–Dan Kelly, Attorney

Well, trademark types would do well to become familiar with SongLyrics.com, a searchable website that can be used to discover which songs contain brand or trademark references of interest. Why might they be of interest? Could be helpful evidence to show unsolicited media attention (assuming it isn’t paid placement) in building a showing of trademark acquired distinctiveness. Whether paid for or not, the brand mentions could be helpful in establishing trademark strength or perhaps even fame. There might even be value in helping build a case of acquired distinctiveness for a non-traditional mark, like a single color. The examples that come to mind here are a few country music references to green tractors, and presumably John Deere, without actually saying so (Jason Aldeen’s “Big Green Tractor” and Jason Michael Carroll’s “the tractor is green” reference in “Where I’m From“).

Am I Right is a website that has a listing of songs with brand mentions that can be searched by artist, and it reveals that rapper 50 Cent, appears to enjoy building brand references into his lyrics.

writing credits

I fully recognize some say the country music of today is not “real” country music.

All About Jazz has an interesting thread from a couple of years ago commenting on “product placement” in music lyrics.

Although product placement has been around for decades, the application in the music business appears to be more recent. A few years ago Business Week wrote about paid brand placements in Hip Hop music, and about a year ago, Wired reported on the practice of “brand dropping” (apparently a phrase coined by The Kluger Agency, an entertainment advertising firm), basically brand owners paying for placement of brand names in music lyrics. It is unclear how many lyrical brand references are actually paid for by the brand owner. Visual product placements apparently also occur in music videos, according to Product Placement News, and apparently are not uncommon.

File:Nashville panorama Kaldari 01.jpg

For the record, I love music, lots of different artists and musical styles: Bob Dylan to Aerosmith, Otis Redding to Elvis, Montgomery Gentry to Santana, Climax Blues Band to Bill Withers, Jack Johnson to Jamey Johnson, Michael Jackson to Alan Jackson, James Taylor to Taylor Swift, Pink Floyd to Wallflowers, Pat Benatar to Pat Green, Glen Campbell to Stevie Wonder, Beatles to Terri Clark, Cat Stevens to B52’s, Cranberries to Trace Adkins, Eagles to Nickelback, Supertramp to Troggs, Dido to Donovan, Huey Lewis to Heidi Newfield, Madonna to Boz Scaggs, The Who to Keith Urban, Kellie Pickler to U2, War to Bangles, Lorie Line to Bob Seger, Frank Sinatra to Spyro Gyra, Men at Work to Fourplay, Rolling Stones to Tracy Chapman, Enya to Ray Charles, Police to Queen, Bee Gees to Kenny G, Sade to Steely Dan, Sugarland to Sugarloaf, Barry White to Howard Jones, George Michael to Counting Crows, among many, many, many others, and even Johann Pachelbel’s Canon in D Major, by almost any orchestra.

OK, for any armchair musical psychiatrists out there, keep your thoughts to yourself, to the extent you can discern any common thread through each and every one of the above artists (besides my personal appreciation for each). Recognizing musical taste is a rather personal thing, I simply like to think "I know it when I hear it," it’s kind of like my auditory version of former U.S. Supreme Court Justice Potter Stewart’s famous visual test of obscenity, where he asserted "I know it when I see it."

Anyway, several years ago no country singers would have made the list above. In fact, I used to say that country was the only kind of music I couldn’t enjoy, and I grew up in Iowa City, Iowa, smack dab in the middle of the heartland, of all places. Nowadays, rap and hip hop are probably the musical genres I can’t seem to appreciate, unless the tune has a little twang or some y’all to it, e.g., Colt Ford style. One of the things that has drawn me to enjoying country music in recent years is the richness of multiple relevant brand mentions by so many different artists within the genre. Obviously, there is more too it than that for me, since I haven’t been able to embrace hip hop, a genre with clearly way over-the-top brand references.

Now, being a trademark type, it didn’t go unnoticed by me that much earlier artists in other genres have included brand mentions in their music lyrics from time to time (e.g., Elton John’s "Chevy" reference in "Crocodile Rock"; Don Henly’s "Wayfarers" reference in "Boys of Summer"; The Beatles’ "Coca-Cola" reference in "Come Together"; The Beach Boys’ "T-Bird" reference in "Fun, Fun, Fun"; and Jim Croce’s "Continental" and "El Dorado" references in "Bad Bad Leroy Brown"), so the idea of including brands within music lyrics is not new and may not even have originated in the country music genre, but it seems to me that the writers and artists in Nashville have cranked the brand mentions up a couple of notches in recent years, to my great pleasure and enjoyment (assuming these brand mentions aren’t paid placements).

