Sophisticated trademark owners recognize that their trademark rights are dynamic — even if their trademarks aren’t famous for purposes of dilution — they can grow or shrink over time, depending on the magnitude of their own use and their response to third party violations.

It is no wonder then that trademark owners are prepared to expend significant resources, at least to maintain the scope of their initial rights, to protect the value of an important intellectual property asset, and in doing so, they act with the law of trademarks on their side. Importantly, a proper balancing of the many likelihood of confusion factors determines the scope of rights for marks that are not famous (for purposes of dilution protection).

So, if the original scope of rights associated with a particular non-famous mark is represented by the black-colored concentric circles on the target, and the bullet holes represent third party unauthorized uses of confusingly similar marks, and if the trademark owner takes no action against them, then over time, the trademark owner’s scope of rights easily can shrink down to the center of the bullseye, where the trademark owner is only able to control identical marks in connection with directly competing goods.

Professor Ken Port at the William Mitchell College of Law has been exploring the “trademark bullying” issue for some time, he has graciously offered some comments to our writing on the topic here and here, and later this week, he will join Minnesota Representative Joyce Peppin and others to discuss Trademark Bullies – A Problem in Need of a Cure? at the Midwest IP Institute in Minneapolis, Minnesota.

Of course, one of the challenges with so-called “trademark bulling” is the need for a workable definition, and this must precede any intelligent dialogue about what to do with conduct that fits the definition. Although we have written extensively about many aspects of the topic, my views on a proper definition have not changed much since my first post on this topic three years ago: The Mark of a Real Trademark Bully. Yet, the effort to develop an appropriate definition continues.

Earlier this month, Professor Port presented a seminar at William Mitchell where he offered this definition:

“Trademark Bullying occurs when there is evidence that a trademark holder asserts a non-famous mark against a non-competing entity on or in connection with goods or services into which the plaintiff has no reasonable expectation of expanding.”

One significant concern with this definition is that it applies a pejorative label — and presumably adverse consequences to those who wear the label — to conduct that is likely within the scope of rights enjoyed by a trademark owner under current law.

The law fully contemplates a trademark owner asserting rights against non-competing entities and there is no requirement — in showing likelihood of confusion — that the trademark owner must have a reasonable expectation of expanding their offerings to the point where they will compete. This definition, it seems to me, places determinative weight on the “bridge the gap” factor that only some courts consider in the likelihood of confusion balance.

So, as I read it, this definition, not only snares completely legitimate activity by a trademark owner, but it also seeks to rewrite the law of likelihood of confusion in a way that dramatically reduces the scope of rights held by existing trademark owners.

What do you think?

– Brent Carlson-Lee

You may be familiar with the term greenwashing, a form of spin in which claims are made (perhaps deceptively) to promote the perception that an organization’s products or services are environmentally friendly.

You may be less familiar with the term Greekwashing. Perhaps because I just made it up (or so I believe).

Greek yogurt has experienced a meteoric rise in popularity and a proliferation of brands seeking to benefit from this health-related trend; however, the so-called Greek yogurt found on America’s supermarket shelves is rarely Greek. It’s not actually from Greece. I can accept that. It’s made from low-fat milk, not whole milk. Ok. And it’s made from cow milk, not goat milk. Fine. But put it on cereal and I think we have Greekwashing, a shameless ploy to capitalize on the Greek yogurt trend. 

Greek yogurt cake? Check. Greekwashing.

Greek cottage cheese? Check. Just add some cucumber. Greekwashing.

Greek hummus? Check. Just add some cucumber. Greekwashing. 

What’s next? Greek salad? Greek gods? Never mind.

– Anjali Shankar, Attorney –

Last week, I had an opportunity to speak on a panel at the annual Work/Life & Flexibility Expo in Minneapolis, Minnesota.  The Expo recognizes businesses who have successfully implemented workplace flexibility initiatives.  The breakout session that I participated in centered around how businesses can achieve workplace flexibility without compromising effectiveness and productivity.  Several representatives of various businesses spoke on the panel about the programs they have initiated and how those programs have become a key component of the success of their businesses.  Many of them attributed employee satisfaction and retention to these initiatives. This got me thinking about the importance of employment branding.

While businesses generally recognize the importance of product branding as a key aspect of increasing their client and customer bases and also establishing themselves in their respective markets, it is important for businesses to build their employment brands as well.  Businesses should reflect on their strategies for managing awareness and perceptions of employees, prospective/potential employees, and other relevant stakeholders of the company.  Whether it involves implementing flexibility initiatives or other programs, businesses should consider their long-term goals and strategize about how best to achieve those goals.  For example, businesses should highlight their best practices and also highlight their public recognition (i.e. being on a “best places to work” list, etc.).  Businesses should also be thinking about using social media platforms as a means of achieving their employment branding goals.  Thinking about and implementing a strategy for employment branding can be a powerful tool for attracting and retaining top talent, which can only benefit a business in the long run.

In 2008, the FCC determined that Comcast wrongfully slowed down the BitTorrent website to keep other Web traffic flowing. In 2010, the D.C. Circuit ruled in Comcast’s favor and held that the FCC cannot regulate how networks function. Nevertheless, the FCC issued new net-neutrality regulations later that year.

