—Jesse de Agustin, Brand Strategist

Consumers are familiar with the Gap brand; and perhaps too familiar. I argue that brands must embrace consistent action while being aware that a redundant experience has potential to cause consumer apathy. There is a fine line – we want brands to be familiar to us – but not the type of familiarity that breeds contempt. Injecting energy into Gap’s “classic" appeal won’t be easy since Gap must hone in the target focus of a brand that is too spread out.

But consumer expectation of the Gap brand isn’t all that high – probably slightly above the middle. Bridging the existing components of the Gap brand for better experiences is premature and won’t accomplish much. Gap should step back and think broader in terms of how that brand complements their existing brand architecture along with some other considerations I introduce below.

  1. Gap’s one-day online/in-store promotion where customers “set their price” on a pair of khakis is short sighted and focused not only on product – but one specific category. The website Gapmyprice.com lacks authenticity nor do I think will ignite long term engagement. 
  2. Gap announced that they will remodel their stores and this is a good step forward. Yet it is not only the atmosphere that is worthy of an update. The product along with target audience must fit into and evolve alongside store remodeling. Moreover, the in-store experience at Gap should have a distinct feel – one that is different than its other brands including Banana Republic.
  3. At Gap.com, there is a toolbar with links to other brands within the Gap portfolio. In order for Gap to re-fresh and distinguish itself from competition, it must be clearly distinguished from its internal counterparts and overt links to Gap’s other brands should be removed.

Gap is not the only retailer faced with identity challenges. I also argue that Pacific Sunwear is drenched with “retail ambiguity” and is faced with similar, yet distinct issues. Thus far, attempts to revive the Gap brand are only temporary fixes. Promotions only stimulate traffic for so long and Gap should focus on crafting a brand that’s updated and desirable.

Last month I mentioned a trademark bullying webinar available through Minnesota Continuing Legal Education (MinnCLE), here. Tuition was $95 for 75 minutes of action-packed discussion on this very hot topic, so, a real bargain.

Now, MinnCLE is graciously making it available for viewing free, here, so enjoy. (No CLE credit).

By way of preview, yours truly set up the topic and then moderated an engaging discussion with four interesting and insight-filled speakers:

  • Mike Masnick of Techdirt fame provided a brief 10-minute video making the case for why trademark bullying is a problem and he notes some of the worst offenders (including Monster Cable), and then provided other live commentary on the topic.
  • Jack Clifford, a thirty-year veteran of Merchant -Gould identified Kellogg’s as an owner deserving the “trademark bully” title. Jack noted Leo Stoller as a “trademark bully” of sorts that the Trademark Trial and Appeal Board (TTAB) sanctioned, but he generally thinks the TTAB is a “playground without a proctor,” leading to abuses by trademark owners in that forum — since no fees or other monetary sanction is possible at the TTAB.
  • Jackie Leimer, currently of Chicago-Kent College of Law, provided a wealth of insight and perspective as former President of the International Trademark Association, former Chief Trademark Counsel of Kraft, former Partner of Kirkland & Ellis, and former trademark counsel of Quaker Oats.
  • Last, but certainly not least, my trial partner Craig Krummen, of Winthrop & Weinstine, did a very fine job identifying and analyzing the various legal tools available to those who feel victim to the acts of trademark bullies. Good stuff.

I hope you enjoy the webinar and fine it useful. Please share any thoughts you have about it here.

–Dan Kelly, Attorney

If the Charlie Sheen train wreck has not offered enough fodder for your idle moments, this week Aflac fired Gilbert Gottfried as the voice of the Aflac Duck due to tasteless jokes that Gottfried tweeted in the wake of last week’s earthquake and tsunami in Japan.  Where Sheen was the face of a hugely successful syndicated television show, Gottfried was the voice of the mascot for a Fortune 500 insurance company.  According to its own press release, Aflac “will immediately set plans in motion to conduct a nationwide casting call to find a new voice of the iconic Aflac Duck.”  (By the way, Steve mentioned the Aflac Duck in an eerily prophetic post here about crisis management in the wake of Tiger Woods’ misbehavior.)

