DuetsBlog

Collaborations in Creativity & the Law

Yes, We’ll Keep Making a Ruckus!

Posted in Articles, Branding, Marketing, Trademarks

This medallion came to me several weeks ago, and I’m carrying it in my pocket each day:

Any idea where it came from?

Do you embrace tension?

Would you agree we’ve been making a ruckus?

If so, should we continue doing so, as the medallion reminds?

Sorry, no links or hints today, but stay tuned, much more to come, promise!

What Is In A Name – A LOT!

Posted in Advertising, Almost Advice, Articles, Branding, Famous Marks, Fashion, Marketing, Product Packaging

The parent company of fashion giant Coach found out that there is a lot to a brand name.

Coach’s strategic plan was to expand into a specialty retailer that would branch out beyond the COACH® brand.  To accomplish this strategy, Coach acquired both snazzy shoe company Stuart Weitzman and trendy Kate Spade & Co.

In doing so, Coach wanted to rebrand its parent company to reflect the three distinct brands under the corporate umbrella.  Coach chose the name Tapestry for its parent company.

The public backlash and slight drop in Coach (now Tapestry) stock price was unexpected.  Consumer’s felt that Tapestry sounded “musty” or “old.”  Others were reminded of the Carole King song and were not happy.

Consumers felt better when they were told they would still be able to buy their beloved COACH® bags.

The parent company Tapestry has more impact on the Wall Street shareholders than the individual consumers.  The company explained the origin of the name.  The Tapestry name reflects the long history back to its start in Manhattan in 1941 following the Great Depression and the creativity, craftsmanship, authenticity and inclusivity that the company was founded on.

Coach is not alone in branding a parent company.  Mondelez (formerly known as KRAFT) that owns the Oreos® and Nabisco® brands also received backlash when it unveiled its new name.  Consumers complained that the name Mondelez sounded like a dreadful disease.

With all the acquisitions occurring in the business world, the renaming of parent companies will be a fertile ground for creative agencies to obtain business.

What names do you think would have been less controversial for Coach to have adopted?

E-Sports Trademark Updates: MLB, Blizzard, ELEAGUE, and adidas

Posted in Branding, Infringement, Trademarks, TTAB

With the growing popularity of e-sports (multiplayer video-game sports competitions, often played by professional gamers for spectators–also stylized “eSports”), I’ve seen an increasing number of trademark disputes not only between video-game companies, but also between video-game companies and other non-electronics businesses selling physical goods or services.  It is interesting to observe the arguments regarding bridging the “virtual gap” between the physical world and the digitized world, in terms of whether consumers would actually perceive relatedness and confusion.

One example, and a timely update to one of my recent posts, was the potential dispute between Major League Baseball Properties, Inc. (“MLB”) and Blizzard Entertainment, regarding Blizzard’s Overwatch game. The logo used for the Overwatch game had a two-tone background with a silhouette of a figure, arguable with some similarities to MLB’s well-known blue-and-white logo with a white silhouette of a baseball player. As predicted, after filing a request for extension of time to oppose, MLB never followed through with an opposition proceeding. And it seems that MLB didn’t convince Blizzard to make any changes, as the Overwatch League mark appears the same–so a positive outcome for Overwatch there. It seems MLB wasn’t concerned enough about potential confusion in light of the gap between the parties’ goods and services; although, in my view, the lack of concern was probably influenced by the significant dissimilarities in the marks.

Another example recently in the news is a new enforcement action by Adidas (or as their marketing folks prefer, adidas). adidas is often in the news regarding its aggressive enforcement measures, as we’ve blogged about on numerous occasions (such as hereherehere, and here).

This one is interesting as, unlike many examples we’ve blogged about, the enforcement target is not another shoe or clothing company, using a physical similar design with three (or two, or four) stripes. Rather, the target here is the Turner ELEAGUE, which offers popular e-sports competitions.

