one department through discussing six departments of Smith’s. Not surprisingly, the respondents felt more knowledgeable about Brown’s after learning relatively little about Smith’s, and vice versa, which demonstrates the principle of perceptual contrast.

By using perceptual contrast, you can change how others think about the brand name you develop. For example, in a previous Duets Blog post on Differentiation, I  discussed the client I had who wanted a descriptive name for a product that would exist in a category of descriptive brand names. To exaggerate, the client wanted a “Fast Pain Relief” name in a category with brands like “Ultra Fast Pain Relief,” “Super Fast Pain Relief,” “Faster Than Everyone Else Relief,” etc. I always present a wide range of options for names because I want the client to see the possibilities. However, in this case, the client selected a highly descriptive name that was similar to the other names in the category and now faces the uphill battle of driving differentiation through excellent marketing.  A well-differentiated name choice would have given him a head start.

What is a “best practice” case for use of perceptual contrast? Apple was an unusual name for a computer company, but it did stand out in a world of highly technical names such as Microsoft and VisiCalc. Perceptual contrast further enhanced the name choice by using competitive technical gibberish as the “weight on the bat” to help sell the simplicity of an Apple Computer. Check out this review of historical Apple ads and notice how the game changed even more when Apple introduced the “Think Different” campaign. The evolution of Apple advertising is a wonderful example of perceptual contrast in action!

– Derek Allen, Attorney –

Aside from the actual nuts-and-bolts of lawyering, one of my favorite topics relating to the profession is legal writing.  (This makes me a lot of fun at parties as you can imagine.)  I’m an unabashed fan of experts like Bryan Garner and Mark Herrmann who advocate things like writing in plain English and using short sentences — a style Herrmann calls “Modern American Snowplow.”  Although this might sound like common sense, anyone who has spent any time reading things written by lawyers can attest to its rarity.

In a recent column, Herrmann proposed a way to determine a very important question for litigators like myself: “Are you a crappy litigator?”  Of course I passed the test, otherwise I wouldn’t mention it here.  But some of the attorneys I work for didn’t.  This can put a young attorney like myself in an awkward position of figuring out how to break the bad news to my bosses.  And although the topic here is litigators, I’m sure the feeling that you can do certain things better than your superior is something that anyone who has ever had a boss can relate to.  Herrmann recognizes this problem and suggests the following:

But, you protest: “I’m drafting this brief for a senior partner, and that senior partner insists that the ‘COMES NOW’ crap is the key to success.”

Sorry, Charlie: Your senior partner is a crappy lawyer, too. You should choose to work for other people, because otherwise you’ll soon have terrible habits ingrained for life. If all of the partners at your firm are telling you that “COMES NOW” is a good introduction, then it’s time to change firms. You’ll never amount to anything if you keep working for these clowns.

Before you abandon your inept senior partner, you might try to help him out. Tell him that his standard introduction wastes space and persuades no one, and that he should consider instead employing advocacy in his briefs.

If you must, you can also explain to your senior partner that he’s a bad lawyer. I’ll help you out here. Show the partner this column!

This is a somewhat tongue-in-cheek suggestion and, if followed, would at the very least serve to alienate me from some of the people who give me work (although this post might do the same thing!  Just kidding, none of them read this.) and could ultimately find me in the unemployment line.  So I’ll throw it out to you dear readers: When you came across a similar situation, what did you do?

 

Killer packaging is a good thing. It can increase sales and establish a stronger emotional bond between the consumer and the product brand. The current packaging of Snack Factory’s Pretzel Crisps pretzel crackers might qualify as killer, but a long-anticipated and important trademark decision issued last Friday relied on an earlier version of the product packaging that was found to help kill the claimed Pretzel Crisps trademark on genericness grounds. Marketing, creative and design types should pay close attention to the Trademark Trial and Appeal Board’s decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC. Link to pdf of decision is here.

In finding the compound term “Pretzel Crisps” to be generic for “pretzel crackers” the Board considered the packaging of cracker competitors that had used the term “crisps,” it considered media references to “crisps” treating it interchangeable with “crackers,” it considered dictionary evidence, it considered conflicting survey evidence and expert witness testimony, and it considered trade publications and magazine references with generic references to “pretzel crisps,” but the most damning evidence was probably an early version of the nutritional facts portion of Snack Factory’s Pretzel Crisps product packaging appearing on page 17 of the Board’s decision, here (note how the Board mildly scolded Princeton Vanguard for trying to keep the image under wraps as confidential).

The Board found this self-inflicted damage to the claimed Pretzel Crisps trademark to be “instructive” of the issue of genericness, ultimately weighing all evidence to invalidate the claimed mark. It didn’t matter that “crisps” was later removed from the nutritional facts information. Think of it as the first mistake that led to or justified the multitude of later generic references to “crisps” as being synonymous with “crackers.”

As you may recall, we highlighted the damaging nature of that evidence a while back, by showing a side by side image of the nutritional facts section for early Pretzel Crisps packaging (on the left) and current packaging (on the right), treating “crisps” and “crackers” the same, as generic product references:

So, product package designers beware, what words you or others chose to apply to product packaging matters, and if done wrong, it can foil any plans to own exclusive rights in a brand name.

