Do you see the trademark in this picture? While one might be tempted to immediately focus on the Coca-Cola bottle and text, the actual trademark (or former trademark) which is the subject of this post is the shape of the towel.That’s right. Up until a recent 7th Circuit decision in Jay Franco & Sons, Inc. v. Clemens Franek, (actually, up until the lower court decision which initially invalidated the mark) the circular shape of a beach towel was an incontestable trademark registered with the USPTO.

So what happened? Well, as is often the case in the world of non-traditional, product configuration marks, Franek ran into the doctrine of functionality, which “polices the division of responsibilities between patent and trademark law by invalidating marks on useful designs.” Briefly, a product design is “functional” when it is “essential to the use or purpose of the device or when it affects the cost or quality of the device.” Finding the circular towel to be functional, the District Court and the Appeals Court relied on some expired patents and the benefit to “lazy sunbathers” who merely want to reposition their bodies, rather than their bodies and their towels (Oh, the effort!) while the sun moves across the sky.

Now, the above is an admittedly simplified and incomplete dissection of the opinion.  But, ignoring the actual opinion, what is your gut reaction to this decision? Should the circular beach towel have been invalidated as a trademark? One of the intentions of the functionality doctrine is to prevent a trademark holder from blocking further innovation by appropriating designs that undergird further improvements. But, are we, as a society, actually concerned about the catastrophic stagnation of beach towel design?

And, if you’re inclined to invalidate the round beach towel mark, how do you justify protection for the distinctive design of the Coca-Cola bottle. If the minimal functional value of the round beach towel to “lazy sunbathers” is sufficient to render a round beach towel functional, isn’t the minimal functional value of the Coca-Cola bottle to “loose-gripped-bottle-holders” sufficient to render the contours of the Coke design functional?

— Karen Brennan, Attorney

Unbelievably, the MTV show Jersey Shore has presented even more material to blog about (see Sharon Armstrong’s previous blog Trademark Lessons from Jersey Shore here).

Jersey Shore cast member Nicole “Snooki” Polizzi is attempting to federally register her nickname “Snooki” as a trademark for books.  Unfortunately, the United States Patent and Trademark Office has initially refused registration based upon a prior registration for “Adventures of Snooky” in connection with a series of children’s books.  The Smoking Gun reports the Snooky books feature a cat who gets knocked overboard on a family fishing trip.  Interestingly, the authors of the Adventures of Snooky books reside in New Jersey (check out the link here – isn’t that the Jersey Shore behind them?).

I am going to go out on a limb and guess that Snooki from Jersey Shore is not going to write children’s books.  Thus, perhaps she could simply amend her description of goods to read “books, specifically excluding and most definitely not for children.”

—Jason Voiovich, Ecra Creative Group

I have to admit, I was not prepared.

Over the course of five business days last week, I had three separate clients asked my opinion – in one form or another – regarding marketing their products as "made in the USA." I guess everything old is new again. As I watched my father work with manufacturing clients in the early 1980s, he ran into the same strong urge to tout products as "American made".

In each case, the client was a US-based manufacturer facing stiff and growing competition from overseas firms and conglomerates.

The question was simple: Do you think it makes sense to "push" the domestic origin of our products? How can we phrase it? What are the risks? How are others handling it?

We’ll get back to the first three questions in a moment, but there’s no shortage of American-origin-focused promotion going on in the market right now. The most significant is the latest campaign for the 2011 Jeep Cherokee.
 

Watch the Jeep "Manifesto"

 

Continue Reading Marketing “Made in the USA” in 2010

I’m not talking about brands that say one thing and do another. I’m not talking about brands that don’t live up to their promise. I’m literally talking about brands with two faces. One face may be confident, complicated, technical, professional, and/or formal. Let’s call him, Stephen. The other face might be friendly, simple, approachable, engaging, and/or informal — perhaps, identified by a nickname or some other form of truncation. Meet Steve.

A couple of months ago I blogged about the clear trend toward truncation and informality in branding (Coca-Cola and Coke, Gatorade and G, Bubblicious and B, Stride and S, Federal Express and Fedex, Radio Shack and The Shack, Pizza Hut and The Hut, Vanderbilt and Vandy, Villanova and Nova), with at least one exception being General Motors, ahem, GM and its apparent interest in bucking that trend by moving away from the less formal two-syllable Chevy name and brand in favor of the more formal three-syllable Chevrolet name and brand.