The ELEAGUE design logo includes an “E” design consisting of three lines, that (arguably) appears similar to the adidas three-stripe design. Turner has applied to register its mark in connection with various types of digital media and software in the field of electronic sports (Application No. 87065837), as well as various types of marketing promotion services, retail store services featuring “clothing,” and “clothing for use in online virtual worlds” (Application No. 87065846). See the “E” design mark below applied-for by Turner, as well as the mark next to the word “LEAGUE” as it typically appears on Turner’s website.

A couple weeks ago, adidas filed an extensive Notice of Opposition (over 100 pages) against registration of Turner’s applications.  The primary goods offered by adidas, and identified in its trademark registrations, are clothing, apparel, footwear, and physical sporting goods. Nevertheless, as argued in the Notice of Opposition, adidas also licenses its mark to be used in video games (e.g., on virtual players’ clothing, and in virtual signs and sports fields), and sponsors electronic sporting events and teams, all of which is helpful for the relatedness argument.  In addition, to the extent that Turner’s ELEAGUE application seems to also cover real-world “clothing,” rather than only  “virtual” clothing, adidas has a stronger case for relatedness. In industry news there have been some skeptical reactions to the dispute, but to be fair, the Notice of Opposition makes some decent relatedness arguments, so we’ll see how this one turns out. No reaction yet from Turner, as the Answer to the Notice of Opposition is not due until November 19.  I’ll be watching this one with interest–stay tuned for updates.

 

 

Is Artificial Intelligence The Future of Branding?

Posted in Almost Advice, Branding, Guest Bloggers, Marketing, Mixed Bag of Nuts, Squirrelly Thoughts

-Mark Prus, Principal, NameFlash Name Development

Janelle Shane is a research scientist who likes to play around with neural networks. Recently she’s been having fun investigating whether neural networks can replace traditional means of creative development. As a professional name developer, I’m watching her work closely because I’ve been told that my chosen career is about to be destroyed by the use of artificial intelligence to develop brand names.

Based on the results thus far, I’m not worried. While it is true that computers can develop names, I strongly believe that the judgment of a seasoned branding expert (like me!) will be necessary to identify names that will resonate with consumers. As evidence of my confidence, I provide some examples of names developed by artificial intelligence in the past year:

  • Paint Colors – Janelle’s experiments yielded names like Stoomy Brown, Stanky Bean, and Bank Butt. I’m pretty sure nobody would buy a paint called Stoomy Brown (which actually looks like a shade of green) or Stanky Bean.
  • Craft Beers – The AI developed names like Toe Deal, Sacky Rover, and Cherry Trout Stout. Given the proliferation of crazy craft beer names, some of the names developed by the neural network appear to be reasonable (e.g., Devil’s Chard, Whata Stout, and Black Morning), but you have to sift through a lot of “Toe Deals” before you get to a decent name.
  • Guinea Pig Names – While the AI names for guinea pigs are better (e.g., Funbees, Sporky, Furzy, and Farter) that is only because you generally don’t have to say the name in public. Can you imagine using “Farter” as a dog’s name? “Stay Farter!”
  • Superheroes – I really don’t think a superhero called Nana will be feared by an evil villain…although I’m heard of some pretty badass grandmas. And would Supperman’s superpower be the ability to put the fear of bankruptcy in the hearts of owners of buffet dinner establishments?

You get the point. Right now it is all fun and games and it is easy to separate the stupid names from the barely acceptable names.

But eventually the AI will get better, and that is when demand for my services will actually increase! When AI starts generating excellent names companies will be faced with having to pick a name from a list of 100 great names, and they will need the assistance of a branding expert to make that decision. Put me in coach…I’m ready to play, today!

Some Subtle Stories Make Great Trademarks

Posted in Advertising, Articles, Branding, Look-For Ads, Loss of Rights, Marketing, Non-Traditional Trademarks, Trademarks, USPTO

One of my passions is to find common and favorable ground between legal and marketing types.

One of the readings during week three of Seth Godin’s intensive altMBA workshop reminded me of a great example to illustrate how a valid marketing goal can align with strong legal protection.