This is a PR and marketing headache for Aflac.  It will not be an easy separation–Gottfried is the voice of the Aflac Duck.  The sound of the Aflac duck quacking “Aflac” is a registered trademark.  (You can hear the sound mark here.)  I personally don’t think of this registered version of the duck simply quacking “Aflac” as the trademark Aflac sound.  I think of the duck shouting “Aflac!” (kind of like Gilbert Gottfried) as the sound of the Aflac Duck. (Hear it at the end of this commercial.)

A situation like this can raise a host of potential intellectual property questions if not dealt with in advance, which, at Aflac’s level, they probably are.  For instance, how far does a well-known voice talent’s rights go if not clearly contracted in advance?  Can the company say, “we are searching for someone who sounds like Gilbert Gottfried?”  Can Gottfried ever shout “Aflac!” in public performance?

On the positive side, a situation like this can be an unparalleled opportunity for a creative agency.  Is it time for the duck to pass on because his iconic voice has vanished?  What backstories could explain a new or changed voice?  Faux auditions could provide a great deal of fodder for commercials.  In short, it’s time to make lemonade.

For the record, Gottfried has apologized.  There is also a petition afoot to reinstate Gottfried, the chief argument being that Gottfried has engaged tasteless humor for his entire career, so why fire him now.  As of this writing, a whopping 41 people have signed.  Good luck, Gilbert.  I’m sure a voice as distinctive as his will find work again.

The buying and selling of goods and services is NOT what it used to be. The market is more competitive; big corporations and businesses are no longer on top despite (perhaps in spite of) their size. And consumers…well, we now have platforms that have the potential to reach millions to get out our message—good or bad, justified or not.

You are familiar with authenticity, I know. It’s not a new subject. Perhaps marketers speak too much about it, and you’re immune. It happens. But it’s so important, especially when you’re venturing into social media.

In my last post, I discussed why monitoring your brand is important. But even before you can begin to monitor, you must have an authentic online presence. Why? Because without it, your audience may not be listening.

There’s been a lot of talk in the marketing community about authenticity. What does that mean exactly? Sure, you know the definition, but how does it translate to social media? It’s time for businesses—brands—to be honest, personable, transparent and willing to concede a little (and that means admitting mistakes).

Don’t have multiple identities.

A post from LexBlog founder & owner Kevin O’Keefe gives great reasons why not to have multiple identities on social platforms:

Many have one [account] for their personal affairs, and one for business. Some use pseudonyms to claim some expertise or flawed SEO advantage ala @accidentatty on Twitter. Lawyers in larger law firms often hide behind a practice group Twitter identity rather than use their own name.

I, too, have noticed this trend. And it’s not just contained in the legal industry. Audiences do not want to identify with a brand—an ambiguous figurehead or a vague term. I must qualify: this does not mean you can’t go out and have a company profile or Twitter account, there is a use for that. Just make sure your audience knows what it is—an aggregate—and redirect that audience to the actual human beings—lawyers, marketers, sales reps, presidents…whomever is willing to use these social platforms on behalf of the business.

Having two or more accounts can be problematic—you can’t remember to whom you told what story. (You know what I’m saying.) And it can lead to mistakes, like tweets from the Red Cross or Chrysler (note the difference in how they handled it). It’s hard enough balancing life and work, business and personal…why separate the two? You are you, no matter what, right? If not, then maybe rethink what you’re doing on social platforms. More often than not, something will slip out or your audience will see right through it. And if a mistake is made, do something about it. Own up and move on.

Use your name.

My friend & fellow legal marketer Heather Morse writes on The Legal Watercooler blog about using your name on social media platforms (she uses Twitter as an example).

If we’ve never met in person, and we were to bump into each other at, say, the Legal Marketing Association’s annual conference next month, how would you best be able to identify me? By “LGL_MKTR” – a descriptive term of what I do?

Or, by my name?

I’m going with [my] name.

While I understand why businesses use descriptive, SEO-type terms as Twitter handle names, it’s harder for the audience to feel connected. Whom are they "talking" to? People can’t connect with an entity.