Similarly, McDonalds’ current billboard ad campaign confirms that the fast food giant prefers formality, i.e., Joseph over Joe, at least when it comes to selling its premium roast coffee in competition with the likes of Starbucks and Caribou Coffee:

 

And, while I can’t specifically recall the name of the advertiser and educational institution, moving in a similar direction, I do recall a recent billboard ad campaign in the Twin Cities metro area, where the college or university in question seemed to suggest that an entering student named Kate will acquire the tools to transform herself into Katherine upon graduation. So, I guess that’s an improvement and worth the investment of time and money?

Meanwhile, Charles Schwab is now a.k.a Chuck:

Just wondering, had Charles Schwab started business as Chuck Schwab, would the financial giant be what it is today? Seems to me, at least in the financial services sector, starting formal and moving informal is an easier branding path than traveling in the opposite direction.

As I recall, and on a somewhat related note, earlier this year, Guest Blogger Anthony Shore of Operative Words, wrote about the naming pendulum swinging away from arbitrary names and back toward brand names having an honest, straightforward, and even humble quality, in Truth is Stronger Than Fiction. Might those principles be at work here too?

In the end, I suppose that brands, like people, may exhibit either or both faces, formal and informal, depending on their surroundings and the circumstances they encounter at any given point in time. It seems to me, they are not necessarily mutually exclusive faces, as evidenced by the fact that nearly all of the branding truncation examples above did not completely replace the more formal brand name from use, they simply introduced a fresh new second face of the brand. 

My guess, as a trademark type, is that the less formal face of a brand creates an opportunity for creating a stronger emotional connection with consumers, but I’m happy to be corrected by someone who thinks about such things for a living.

–Dan Kelly, Attorney

Quiz time.  Here’s the setup:

Company A owns the following registered trademarks for use in connection with the listed goods:

  • MAXSTAR for “electric lanterns”
  • MAGNUM MAX for “hand-held electric spotlights”
  • MAXFIRE for “portable, battery-operated lighting products, namely flashlights”

Company B owns these registered trademarks:

  • MAG-LITE and MAGLITE for “flashlights”
  • MAG for “flashlights”
  • MAG-NUM STAR for “flashlight bulbs”

Assume that the above registered trademarks for both companies have coexisted on the trademark register and in the marketplace for a substantial period of time–fifteen years or more.

Now, here are the questions:

  1. Can Company A register MAGNUM MAXFIRE for use on “hand-held portable lamps, namely flashlights and spotlights” in view of Company B’s registered trademarks?
  2. Can Company B register MAG STAR for use on “flashlights” and related goods in view of Company A’s registered trademarks?

Answers after the jump…

Continue Reading An Illuminating Tale of Likely Confusion

–Susan Perera, Attorney

Which brands come to mind when you think of Sears? Craftsman, Kenmore, Lands End? …what about Structure?

During a recent trip to Sears I found myself walking past this Sears sign for its clothing brand, Structure.   I was struck by a memory of the Structure men’s clothing store of the late ‘90s which vanished to be replaced by Express Men.

A bit of research reveals, Limited Brands (which has cultivated multiple store brands including: Express, The Limited, Victoria’s Secret, Bath & Body Works, Lane Bryant, Lerner New York, and Galyan’s) sold the Structure brand to Sears in 2003 after it re-branded its clothing stores under the Express Men mark.

Oddly, I have been completely unaware of Sears’ ownership of the Structure brand during the past 7 years.   A search of the USPTO, shows two Structure trademarks owned by Sears. One word mark registered in 1989 for men’s and women’s clothing which was assigned to Sears, and a 2006 mark which was registered by Sears for men’s footwear.

Also interesting, for those of us keeping track of the trademarks, is that at least 5 Structure design marks were also assigned to Sears, all of which have been canceled (for failure to file a section 8 declaration).

Structure Sport & Design

Structure Sport & Design

Structure Jeanswear & Design

Structure Authentic Jeanswear & Design

Structure V X XX XXX XL & Design

Another 6 Structure & Design marks were never assigned to Sears and have also gone abandoned or have been canceled.

This makes me wonder, what was the advertising and marketing strategy behind this brand acquisition?   I find it interesting that a company would buy a brand (which from my own completely unscientific, unofficial survey, had quite strong customer good-will) only to let all of the design marks associated with the brand be canceled.

So what do you think of this strategy? And, were you aware of Sears’ ownership of Structure?

–Susan Perera, Attorney

In June, guest blogger David Mitchel wrote a very interesting post about the revitalization of the Old Spice brand. And unless you have been living under a rock, you have likely seen more than one of the “Old Spice Guy” commercials featuring former NFL wide-receiver Isaiah Mustafa.

I have to admit; I think these commercials are fantastic.