An excerpt from Seth’s All Marketers are Liars book was part of the reading material for a project on How Organizations Change, and this portion of that excerpt made me think of trademark types:

Great stories are subtle. Surprisingly, the less a marketer spells out, the more powerful the story becomes. Talented marketers understand that the prospect is ultimately telling himself the lie, so allowing him (and the rest of the target audience) to draw his own conclusions is far more effective than just announcing the punchline.”

Trademark types can learn a valuable lesson here about the protection of traditional trademarks: Subtlety can yield immediately protectable, inherently distinctive and inherently strong marks.

We’re talking about the difference between suggestive marks on the one hand, the favored hand, and descriptive marks or generic terms on the other hand, the less favored trademark hand.

Let’s keep in mind though, when we’re operating in the realm of non-traditional marks, subtlety may not be your friend, as the story told there needs to be far more blunt, direct and obvious to build and enjoy trademark rights.

In searching our vast content on DuetsBlog, I’m reminded of something similar I wrote more than seven years ago now, and I’m not sure I can say it any better now, so here it is, again:

“We have spoken and written about not “hitting the consumer over the head” in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.”

So, some subtle stories told in a name can make powerful trademarks with a broad scope of immediate protection. And, some will still require the help of an obvious and blunt instrument.

The key is knowing the difference and when each approach is required. My fear is that the USPTO’s growing obsession with failure to function refusals (here, here, and here) and mere information refusals will begin to spill more prominently into traditional trademarks?

Does anyone else see this happening before their very eyes?

In other words, to please the USPTO, are we needing to move toward being more blunt about whether even a traditional word mark is actually designed to perform as a trademark?

Let’s hope not.

Oh, and by the way, I was speaking above with subtlety about being past the half-way point (the dip) in Seth’s altMBA workshop, so I’ll be blunt now, it is amazing, it is transformative, do it!

We can Keep Googling the GOOGLE Mark: Supreme Court Denies Cert

Posted in Famous Marks, Genericide, Mixed Bag of Nuts, Search Engines, Trademarks

Many of us have been eagerly waiting to see whether the Supreme Court would consider Google’s potential genericness.

As Martha explained, the case began in 2012, after petitioners Chris Gillespie and David Elliot attempted to register hundreds of web domains that included the word “Google” together with a variety of different people, products, and brands (i.e., googlestarbucks.com).  Google objected to the registrations, and Elliot filed a complaint (joined by Gillespie) in federal district court.  Elliot and Gillespie argued that “google” had become a generic term due to its common use as a verb.  The district court ruled against Elliot and Gillespie on summary judgment.

On appeal, the Ninth Circuit affirmed the lower court’s opinion.  As Tucker discussed recently, the Ninth Circuit held that “verb use does not automatically constitute generic use.”  The court clarified that the mere act of using the term as a verb does not render the mark generic unless it is used to refer to a type of good or service (i.e. an internet search generally).

Without comment, the Supreme Court denied Elliot’s and Gillespie’s petition for review.  (Notably, of the 7,000-8,000 petitions filed each year, the Supreme Court grants and hears argument in only about 80 of them.)

While Google is surely celebrating the Supreme Court’s refusal to hear the case, Band-Aid, Xerox, and Rollerblade are cheering right along with them, while cellophane, aspirin, and thermos look on with envy.

Forget Prince; Minnesota Opens Courts to Hulk Hogans of the World with Revenge Porn Civil Action

Posted in Copyrights, Law Suits, Mixed Bag of Nuts

Recently, I attended the University of Minnesota’s celebration of “40 Years of Gopher Justice,” an event honoring the institution’s University Student Legal Service (“USLS”), a non-profit organization that provides UMN students with free legal services. The celebration included a panel on a contemporary topic in student advocacy: “revenge porn.” The topic isn’t relevant just for students, though. One may recall that just last year Hulk Hogan successfully sued the now-defunct gossip news site Gawker for its dissemination of a sex tape depicting him and another woman. Hulk Hogan eventually settled the case with Gawker for $31M.

Hulk Hogan testifies in his suit against Gawker. Image credit: Slate.