But what if my name is already taken, you ask. That’s my problem. Laura Gutierrez? It’s a common name. Options? You could add a number or two to the end. If it’s too long, use a nickname. There are ways around it—just make it you, your brand. Make it authentic (there’s that word again). You’re more than just a business that sells [fill in blank].

Why take this advice?

A post from Mashable on top digital marketing trends (Ashley Brown, @ashbrown) sheds some light on why businesses should concern themselves with their social authenticity:

If this year’s SXSWi conference is any indication, the foremost digital marketing trends of 2011 will be central to one theme: user presence.

Too often, businesses over-engineer their marketing efforts in an attempt to capture the attention of their audiences’ minds and wallets. But audiences are smart, and they’re immune to these efforts.

(Read the rest of Ashley’s post for the top 5 trends.)

“User presence” = communities. A community, essentially, is made up of individuals with a common interest—perhaps your brand. Tight-knit communities have communication and collaborative thinking. They share. Trust. And that starts with engagement and authenticity.

If you’re not convinced, you could always try to manage multiple accounts with different “personalities” and see how confusing it can be for you and your consumers. I wouldn’t recommend it.

What other ways can you make your social platform authentic? How do you showcase transparency? I’d be interested to learn how you’re creating your authentic presence online.

[h/t to Susanne Egli of Talon Performance Group for the term "authentic presence." She may not own the rights to it, but I originally heard the term from her.]

Cloud computing is changing the game on how business is conducted and how businesses operate much like the PC revolution. And the cloud computing trend is roaring forward. A new wave of cheap mobile devices will soon provide many more people with access to the Internet and mobile app market. Then there is the tablet wave that was introduced with the iPad. Indeed, Hewlett-Packard Co Chief Executive Leo Apotheker promised to boost earnings and dividends sharply in coming years as it pushes aggressively into the cloud computing space.

However, is Senator Al Franken correct when he told the crowd at the South by Southwest festival in Austin, TX that “the party may be over [for the Internet]”? Senator Franken accused big telecommunications corporations like Comcast of hoping to destroy the openness and freedom of the Internet by changing for the amount of bandwidth used by content providers. He said the Net Neutrality debate is “the First Amendment issue of our time.”

Bandwidth is not unlimited. If large content providers such as Netflix consume a lot of bandwidth, less is left for others to use, including the millions of people that use smart phones and tablets. This excessive use of bandwidth impacts the speed at which data is exchanged and can cause the servers that are processing the data to be overworked. The Net Neutrality debate concerns whether telecommunications companies like Comcast should be able to charge those big traffic generators that consume the most bandwidth.

Framing the Net Neutrality debate with the First Amendment is probably overreaching. We all have the fundamental right to free speech, but not the fundamental right to Internet access. Like a road, we all pay taxes to have access to it, why should the information super highway be any different. But regardless of how the Net Neutrality debate comes out, the cloud computing trend most likely will not be derailed. As consumers, if we have to, we’ll just learn to pay a little more for the benefits that cloud computing affords us.

Just the other day, I read a news report commenting on how relatively few lawsuits have resulted from the explosion in the use and popularity of Twitter, especially given all the potentially actionable statements made using that social media platform.

Well, here’s one of interest, hot off the press so to speak, not only for those in Minnesota, but anywhere, especially for those who follow the NBA or perhaps their favorite NBA team, and take part in armchair officiating from time to time: William H. Spooner v. The Associated Press, Inc. and John Krawczynski (filed in Minnesota federal district court yesterday on March 14, 2011).

The law suit alleges that the AP and AP writer John Krawczynski defamed 22-year veteran NBA Referee William Spooner for publishing this statement on the AP Twitter feed:

"Ref Bill Spooner told [Timberwolves Coach] Rambis he’d ‘get it back’ after a bad call. Then he made an even worse call on Rockets. That’s NBA officiating folks."