Then, I ran across this parody out of Brigham Young University. There are clearly some interesting IP issues regarding use of another’s well-known advertisement, as discussed in some of our previous posts here, here, and here. Share your thoughts or just enjoy!

 

—Nancy Friedman, Chief Wordworker at Wordworking; and author of Fritinancy

“All the good ones are taken!”

Without fail, that’s the lament I hear most frequently from my naming clients. They’re not complaining about legally available trademarks—they’re talking about Internet domains. They want short ones: five letters would be nice. (Uh-huh.) They want “clean” ones: no add-ons like “partners” or “company” or “systems.” Naturally, they want cheap ones. And always, always, dot-com.

But this isn’t 1997, and most of those uber-desirable names are indeed taken—by legitimate businesses and by squatters. You can whine about it. Or you can get creative.

There are least two ways to maneuver around the domain shortage. Both are clever, inexpensive, and legal. And they’re now being used by businesses and organizations of all sizes.

1: Go global

Here’s a radical suggestion: Forget dot-com. After all, there’s a world of alternatives out there. Domain hacks use country-code top-level domains—ccTLDs—not merely to create available domains but to make words.

“Domain hack” was coined in 2004 to describe an unconventional domain name that uses parts other than the second- or third-level domain to create the domain name. (In “example.com,” “example” is the second-level domain; in “example.blog.com,” “blog” is the third-level domain.) Despite the sinister overtone of “hacks,” domain hacks are completely legal alternatives to the familiar three-letter top-level domains—.com, .net, and .org.

To get a sense of the possibilities, check out the list of ccTLDs, from AD (Andorra) to ZW (Zimbabwe). At last count there were 287 of them, and many are ideally suited for creating English words. For example, the Libyan country code, .ly, can be combined with nouns or adjectives to create adverbs or mock adverbs like bit.ly (a link shortener). Blo.gs, a tool for tracking and reading (what else?) blogs, uses the ccTLD of South Georgia and the South Sandwich Islands. The Italian country code turns Placehold.it, a tool for graphic designers, into an imperative. The New York Times has its own link-shortener, nyti.ms, which uses the .ms country code from Montserrat. And Pul.se, a search engine for syndicated content on the Web, uses the Swedish country code—which happens to be a mnemonic for “search engine.”

I’ve seen some inventive non-English domain hacks, too. Shockola.de, for example: It’s pronounced “shockolade,” which means “chocolate” in German; .de is the German ccTLD. Natürli, a Swiss cheese company, uses the domain naturli.ch. “Naturlich” means “naturally” in German, and .ch is the Swiss ccTLD.

To find and register your new global domain, try http://domai.nr. (The .nr in Domai.nr is the country code of Nauru, a tiny Pacific island.) Fees are higher than they are for standard .com or .net registrations, but almost invariably they’re far below the cost of buying a domain from a squatter.

2: Sloganize it.

If your heart is set on a .com domain, consider using your tagline or slogan as the domain instead of your company’s name. The big guys are doing it: See ThatsAPlus.com from United Plus Visa by Chase and BecomeAnEx.org from the National Alliance for Tobacco Cessation. (In the latter example, “ex” stands for “ex-smoker.”)

Smaller companies are also taking advantage of this alternative route to domain mastery. Blend, a design agency in Nashville, uses BlendItBetter.com; Open, a Manhattan design agency, is NotClosed.com on the Web. In Berkeley, the solar-technology company SunPower chose SeizeToday.com to reinforce its brand message: “The time for solar is now.”

Slogan-domains also work well for campaigns. Poise, a division of Kimberly-Clark that makes panty liners, kicked off its “Light Bladder Leakage” ad campaign last spring with a new website whose domain name suggests that the problem is very common: 1in3LikeMe.com. And for its “Rethink What Matters” campaign, the cosmetics company Bare Escentuals set up a RethinkWhatMatters.com site. (Now that the campaign has concluded, the URL redirects to BareEscentuals.com.)

One caveat about slogan-domains: Because the words will run together, be absolutely certain that the result won’t have an embarrassing double meaning. Two examples will suffice here: Pen Island and Who Represents.

We thought we had arrived when DuetsBlog made a listing of the Top 100 Branding Blogs, and it also was kind of nice when the DuetsBlog mark became federally registered, but now it appears we have reached yet another level of notoriety, appreciation, and respect altogether, as DuetsBlog is now receiving the most thoughtful of email solicitations all the way from Hong Kong to protect our apparently and admittedly famous DuetsBlog trademark from "vicious domain name grabbing":

Dear Manager,
 
We are a professional intellectual property rights consultant organization, mainly deal with the global domain name registration and internet intellectual property rights protection.
 