The USLS celebration panel hosted three experts on revenge porn, including two attorneys knowledgeable about Minnesota’s new suite of civil and criminal remedies that went into effect in late-summer 2016. See Minn. Stat. §§ 604.31 (civil), 617.261 (criminal). In response to my question about the civil action, one of the attorneys remarked that he believed the Minnesota law created a “copyright” to one’s image, enabling that person to prevent unwanted dissemination and exploitation of pictures and recordings depicting the person in a sexual way. For the sake of persons hoping to prevent and recover damages for unwanted dissemination under Minnesota’s new law, I hope he’s incorrect; after all, the Copyright Act preempts all state laws that overlap with federal protections over the subject matter of copyright, see 17 U.S.C. § 301(a)—which includes photographs and videos, see 17 U.S.C. § 102(a)(5)-(6).

In order to bring a civil action for non-consensual dissemination of private images (the “revenge porn civil action”) in Minnesota, (1) the defendant must have disseminated a private image without the plaintiff’s consent, (2) the image must have been of a sexual character, (3) the plaintiff must have been identifiable in the image, and (4) the image must have been obtained or created under circumstances in which the plaintiff had a reasonable expectation of privacy. See § 604.31, subd. 1. If these four elements are shown, the plaintiff may recover general and special damages, including financial losses resulting from the dissemination of an image and damages for mental anguish, disgorgement of profits made from dissemination, civil penalties, and attorneys’ fees. See § 604.31, subd. 3. See the Minnesota Senate’s overview of this law for more general information about the revenge porn civil action.

What’s interesting about this cause of action is that it’s a blend of both (1) the right to privacy and (2) an intellectual property right called the right of publicity. Right to privacy claims (for invasion of privacy) typically remedy the unjustified exploitation of one’s personality and injury to privacy interests that are emotive or reputational. Right of publicity claims, on the other hand, combat the unauthorized use of one’s identity in commercial advertising and compensate persons for the value of the commercial use of that identity and/or reductions in the value of the cultivated identity. Minnesota’s revenge porn civil action appears to be a specific hybrid of both kinds of claims; it protects both privacy and property interests in a person’s identity and provides relief in the form of both reputational and economic damages, as well as injunctive relief.

Coincidentally, when Minnesota passed its revenge porn bill in 2016, it was also considering the codification of the right of publicity under a bill entitled the “Personal Rights In Names Can Endure” (“PRINCE”) Act. But the bill’s sponsor later pulled his draft after critics expressed concerns about the bill’s broad language. One commentator questioned whether such a bill was necessary in light of Hulk Hogan’s victory. Minnesota’s revenge porn civil action arguably combined two separate claims into one, but it also expanded the scope of recovery under either claim so as to now include multiple forms of relief.

Whether the revenge porn civil action will be utilized to any significant degree is as of yet uncertain. The USLS celebration panelists noted—and a brief case search confirms—that courts have yet to extensively apply and interpret the law. From the face of the law, though, it appears that Minnesota is now a hospitable forum for victims of revenge porn, especially celebrities with economically-valuable identities. And due to the state’s broad remedial scheme, I would not be surprised if we eventually see large cases like Hulk Hogan’s in Minnesota courts.

Does getaroom Make U Want 2 BookaRoom?

Posted in Advertising, Articles, Branding, Marketing, Trademarks, USPTO

A tv commercial for yet another hotel booking website just caught my eye, called getaroom:

This one was founded by a pair of lawyers, in fact, the same duo that founded Hotels.com.

I was left wondering whether getaroom is federally-registered, and it is, for “providing travel lodging information services and travel lodging booking agency services for travelers.”

It was registered back in 2011, without any need to show acquired distinctiveness, so it was considered inherently distinctive, I suspect because of the trope and double meaning.

Yet, the getaroom.com website has a very generic and un-branded look to it, and you’d never know the phrase is federally-registered as a trademark, much less a trademark at all.

Then, upon entering your destination and desired stay dates you’re led to a page that invites you to select from a variety of hotel options by clicking on a red button reading “get a room”.