According to the complaint, this statement implied that Spooner was "engaged in fixing the game." It further alleges: "At no time did Plaintiff Spooner make any statement about ‘getting points back’ to Coach Rambis or anyone." According to Spooner’s complaint, he told Coach Rambis he’d review the call at halftime and get back to him about it, and in response, Coach Rambis said: "That’s fine, but how do I get those points back?" Spooner alleges he didn’t respond to that question.

So, not your classic "he said, she said" — more like "he did say, he didn’t say."

This will be an interesting one to follow, stay tuned.

h/t to Katharine Grayson over at the Minneapolis/St. Paul Business Journal for the report

—Michael Gury, Principal, Public Relations/Communications at Michael Gury Communications LLC

A while ago, after years of development and stewardship of brands (protecting those using copyrights and trademarks, and assigning appropriate “brand value” to each) I was assigned to the task of developing new businesses and revenue based on the BBC (British Broadcasting Corporation) brand in the U.S.  Actually this was a self-inflicted project as the BBC itself was certain that the BBC logo had absolutely no value in market but I, with great courtesy and conviction, begged to differ. The BBC had tried this before and whatever it was they did had flopped. 

To date, the BBC was making a modest profit selling licenses for any television property that the BBC produced by stripping it of its real identity and letting the licensee brand these programs with “Masterpiece Theater” identity and umpteen other “presentation/producer” brands across the U.S. television landscape.   So the reality is that pretty much every classic period series with British accents comes from the BBC but its identity is nowhere to be found.  Essentially the BBC was sacrificing their own brand to the benefit of others. A classic OEM strategy – backwards.  

When they decided to make a go of branding themselves, the licensees such as WGBH, WNET, Nova, Discovery, National Geographic and others screamed “foul”.   Their audiences were hopelessly addicted to the programming yet the stations made a gamble. Playing chicken across the table, the licensees played the hostage revenue card, knowing that the BBC itself depended on a steady stream of revenue as much as the stations were dependent on the intravenous drip of BBC programming. The BBC, having no distribution channel of its own, had little negotiating leverage because the stations’ gamble worked – the BBC was terrified to blow its licensing revenue and its relationships with American broadcasters.   So naturally the BBC caved.   Their parabolic conclusion: no one wants the BBC brand in America. 

Personally I knew that this was money left on the table. Of course, the proper solution was to create a BBC Americas cable channel, put a proper BBC logo on each program and withhold the decent properties from their long standing customers who would feel jilted if they didn’t get high quality unbranded material for them to brand themselves.    Eventually that came to pass with the advent of the BBC Americas cable channel, which occurred later when Discovery apparently agreed with me, but unlike me put a huge amount on the table to license the BBC brand to create the channel as well as take over number of other branded businesses.   In fact there were a couple of huge U.S. based companies with household names that were hot to grab the BBC brand and call it their own.

Continue Reading Why We Like Brands

Any recent graduate of trademark grammar school knows, at least, the following twenty facts (perhaps there is, at least, one opinion among them):

  1. A trademark identifies, distinguishes, and indicates the origin of goods;
  2. A trademark should be searched and cleared before adoption and first use;
  3. A trademark needs a trademark attorney to take a position on availability;
  4. A trademark is one form of intellectual property;
  5. A trademark can be federally registered;
  6. A trademark is not a patent;
  7. A trademark is not a copyright;
  8. A trademark is not limited to distinctive words and symbols, but includes devices too.
  9. A trademark cannot be composed of functional subject matter.
  10. A trademark can offend.
  11. A trademark sometimes can be truncated.
  12. A trademark can cause a likelihood of confusion;
  13. A trademark can be infringed and even diluted (if famous);
  14. A trademark can be misused as the overreaching weapon of a trademark bully.
  15. A trademark that is suggestive is inherently better than a descriptive one.
  16. A trademark sometimes can become generic and available for anyone to use.
  17. A trademark is an adjective that modifies a noun, i.e., Rollerblade in-line skates.
  18. The word “trademark” has both noun and verb meanings (making some unhappy);
  19. Best to avoid the d-word when explaining the genesis of your trademark.
  20. Dated trademark advice is dangerous.

Could you graduate from trademark grammar school?

Your GPA? Any surprises here?