Marketing types, if you don’t want to be the one to create evidence that kills the trademark on genericness grounds, stay in close touch with your favorite trademark type.

Last, trademark types, did you happen to notice how the Board omitted the words “primary” and “primarily” from its finding of genericness on page 27 — will that likely oversight be fixed or will it serve as a basis for appeal? Any predictions on whether we have the final word on this case yet?

As some of you may know, I commonly write posts on “personal branding” involving sports figures and other celebrities.  (See here, here, here, here, and here).  Well, last week, a Seventh Circuit decision came down involving perhaps the most significant personal brand owner of all–Michael Jordan.  The Court’s summary was as follows:

This trademark and right of publicity dispute pits basketball legend Michael Jordan against Jewel Food Stores, Inc., the operator of 175 Jewel-Osco supermarkets in and around Chicago. On the occasion of Jordan’s induction into the Naismith Memorial Basketball Hall of Fame in September 2009, Time, Inc., the publisher of Sports Illustrated produced a special commemorative issue of Sports Illustrated Presents devoted exclusively to Jordan’s remarkable career.  Jewel was offered free advertising space in the issue in exchange for agreeing to stock the magazine in its stores. Jewel accepted the offer and submitted a full-page ad congratulating Jordan on his induction into the Hall of Fame. The ad ran on the inside back cover of the commemorative issue, which was available on newsstands for a three-month period following the induction ceremony.

To Jordan the ad was not a welcome celebratory gesture but a misappropriation of his identity for the supermarket chain’s commercial benefit. He responded with this $5 million lawsuit alleging violations of the federal Lanham Act, the Illinois Right of Publicity Act, the Illinois deceptive-practices statute, and the common law of unfair competition. Jewel denied liability under these laws and also claimed a blanket immunity from suit under the First Amendment. The district court sided with Jewel on the constitutional defense, prompting this appeal.

Jewel maintains that its ad is “noncommercial” speech and thus has full First Amendment protection. Jordan insists that the ad is garden-variety commercial speech, which gets reduced constitutional protection and may give rise to liability for the private wrongs he alleges in this case. As the case comes to us, the commercial/noncommercial distinction is potentially dispositive. If the ad is properly classified as commercial speech, then it may be regulated, normal liability rules apply (statutory and common law), and the battle moves to the merits of Jordan’s claims. If, on the other hand, the ad is fully protected expression, then Jordan agrees with Jewel that the First Amendment provides a complete defense and his claims cannot proceed. The district court held that the ad was fully protected noncommercial speech and entered judgment for Jewel.

We reverse. Jewel’s ad, reproduced below, prominently features the “Jewel-Osco” logo and marketing slogan, which are creatively and conspicuously linked to Jordan in the text of the ad’s congratulatory message. Based on its content and context, the ad is properly classified as a form of image advertising aimed at promoting the Jewel-Osco brand. The ad is commercial speech and thus is subject to the laws Jordan invokes here. The substance of Jordan’s case remains untested, however; the district court’s First Amendment ruling halted further consideration of the merits. We remand for further proceedings.

The Seventh Circuit noted that the textual focus of the ad was “a congrautlory salute to Jordan on his induction into the Hall of Fame.”  But it nonetheless decided that the ad was commercial speech because it served the “dual purpose” of promoting Jewel’s supermarkets.  Although the Court does not explicitly say so, it basically holds that anytime a commercial entity (or an individual, for that matter) congratulates a famous person with the hopes that their congratulatory message will engender some good will, they are engaged in commercial speech.  Notably, the Court rejected the notion that commercial speech should be restricted to speech where the commercial message was specific and explicit rather than “general and implicit.”  In sum, if an enterprising lawyer can come up with any way that a message could pose some commercial benefit to the speaker, then its commercial speech.

Frankly, I think the Court went overboard here in casting the “commercial speech” net.  Jordan is a public figure and he should not have legal authority to control the content of every message published about him, whether it’s a positive or negative message, and whether its spoken by an individual or a popular corporation.  Moreover, the mere fact that Jewel is a commercial entity and its congratulatory message was intended to make Jewel look good to its customers does not mean the speech was commercial.  I would contend that virtually all speech, whether positive, negative, congratulatory, or defamatory, is intended to engender some positive feedback vis-a-vis the speaker.  For example, if a Chicago cabby picks up a passenger and starts lauding Jordan and all his accomplishments, the cabby probably isn’t trying to convince the passenger of Jordan’s greatness.  Rather, he’s making the speech, in part, so that the passenger knows the cabby likes Jordan.  Simply stated, virtually everything we say, whether its about ourselves or someone else, is intended to tell the listener something about us.  We’re all a little self-centered like that.