Verizon challenged the FCC’s 2010 net-neutrality regulations. Although since the enactment of the regulations, the FCC has allowed so many exceptions that it almost begs the question of what is left to regulate. Nevertheless, if upheld, the net-neutrality regulations threaten to impede new technologies like driverless cars, which would rely on realtime traffic data.

The FCC’s net-neutrality regulations are clumsy and the Internet is best left to self-regulation.

When I have watched the ad below around some savvy marketing and supply-chain management folks, the reactions have been generally been in the  “wow – that’s really cool” vain.   IBM seems to really be doing something right with its ability to help companies prevent counterfeit product, and clearly it’s important enough to its customers to warrant an ad focused on it.

“But, Martha,” you retort, “my trademark is not a barcode.  So how can I defend it from counterfeit?”  Relatively simple.  If you have a registered trademark, for the relatively low fee of $190 per class for the remainder of the term of the trademark registration, you can record your trademark with the U.S. Customs and Border Protection.  You tell them the names and addresses of manufacturers and licensees and other facts related to use of the mark. Once recorded, when product enters a U.S. airport or seaport, U.S. Customs agents can review shipments against the information that you have provided and can seize counterfeit product with no additional cost to you.  Sometimes they seize one t-shirt from an E-bay purchase and sometimes they seize cartons full of product.  If the seizure is not fought, the counterfeit product is destroyed.  The US government will do this all for under $200 per class per trademark for the remainder of its term (or as little as $19/year).

I’m an IPDer.

– Mark Prus, Principal, NameFlash

Back in the mid-2000s, A.G. Lafley (during his first tour of duty as CEO of P&G) championed the “First Moment of Truth” which represented the time when people are looking at the store shelf and trying to decide whether to buy the product.

Later, P&G emphasized the “Second Moment of Truth,” which is when people try the product at home, to rationalize why they spend oodles of money on Research & Development.

Google VP-U.S. Sales and Service Jim Lecinski jumped back in time to coin “ZMOT,” for the “Zero Moment of Truth,” which is the time when people research a purchase online before shopping for the product. By the way, if you have not read Jim’s book you must do so. It is a free download.

As a professional name developer I believe there is an even more important moment of truth. I call it the Minus One Moment of Truth™ and I believe it can help guide the choice of a name for your company, product or service.

What is the Minus One Moment of Truth? It is the very first time your prospective target customer hears of your company, product or service. If you are choosing a name for your company, product or service, please do the necessary research to understand the Minus One Moment of Truth for your key target customers, because understanding it will yield a lot of clues for your name choice (and your marketing).

For example, let’s say you are developing a new name for a plumbing service. You have done the research and discovered that the vast majority of new customers hear of your company through recommendations of other satisfied customers. In this case, your Minus One Moment of Truth is the instant that George tells Sam that his plumbing is leaking and Sam tells George that he should call “XYZ Plumbers” because they will do the work fast and won’t charge you an arm and a leg (or whatever your unique points of difference are). The conclusion from this example is your name had better be easy to remember because you are relying on Sam to convey the information to George and for George to remember it until he can contact the plumber.

How can things go wrong in this example? Well, what if George does not remember the exact name but remembers that the plumber was supposed to be inexpensive? He uses Google to search for inexpensive plumbers in his area and finds Affordable Plumbers, Discount Plumbers, Cheapskate Plumbers, and SaveMore Plumbers. Here is where failure in the Minus One Moment of Truth leads to a disaster in the Zero Moment of Truth. If George can’t remember the name from his first encounter with Sam, then XYZ Plumbers loses because Google will provide many alternatives. Clearly XYZ Plumbers needs a name that conveys its unique point of difference in a way that will make the Minus One Moment of Truth a memorable event.

Here is another example. Jenny is an artist who wants to rename her art business. She spends a lot of weekends at art fairs around the country and she also has an Etsy e-commerce store. What is her Minus One Moment of Truth? In looking at her business, she believes the Minus One Moment of Truth happens on her Etsy storefront as the Etsy store is her biggest sales volume generator. So she thinks that she needs a name that will search well and therefore she wants to include keywords that relate to her inventory. I’m not going to argue against that approach, but I will point out that she needs to understand the Minus One Moment of Truth for her business. Do the people who buy her product come from searches on Google or Etsy, or do they come from people who have met her in person at the art fairs? If the former, then yes by all means consider inclusion of relevant keywords. If the latter, keywords may not be that important because the Etsy sales are generated by people who met her in person. These people are likely to get her business card and be driven to her web presence by that connection, so perhaps the new business name can be something memorable about her as an artist.

I’m not suggesting that you should violate the fundamentals of developing a good name (and my “Top 5” fundamentals of name selection are shown below). But I am suggesting that you understand your target market and how they first hear of you and then apply these fundamentals:

Fundamentals of a Good Name:

1.  Is simple and concise (easy to pronounce, read and spell).

2.  Is legally available from a trademark standpoint and has domain name options.

3.  Is differentiated versus competition in the category.

4.  Is easy to remember.

5.  Delivers the idea or concept behind the product or conveys something real and specific about the product.

So don’t name your business, product or service without considering where your target customer first hears the name…the Minus One Moment of Truth!