On August. 2th, 2010, we formally received an application from Hongyue International Investment Co., Ltd, They want to apply for registering the following domain names and Internet keyword: 
 
Domain Name:
 
 duetsblog.net
 duetsblog.cn
 duetsblog.asia
 duetsblog.hk  
 duetsblog.com.hk  
 duetsblog.jp 
 duetsblog.tw
 
Internet Keyword :duetsblog
 
During our preliminary investigation, we found that these domain names’ keyword is fully identical with your trademark. Therefore, we need to confirm with you, whether you consigned hongyue International Investment Co., Ltd to register these domain names with us or not? Or, is hongyue International Investment Co., Ltd your business partner or distributor?  If you have no relationship with this company, we assume that they have other purposes to obtain these domain names.
 
Currently, we have already suspended this company’s application temporarily due to the seriousness of this isuue. In order to avoid the vicious domain name grabbing,  please let the relevant person make a confirmation with me via telephone or email as soon as possible. Thank you for your support to our work!
 
Best Regards
 
Asia Domain Name Registration Limited, 
Units 20/F, Far East Consortium Bldg.,
121 Des Voeux Road, Central, Hong Kong
 
Vivian 
Tel:+852-6517 0670
Fax:+852-3069 6940
Email: admin@login-idc.hk
http://www.world-wtc.cn

Well, thanks for thinking of us, but no thanks, Vivian, we’re actually running for the hills at the moment, and just so you know, when clients are interested in registering domains in Asia, you don’t even make the short list.

Peeking behind the curtain, according to DomainTools, "West Group" owns the world-wtc.cn domain, so, we can all breathe a sigh of relief, just in case you’re wondering, right?

No, this is the West Group that most of us in the legal field know well, and the one that emerges as the top Google hit when using "West Group" as a search keyword. Definately no relation, but perhaps a cause of action.

This kind of thing has been going on for a while, we’re just one of the latest targets. Bloptimization previously wrote about the Asian Domain Name Registration Limited scam, and Rumplepup has written about Chinese Domain Name Frauds too.

What is your experience with these kinds of unsolicited email communications?

Do you respond or simply ignore them?

When we don’t blog about them, we do the latter.

–Dan Kelly, Attorney

For those keeping score at home, various courts and tribunals have previously held the following domain names to be generic in connection with the listed goods or services:

  • BLINDSANDDRAPERY.COM for wholesale and retail services “featuring blinds, draperies and other wall coverings”
  • BONDS.COM for “providing information regarding financial products and services”
  • CONTAINER.COM for “rental of metal shipping containers”
  • HOTELS.COM for “providing information to others about temporary lodging”
  • LAWYERS.COM for “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”
  • MATTRESS.COM for “online retail store services in the field of mattresses, beds and bedding”
  • SPORTSBETTING.COM for “provision of contests and sweepstakes on and through a global computer network”

To this list, we may soon be adding ADVERTISING.COM for use in connection with a host of online advertising-related services, thanks to the United States Court of Appeals for the Ninth Circuit, which issued its opinion this week in Advertise.com, Inc. v. AOL Advertising, Inc.  Because the appeal only relates to a preliminary injunction, the court’s opinion has not definitively held that ADVERTISING.COM is generic for online advertising services–further litigation may determine that issue.  But the court did make a strong case that, as things stand right now, AOL faces an uphill battle to show that ADVERTISING.COM is not generic for online ad services.  Along the way, the court distinguished AOL’s ADVERTISING.COM domain name from, for instance, STEELBUILDING.COM, which has been held not generic in connection with “computerized on-line retail store services in the field of pre-engineered steel buildings and roofing systems.”

What makes the ADVERTISING.COM case particularly interesting is that, unlike the seven domain names in the above list that did not survive the registration process before the U.S. Trademark Office, AOL actually owns U.S. registrations for its ADVERTISING.COM trademark, albeit in stylized forms.  In the process, AOL actually succeeded in arguing to the Trademark Office that the words “ADVERTISING.COM” were not descriptive (much less generic) for many of the services it offers under the marks.

There are a number of interesting lessons from this case even at its preliminary stage, and perhaps more to come, but the most interesting one can be seen by looking at the larger picture:  the value of a generic domain name.  Even if it cannot be entirely protected from a trademark standpoint, or protected as a trademark when used in connection with the most obvious goods or services, it remains a unique identifier, which, at bottom, is really what trademark protection is all about.

P.S.  To see some of what is at issue in the lawsuit, go check out Advertise.com and compare it to Advertising.com.