From there, you’re led to a page showing more details about the selected hotel, then you’re invited to “book a room” by clicking on another red button.

I’m left thinking that the folks at getaroom might want to cancel their apparent booking for the use of an all lower case style, especially without the ® registration symbol.

What are the odds that one day getaroom will be groping to maintain its trademark status?

But who would have an interest in caring about that? Then I came across Book A Room, who ironically has no federally-registered rights that I could find in the phrase “Book A Room,” but it does a far better job of making clear trademark use of its chosen name:

In case you’re wondering about who might have prior rights, getaroom claims a first use date in 2009, while Book A Room, asserts it has been online since 1997.

So, would you rather have a room without a trademark or a trademark without a room?

Key: room = registration

Former Rutgers Player Sues Alma Mater Over Nickname

Posted in Infringement

Moving along from Steve’s post on our alma mater of the University of Iowa, a former Rutgers football player has a more negative view of his former school. A few years ago, the Rutgers football program started allowing position groups to choose a nickname. The wide receivers are known as “Flight Crew,” the defensive linemen as “Rude Boyz,” and the offensive line was formerly known as “Soul Train.” Apparently the steam ran out though and the group chose a new name this year: “Rare Breed.” The players and the coaches use the name in social media like Facebook and Twitter. While Wild Turkey appears unconcerned, the new moniker has ruffled the feathers of John Ciurciu, a former Rutgers fullback who has now filed a trademark infringement complaint in the New Jersey U.S. District Court.

Ciurciu founded Rare Breed after he moved on from his playing career. According to the complaint, the company sells a variety of clothing and football gear, becoming popular among high school, college and professional football players. The complaint counts Adrian Peterson and Brian Cushing among NFL players that wear the brand. The company also designs custom apparel for student athletes at Coastal Carolina College. The company owns registered trademarks for the RARE BREED mark in standard character form as well as part of a design mark. The registered design mark is shown below on the left, and the image displayed on Rutgers social media on the right.

The complaint alleges that the use of the image above as well as the use of the hashtags in social media are all instances of trademark infringement and unfair competition. Rare Breed had earlier sent cease and desist letters to Rutgers. The university’s attorney responded by stating that the coaches had been directed to remove the images and hashtags from their social media. While some of the images were removed, some remained. Rare Breed sent a second letter and again the university’s attorney stated that the coach had been directed to remove the use.

It is worth noting that Rutgers has not sold any goods with the image above. However it seems that Rare Breed is concerned that players, especially recruits, might mistakenly believe that the team is sponsored by Rare Breed. The concern seems plausible, even if Rare Breed doesn’t have the same widespread recognition as bigger companies like Adidas or Nike. While we have to wait and see whether Rare Breed can prevail on its claims, one thing is certain. In the age of recruiting via social media, counsel for colleges and universities should discuss intellectual property and other social media issues with their football programs. The Rare Breed – Rutgers dispute is an excellent Exhibit #1. Without proper guidance, lawsuits like this will be anything but rare.

Owning a (Wholesome) Four Letter Word

Posted in Advertising, Articles, Branding, Fashion, Marketing, Trademarks, USPTO

I’m not talking about those kinds of four letter words (by the way, we’re still awaiting the Brunetti decision to learn their fate), so today I’m talking about this wholesome kind:

Inquiring minds may wonder (and interested alumni) how the University of Iowa might go about owning federally-registered rights in the word IOWA to convert that ™ symbol to an ® symbol?

The easiest place to start would be to claim the word has acquired distinctiveness for the typical clothing offerings of a Big Ten University athletic program in combination with the distinctive color combination, gold on black:

 

 

And, black on gold:

But, what about the word only, without being limited by font or the distinctive color combination?

No problem. Judging from another four letter truncation of a University name, it’s doable with a showing of acquired distinctiveness too.

And some may be surprised to know this remains true, even when the truncation constitutes the complete name of a State.

Go ahead and ask Indiana, Michigan, Illinois, Wisconsin, and Nebraska, to name just a few.