 

Last month there was some press about a pair of trademark infringement lawsuits between Adidas (sorry marketing types, I just can’t do the lower case letter "a" in "adidas") and Riedell over the number of stripes appearing on their sports footwear products.

You may recall, while we’re on the subject of stripes, that I previously have written: "Adidas appears to have gained a one stripe buffer on either side of its powerful three stripe iconic symbol" in Counting By Numbers, or Stripes? A Likelihood of Confusion Tale.

Even more interesting to me than the number of stripes at issue in the current pair of trademark lawsuits between Riedell and Adidas, however, is the all-to-common fight about where the fight will go forward. Yes, this is another edition of declaratory judgment actions.

Here is an interesting timeline worth noting in the Adidas/Riedell trademark dispute:

  • On January 25, 2011, Adidas sent a cease and desist letter to Riedell, here, alleging trademark infringement of the 3 stripe design mark, noting: "If we do not receive a satisfactory response within ten (10) days of your receipt of this letter, we will take appropriate action to protect  the rights of adidas."
  • On February 1, 2011, before the expiration of the 10 day period, Riedell filed a declaratory judgment action in Minnesota federal district court, here, with Exhibits A, B, and C, here, here, and here, asking the Court to declare it has done nothing wrong in selling roller skates having two stripes, as shown above.
  • On Februrary 3, Adidas, following-through on its promise to take appropriate action barring a satisfactory response, filed a trademark infringement lawsuit against Riedell, here, in Portland federal district court ("home court" for German-based Adidas in the United States).
  • On February 8, 2011, Adidas filed a motion, here, in Minnesota federal district court to dismiss or transfer Riedell’s Minnesota lawsuit to federal court in Portland, Oregon.

From court filings, it appears now that all the briefs have been submitted on the issue of whether Riedell’s first-filed Minnesota case should be dismissed as "an anticipatory lawsuit" or transferred to and consolidated with Adidas’ second-filed Portland case.

A general rule of thumb in these kinds of turf battles — where the recipient of a cease and desist letter wants to pick the forum for the fight and beat the trademark owner to the courtroom — is to wait to bring a declaratory judgment lawsuit until after expiration of the period for response set forth in the demand letter.

Let’s just say, when the recipient of a cease and desist letter jumps the gun, as it appears was the case here, it is difficult to overcome the appearance of the anticipatory and improper nature of the first filed action.

My money, were I a betting type, is on the second-filed case going forward in Portland.

What do you think? Where should the fight be fought?

There has been a recent (over the last two years) rash of lawsuits by former NCAA athletes alleging a right to recover money arising from the exploitation of their likenesses in video games. Recently, the Ninth Circuit heard arguments in the case Keller v. Electronic Arts, Inc. (complaint here). For a summary of the case and arguments, see this AP article.

Frankly, I don’t see how NCAA athletes are in any different position than the professional athletes who receive compensation in the form of licenses through their respective players’ unions. Given this ready corollary, any argument that is being lodged against the athletes in the college context would seem pretty weak.

One common and obnoxious counter is the concept of the “amateur” athlete; an argument which permeates every conversation about the NCAA’s monopoly. However, regardless of the merits to this argument (and it is oft-criticized), the validity of the argument ceases when the athletes leave college. 

The other argument regarding the “parade of horribles” that will arise because "documentarians, biographers, filmmakers, novelists, photographers, and songwriters" will not be able to "create expressive works that realistically depict individuals and/or refer to them by their actual names," is borderline frivolous. First, there is a specific legal doctrine to address this situation: i.e. fair use. Second, it’s not as if the college athletes are asserting a unique and novel right that has never been asserted before: it’s the same publicity right being exploited through EA’s licenses with the professional player’s unions.

Finally, it’s almost comical to consider who’s siding on the “fair use” type argument in this case: It’s the MPAA! Have there been more radical enemies to fair use than the MPAA and their members? I remember a story from law school where a documentary film-maker had to remove an entire scene from his film because there was a Simpson’s episode playing in the background.

At the end of the day, if the AP article provides the best available arguments and allies, I see trouble for EA.