Given this, it’s unclear to me  where the Seventh Circuit would draw the line between commercial and non-commercial speech, if it can even be reasonably drawn under the Court’s analysis.  For example, what if the CEO of Jewel had been interviewed on live TV and had told everyone what a huge Jordan fan he was.  Or what if he’d written a letter to the editor doing the same thing.  What about Gene Siskel?  Gene Siskel was a well-known Jordan mega-fan, and he made that clear on numerous occassions.  (When asked to list his three favorite things about Chicago, Gene named Michael Jordan, Mayor Daley, and the Film Center.)  This undoubtedly endeared him to and enhanced his public reputation amongst Chicagoan’s and sports fans.  Does that mean his speech was commercial?

Of course, lost in all of the legal analysis is the not-so-subtle fact that it takes a real asshole to sue someone for $5 million for posting a congratulatory message.  Unfortunately, its not all that surprising.  Jordan was a tireless and aggressive competitor, and those traits are laudable and served Jordan well during his playing career.  However, the excess he had in those traits was made up for by deficiencies in others.  Jordan’s hall of fame speech is, to my knowledge, widely regarded as one of the most bitter and petty displays in sports.  Thus, its not shocking that Jordan has brought a lawsuit like this.

–Ben Kwan, Attorney

I love living in Minneapolis. The quotient for savvy and sophisticated branding is high – an opinion reinforced every time I glance out my office window.

Today, I have two examples of fantastic marketing in the public square. One has been around for quite some time, the other is brand new. One explicitly identifies the brand with which it’s associated, the other does not in the least. Both are incredibly cool and add to our community rather than detract from it. And I’m lucky enough to get to enjoy looking out at both every day at work.

Both examples remind me that there are subtle ways we can promote who we are and what we want others to think of us.  As I hope you’ll see below, you can be both “present” and “useful” without being obnoxious or in-your-face.

What you see to the left is the brilliant LED display that sits atop Target Headquarters (“TPS,” or Target Plaza South in Target-speak). The creative minds at Target have put together a number of neat light shows that cycle through, one per night. My favorite right now is the giant fishbowl. The abstract designs are pretty, cool, too. One thing you won’t find on the display, however, is anything that is even slightly suggestive of Target’s trademarked branding. No classic bull’s-eye, no conspicuous uses of red.

In 2011 when the light show went from a more basic set of hues to the brilliant LED graphical/animated display, a Target spokeswoman told the Minneapolis/St. Paul Business Journal that it’s “not a marketing display. It’s an artistic display.”

But that’s not the whole truth. The light show projects a very strong branding message. As soon as someone finds out the source of the lights – that they sit atop Target HQ and Target is behind them – there’s a sort of epiphany that happens in the viewer’s mind: that’s so classy, Target is invested here, Target is sophisticated, Target doesn’t need to be “in my face” to be noticed. One of the best things I’ve heard about the branding came from an architect who was interviewed by the Minneapolis Star Tribune a few years ago (looked for the link but can’t find it). He said that the lights serve an important purpose for Target, which literally anchors this downtown business market – the lights communicate the message that “we are present” at all times.

I apologize if you can’t make it out to the right – but that blue dot in the middle of the picture above (what I can make of it from the Capella Tower) is my second example of strong branding in the public square. It’s WCCO-TV’s brand new “Weather Watcher.” It’s one part nostalgia, one part conspicuous-yet-useful presentation of the WCCO brand. What you can’t tell from the photo is that today, the Weather Watcher is blinking blue.

The Weather Watcher of today is the “scaled-back reproduction of the 78-ton Weatherball that towered more than 350 feet above the street” in downtown Minneapolis atop the Northwestern National Bank building. That iconic piece of Minneapolis’s past went down with the bank building in the great Thanksgiving Day fire in 1982.

While the new WCCO Weather Watcher clearly carries the WCCO brand (video below), it is also so useful (read: disappointing or encouraging). See, on a given day WCCO lights it up red, blue, white, or green. For the thousands in downtown Minneapolis with a view of it, we know what the weather is going to be shortly: warmer (red); colder (blue); wet (green); or more of the same (white). I like this use of marketing in the public square because it’s useful and not wholly self-aggrandizing. The more cliché, obnoxious way for WCCO to promote its brand would have been a giant TV broadcasting its programming (which, admitedly, they do have out back on the Marquette Av. side of the building). This is useful, and it makes me want to look out every single day. These days, I’m looking for red, and not seeing much. At least by sunset, there’s a nice little show atop Target, no matter the season.

Here’s a bit more on the new Weather Watcher — the jingle that accompanies it:

On my last trip to Las Vegas, I captured these photos at the so-called “Ice Bar” located in the Golden Nugget in downtown Vegas (for my digital scrapbook of trademark storytelling):

So, I couldn’t resist, and I asked the bartender whether this “V Bar” is related to the “V Bar” located at the Venetian on the strip — remember this little gem?

 

 

 

 

She said, “no this is the Ice Bar, not the V Bar — that red is just some design.”

I’m so glad for that explanation, it is all crystal clear to me now, no need for further discussion or action, right?

And, John, I’m not sure about strict trademark enforcement on this one, I’d just call it obvious.

Further thoughts, anyone, anyone?