Marketing maven, strategist, visionary, and best-selling author Seth Godin spent a day at Pantages Theater in Minneapolis last Thursday, providing much food for thought among not only the attending crowd, but those following the dialogue on Twitter too.

The sushi and cupcake lunch Seth selected, and that we enjoyed, on the roof of neighboring Seven, was pretty nice too.

Days before his appearance in Minneapolis, Seth had blogged about how he was moving on since Linchpin, his life’s work, would be his final book published in the traditional way.

Spending the entire day in the third row, on the aisle, at Pantages, I found Seth to be engaging, insightul, charming, witty, gentle, real, and quite humble. Well worth the price of admission.

If you weren’t able to make it, or if you didn’t take notes, this Twitter stream will probably do the job: #SethGodinMPLS.

By the way, here is what Seth had to say about the Minneapolis airport just today: Don’t forget about color.

Finally, here are links to some of my prior posts relating to Seth Godin, in case you missed them:

  1. Seth Godin on Subtlety: The Trademark Perspective
  2. More Godin on Trademark? The Sequel
  3. Seth Godin on Trademark?
  4. Just Verb It? A Legal Perspective on Using Brands as Verbs: Part I
  5. Dr. No and the Parade of Horribles (DuetsBlog inaugural post).

 

Last month I came across this enormous, larger than life, banner advertisement hanging from the exterior of a casino on our way to the backwoods of Wisconsin.

Of course, this promotional piece took me back to my early childhood and called to mind my long lost enormous collection of Matchbox brand Hot Wheels toy cars and racetrack, but it appears there is no connection with the miniature toy vehicle maker — the winning prize was not a toy replica, but a genuine 2011 Ford Mustang.

Continue Reading “Hot Wheels” Casino Promotion: Apparently Not a Toy Story

–Dan Kelly, Attorney

Last month, the United States Court of Appeals for the Ninth Circuit issued an opinion in the case of Toyota Motor Sales, U.S.A. v. Tabari that asked whether the domain names buy-a-lexus.com and buyorleaselexus.com used in connection with automobile brokerage services infringed Toyota’s trademark rights in LEXUS.

Conventional legal wisdom is that only the owner of a trademark has a right to use its trademark in a domain name in connection with related goods or services.  The back-of-the-envelope legal calculus is not difficult:  the domain names incorporate LEXUS in its entirety, and they are used in connection with auto brokerage services–services that are closely related to automobiles.  There is only one catch:  the brokers legally deal in genuine LEXUS vehicles.  Astute readers will recognize this fact as raising the issue of nominative fair use.

The Court articulated its nominative fair use test this way:

In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.

While correct, I prefer how Steve has articulated the nominative fair use defense, which is established when:

  1. The product cannot be readily identified without using the trademark;
  2. Only so much of the trademark is used as is necessary for the identification; and
  3. No sponsorship or endorsement of the trademark owner is suggested by the use.

I bring this up, because the Court’s analysis began “by asking whether the Tabari’s use of the mark was ‘necessary’ to describe their business.”  In my initial read, I thought that the Court was beginning with the second element of the test, keying off of the word “necessary,” but this is a restatement of the first element, which addresses the issue of necessity in using the mark.  The second element, while using the word “necessary,” really addresses the scope of the use.

The Court recognized that it was not necessary in an absolute philosophical sense for the Tabaris to use buy-a-lexus.com or buyorleaselexus.com; it observed that they could have just as easily used autobroker.com or fastimports.com (Fast Imports being the Tabaris’ d/b/a).  But here’s the clincher:  “One way or the other, the Tabaris need to let consumers know that they are brokers of Lexus cars, and that’s nearly impossible to do without mentioning Lexus, . . . be it via domain name, metatag, radio jingle, telephone solicitation or blimp.”  (It is fair to characterize this last quip as dicta.)

Lawyers and fans of legal minutiae can read after the jump for one other legal issue raised by this case that has me puzzled.

Continue Reading Nominative Fair Use of Trademarks in Domain Names

Welcome to another edition of AlphaWatch (the next one in our queue), where we explore the reach of single-letter trademarks, this time focusing on the letter Q and the single-letter branding cues it might suggest to consumers:

Are you able to name the un-truncated version of this single-letter mark and brand?

My daughter could. The answer is below the jump.

Continue Reading Taking Branding Cues from Q in the Single-Letter Trademark Queue

Hewlett-Packard (“HP”) and Dell are engaged in battle over the acquisition of 3PAR. 3PAR is a small storage company that has innovative technology to handle the amounts of documents, photos, and videos being uploaded to the Internet every day. Just how important is this storage company HP and Dell’s cloud business? Thomson Reuters estimate that 3PAR’s revenue for this fiscal year is $240 million and HP recently topped Dell’s offer by offering $1.6 billion for the company. HP’s offer is seven times larger than 3PAR’s revenue and 33% more than Dell’s offer. Many analysts believe that Dell will raise its offer for 3PAR, as Dell is hoping to use the acquisition to strengthen its enterprise data-storage offerings.

Why the mad dash to acquire a small storage company? IDC estimates that spending on cloud-computing services will increase 27% a year to $56 billion by 2014. And storage, is of course, just one piece of what is needed to outfit data centers required by Internet companies for cloud computing.