Good homemade mac-n-cheese dishes are a real weakness for me, so this past weekend I couldn’t resist capturing this image from a local restaurant menu:

Although our daughter wasn’t with us for this particular experience, I couldn’t help being amused by the “not kraft mac n cheese” menu item, as she has been probing a wide variety of waitstaff for years about whether their mac-n-cheese on the kids menu is kraft. In her early years, the affirmative was a good thing, then one day it all changed. So, she still asks the question, but the answer triggers a different response, and she hasn’t gone back (at least in the restaurant setting).

I’ve seen many instances where a restaurant will refer to its “adult” or “homemade” or “comfort” or “gourmet” mac-n-cheese menu items, but I’ve never seen one so directly try to communicate the same thing by saying what it isn’t — perhaps because the meaning behind this product image is etched in all our minds when mac-n-cheese is spoken:

For what it’s worth, the anti-kraft moxie in the name got my attention enough to try it, and while the side dish literally lived up to its anti-name, it didn’t live up to what I was hoping for, so it was a brand experience that won’t be repeated.

In the end, I’m thinking it isn’t enough for a brand to simply stand against another — it still needs to stand on its own unique qualities and merits. Agree?

By the way, I’m looking forward to experiencing whether this spot lives up to my high hopes the next time I’m in Oakland — anyone know how it is, one way or the other?

Recently, I received my new American Bar Association card in the mail.  This is what the envelope looked like:

Notice anything?  To me, the first thing that stuck out was the transparent effort to show the “right” mix of people on this envelope.  There are 7 women and 6 men; 4 of the women appear to fit the “minority” classification, as do three of the men.  There appears to be a perfect demographic mix on the cover.  The only problem is, this demographic mix is no where near the actual demographic mix of the legal profession.  Yes, there are obviously minorities and women that have succeeded in the legal profession, but they are plainly not equally represented within the profession.

Diversity is an important goal, but doesn’t this envelope come off as patronizing and misleading?  Why even bother with the faces at all?  It just looks like the ABA is trying too hard to present the legal profession as something that its not at this point.  This also reminds me of a relatively embarrassing moment for University of Wisconsin that occurred a number of years ago.  As some of you may recall, the University got into trouble for photoshopping a black student into a “sea of white faces” on the cover of an undergraduate application booklet.  See here.

I don’t know about other people, but  efforts like the the ABA envelope and the Wisconsin brochure come off, at a minimum, as insulting, deceptive, and contrary to the whole point of promoting diversity.  But could they also be actionable?  Most states have some sort of false or deceptive advertising statutes which allow various forms of actions that do not necessarily require actual damages to the individual bringing the suit.  Could misrepresenting the diversity of your organization lead to litigation?

Frankly, I don’t think the world needs anymore litigation and I’m certainly not advocating for litigation in this post.  However, as a purely intellectual exercise, I could imagine a circumstance where a claim could be brought under one of these statutes.  How about you?

Debbie Laskey, MBA

By the time you read this post, hopefully the buzz surrounding Miley Cyrus and the Video Music Awards show will have evaporated into thin air. But there was another related story surrounding the event that generated a ton of buzz on Twitter.

On the day after the awards show, an editorial appeared on the The Onion’s website featuring the photo, name, and title of the managing editor of CNN.com. Yes, you read that correctly. Despite some inappropriate language that did not seem fitting for the managing editor’s position, it appeared that the post had been written by the person stated.

But later that afternoon, Meredith Artley, Managing Editor of CNN.com posted on Twitter:

August 26 – 2:46pm:

To clarify, I did not write this.  But I accept all compliments and deny all accusations. Tx for the page views.

August 26 – 3:01pm:

@socialnerdia @TheOnion I’m reading it as more of a joke than something to call the legal team about.

However, many readers were misled. The editorial could easily have been written by the Managing Editor of CNN.com because her name, photo, and title were prominently displayed at the top of the page. The content was detailed enough to understand the nuances of the CNN website, despite some unprofessional word choices.

But at the end of the day, what recourse did Ms. Artley have? Sure, the CNN legal team could have sued The Onion for defamation of character for both herself and the news site. But, would that have been the best use of financial resources for CNN? Would that have looked bad for CNN? Would there have been a conflict of interest if one journalism entity sues another for freedom of speech? And how many celebrities do you know who have sued the tabloids for defamation? Most lawsuits are long and drawn out, difficult to prove and even harder to win, and let’s not forget, very expensive. There have been famous defamation lawsuits filed by Carol Burnett, Kate Winslet, James Franco, Tom Cruise, Katie Holmes, and Oprah.

But, let’s consider the little guy – you and me. What would we do if a similar situation happened to us? How can we make sure that someone out there in Internet-land doesn’t assume our identities and upload inappropriate posts with our names?

Do we need some form of biometrics to upload content to the Internet? Is that the wave of the future to protect against these types of situations? What do you think?