This news is not only good for the 3PAR shareholders, but for consumers of cloud computing services as well. Presently, cloud computing is at the top of hype cycle, which means there are a lot of players in the space. In other words, there is a mix of reliable and unreliable players and deciphering the good from the bad can be a daunting task. This is not to imply that 3PAR is an unreliable company, but as larger companies with established reputations begin to buy the smaller players and consolidation occurs in the space, the more reliable cloud computing services will become. The more trustworthy cloud computing becomes in terms of data privacy, maintenance, and support, the more mainstream it will become. Mainstream acceptance of cloud computing is a good thing for business because it will allow companies of all sizes to reduce their IT costs, which will help increase profits.

—Mark Prus, Marketing Consultant at NameFlashSM

I am a professional name developer. As part of my naming service, I employ a trademark attorney to give me advice on the availability of the names I develop. If there is any question about the availability of a name, I either strike it from the client submission or present it with a big red flag noting the potential conflict. I also conduct a common law usage screen to identify trademarks in use but not necessarily registered with the Trademark Office. Those names get removed from the list of recommended names or red flagged as well.

Recently, Jennifer Aniston changed the name of her perfume at launch from “Lolavie” (which roughly translates to "laughing at life" in French) because she said she was concerned about potential trademark infringement with Marc Jacob’s “Lola,” which is a current bestseller. The perfume is now called (hold your breath…) Jennifer Aniston.

My question is, how far into the process did the perfume naming go before someone actually said…”you know, “Lolavie” is awfully close to “Lola.” Perhaps we should change the name?”

Why are trademark considerations often a “last minute” decision? Well, one theory is clients think the name developer is doing it when in reality some name developers don’t consider trademark review to be part of their “task” (in my 25+ year career as a marketer, I’ve been told that by a few name developers I have hired). Some name developers feel that checking trademarks is the job of the client. And sometimes clients fall in love with names without checking the trademark availability.

Another theory is trademark review can be expensive and difficult…but how hard was it to figure out that “Lolavie” might potentially conflict with “Lola?” Heck, my dog could probably figure that one out. Why wait until the launch date to change the name?

I don’t think any professional name developer would have recommended “Lolavie” when “Lola” was already in the marketplace. I certainly would not have done so, and I sincerely hope that other name developers would refrain from recommending names that obviously won’t work! There are many sources of name development. Please choose one who appreciates the wisdom of checking out trademark availability before recommending a name!

Years ago I recall hearing a veteran trademark lawyer warn intellectual property continuing legal education attendees, "When your toolbox only has a hammer in it, everything in your world starts to look like a nail."

Fair enough. It’s time for all of us to revisit the contents of our professional toolbox.

Last week, following the firestorm of criticism surrounding Best Buy’s cease and desist letter to a Catholic priest in Wisconsin, Dan provided some balanced and helpful Thoughts on the God Squad Matter, ending his post by indicating an interest in "hearing the thoughts of others on the question of how best to approach a potentially sensitive enforcement situation like this."

In further support of my admittedly Monday morning quarterback efforts and Dan’s suggestion that Best Buy probably was better off picking up the phone on this one, I offer legal and PR types one of Matthew Broderick’s most memorable and applicable lines from Ferris Bueller’s Day Off: "Ringy dingy":

Yes, the telephone (not the shower-head) definitely needs to be one of the tools in any trademark lawyer’s toolbox, especially when it comes to delicate enforcement efforts like the one Best Buy faced with Father Luke Strand’s use of a God Squad logo that appeared to be inspired by Best Buy’s Geek Squad logo.

It is always important to keep in mind the ultimate goal of the particular enforcement effort, and, in many cases, a successful enforcement effort is when the trademark owner convinces another to stop doing what the brand owner finds to be objectionable, with as little effort, hassle, and expense as possible. If this can be accomplished without sending a formal cease and desist letter, all the better.

Taking it a step further, after a phone call, why not consider a face-to-face meeting for the delicate kinds of enforcement efforts that have the legal department consulting with the PR folks before sending any cease and desist letters in the first place? For example, how might this have played out differently for Best Buy if someone from the PR or marketing department had reached out to and even met with Father Luke Strand to offer the placement of a couple of year’s worth of Geek Squad ads in the weekly bulletin of the Holy Family Parish in Fon du Lac, Wisconsin, and in return, obtain a modification of the appearance of the God Squad logo on Father Strand’s one vehicle?

In the end, Best Buy’s explanation that sending the cease and desist letter "was a really difficult thing for us to do," implies that the PR and legal teams discussed the pros and cons before sending the demand letter, but it also begs the question of why a more creative and less routine approach to their trademark concern wasn’t pursued, especially since Best Buy also has expressed that "we appreciate what Fr. Strand is trying to accomplish with his mission."

Seth Godin’s recent post entitled Subtlety, deconstructed, struck a chord with me, and should strike a chord with all trademark types and the brand owners they represent. Here is my favorite excerpt:

Subtle design and messaging challenge the user to make her own connections instead of spelling out every detail. Connections we make are more powerful than connections made for us. If Amazon and Zappos had been called "reallybigbookstore.com" and "tonsofshoes.com" it might have made some early investors happy, but they would have built little of value.

As you may recall, I have been tough on Seth Godin’s trademark advice in the past, but I couldn’t agree more with his view set forth above on naming and building powerful consumer connections and a resulting asset of significant value, by utilizing subtle design and messaging.

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.

Someone who is in the business of repairing Volvo brand automobiles has the right to say so, in advertising, and elsewhere — without obtaining advance permission from Volvo — provided consumers aren’t likely to understand the advertisement or communication to mean that the repair services and/or the business providing them is authorized by, affiliated with, or otherwise connected to the Swedish automobile manufacturer. So, as is often the case, the devil is in the details of the advertisement or communication and how it is likely to be perceived by consumers.

Indeed, over the years, there has been much litigation over the trademark fair use right and defense of independent repair shops, but suffice it to say, for our limited purposes here, using the Volvo logo on signage or in advertising would most likely cross the fair use line. (Interesting history of the Volvo logo, here). Doing so takes more than necessary to communicate the simple truth and probably implies authorized status. Of course, other activities that fall short of logo use may too, but activities simply and truthfully representing that one repairs Volvo automobiles, without more, should be fair use — nominative fair use of a trademark, that is.

Over the last year and a half, we have written a lot about trademark fair use, both classic fair use and nominative fair use doctrines (Levi’s Double Arcuate Design, Corvette Shape, Rapala-Google Billboard, Google Fortune Kit, 3M’s Post-it Note, Wal-Mart Gift Cards, Match.com For Car Lovers, Cars.com/Twins Fans Billboard, Summit Beer/Twitter Billboard), nevertheless, it is probably worth repeating the necessary elements of a successful nominative fair use trademark defense here:

(1) The product cannot be readily identified without using the trademark;

(2) Only so much of the trademark is used as is necessary for the identification; and

(3) No sponsorship or endorsement of the trademark owner is suggested by the use.

So, given these key elements of a successful nominative fair use defense, imagine my surprise each time I hear the ad — from a Relevant Radio sponsor on AM 1330 in Minneapolis — refraining from use of the two syllable Volvo brand name in the ad; instead, using precious airtime to read this cumbersome mouthful: "We Repair Automobiles From Sweden Starting With The Letter V," or something similar to that effect. This may very well define the need for the first element of the defense in being not "readily identified without using the" Volvo trademark.

Given that, each time I hear it, I’m left wondering why? As a trademark type, I’ll have to admit, it’s a bit annoying, since this extra verbiage is totally unnecessary and not legally required. So, here are a few ideas on the possible reason for the mysterious and puzzling substitution for the Volvo brand name:

  1. Engage (and hopefully not annoy some) consumers by communicating with a verbal puzzle;
  2. Avoid a possible unfortunate enunciation and unintended meaning [warning, graphic Urban Dictionary definition, I just discovered] of the Volvo brand name; and/or
  3. Serious misunderstanding of trademark nominative fair use principles.

Other possible explanations?

And, how many of you believe overzealous lawyers are responsible for this unnecessary verbiage?

–Dan Kelly, Attorney

By now, I assume that our readership is familiar with the “God Squad” story of this week’s news cycle.  If not, the executive summary is that Best Buy recently sent a cease-and-desist letter to a priest in Fond du Lac, Wisconsin requesting that he cease using a logo on his black Volkswagen Beetle that says “GOD SQUAD” and is similar in design to Best Buy’s GEEK SQUAD logo.

Here is Best Buy’s registered trademark:

And you can see a decent photo of Father Luke Strand’s car here.

There has been much ink spilled in the past week about this story.  (A good current report is here.)  I have seen and heard some commentary with an undercurrent of disdain for the mere fact that Best Buy sent a nasty lawyer letter to a priest.  I haven’t seen the letter, but have a couple of general thoughts.

First, as someone who is regularly called upon to send demand letters on behalf of brand owners, such letters can come to feel a bit routine, and there is a danger that both lawyers and brand owners can become numb to how shocking these letters can be to receive–especially to non-lawyers.  Lawyers who handle enforcement issues are immersed in conflict on a daily basis.  Most other people are not–at least not in so formal a manner.  There is always a risk that a demand letter will kick up some dust, and perhaps some negative publicity.  In my opinion, an assessment of this risk should be a part of the calculus in sending such a letter.  With all of that said, I understand completely the need for Best Buy to address the situation, as low-level a threat as it might seem to the average viewer.  (See, for instance, my post from last week.)

Second, and this may be stating the obvious, there are alternatives to a cease-and-desist letter.  Like picking up the phone.  I freely admit to being in the position of a Monday-morning quarterback on this one, but a call in this situation would have probably been the best decision, at least if Best Buy wanted to take the lowest-risk path for stirring up negative publicity.

On the other hand, “there is no such thing as bad publicity.”  Best Buy and Father Strand have both made the news, probably to the ultimate benefit of both of them or their brands, difficult as this may be to quantify.

I would be interested in hearing the thoughts of others on the question of how best to approach a potentially sensitive enforcement situation like this.