Take, for example, the lyrics for Eric Church’s "Love Your Love the Most," with a total of six brand references: three in one verse, and two in one line (Faulkner, Redman, Nascar, George Strait, Jack D, and Coke). By the way, do you think it is safe to assume that Mr. Church’s "Jack D" reference is to Jack Daniels, and not some other lesser known "Jack D" whiskey like Jack Davis, or perhaps some obscure reference to Jack’d Up Java?

Seriously, examples of other country music artists employing multiple brand mentions in song lyrics include Jason Michael Carroll’s three brand mentions in "Where I’m From" (Armani, Ford, and indirectly John Deere (green tractor reference), Craig Morgan’s three brand mentions in "International Harvester" (International Harvester, 4-H, and FFA), Rodney Atkins’ three brand mentions in "Watching You" (Happy Meal, Scooby-Doo, and Superman), and Craig Morgan’s six brand mentions in "Redneck Yacht Club" (Johnson, Mercury, Evinrude, Astroturf, Bass Tracker, and Bayliner).

What does all this mean for trademark types, marketers, and brand owners? You’ll have to stay tuned for Part II in this series on Brand Mentions in Music Lyrics.

In the meantime, any thoughts on what song contains the most different brand references, can you top six? 

–Dan Kelly, Attorney

This reminder is a bit late for new Christmas-season consumer products, but it bears repeating year round, as companies contemplate new products:  buy domain names associated with a new product before announcing the new product.  This seems like an obvious thing to do, but I regularly read stories where companies fail to perform this step of a new product launch, then have to go and spend thousands of dollars to secure related domain names that could have been purchased for perhaps $10 per year prior to launch.

The latest lesson comes from the otherwise savvy Apple Inc., who just won an uncontested UDRP arbitration on the domain name “ipodnano.com.”  As flagged by Domain Name Wire, Fusion Media Ltd. registered ipodnano.com two days before Apple announced the product.  In order to win a UDRP arbitration, the complainant must show that the respondent both registered and used the domain name in bad faith.  Having registered this particular domain name a mere two days before the product launch suggests that Fusion Media either (1) made a fortuitous guess, or (2) heard advanced news about the new product.  Even if Fusion Media’s guess on the “nano” part of the name was completely in good faith, the “ipod” part of the name was not.  Fusion Media did not respond to the UDRP arbitration complaint, so we may never know, but it is interesting to note that Apple apparently only asserted its trademark rights in IPOD in the arbitration.  (And, as I think of it, maybe Apple isn’t so savvy . . .)

To borrow a phrase from Steve Baird, other examples of this sort of thing can be found here, here, and here.

If you’ve been paying attention to the trademark front, you’ve probably heard that Oprah and Mutual of Omaha recently settled a small skirmish over the use of "aha moment."  The skirmish was apparently ignited by Mutual of Omaha’s attempt to register "Official Sponsor of the Aha Moment."  According to Oprah, she made the phrase famous when using it on her show to describe "flashes of understanding" she has with the guests on her show.

My first question, directed to Ms. Winfrey:  Are you kidding me?  While I’m no etymologist, I’m willing to bet that "aha moment" originated before Oprah let it slip during one of her shows, which didn’t start airing until 1986.  As we all know (or should know), Aha was already pretty popular by no later than 1985.  (FYI – That last hyperlink was tongue-in-cheek.) 

My second, more serious question is directed to both:  How did you value your decision to commit resources to this mark which you are both using in an admittedly descriptive sense?  (For you non-trademark attorneys out there, "descriptive" marks cannot function as trademarks unless and until they acquire something called "secondary meaning," which generally requires five years of exclusive use).    Given that this dispute was relatively short-lived, as far as lawsuits go, I’m guessing both sides felt it better to walk away from this before it got out of hand.

In any event, if I had to pick  a side in this dispute, I’d go with Mutual of Omaha.  When compared to Oprah, their use of "Aha moment" seemed much more like a legitimate branding strategy and much less like a haphazard effort to stockpile words and phrases.  "Official Sponsor of the Aha Moment" is cleverly suggestive of them being there to help when you reach a pivotal point in your life.  They also apparently went on a promotional tour with the phrase.  God forbid I draw the ire of the Oprah machine, but it looks like all she did was lazily tag some interview snippets. 

— Karen Brennan, Attorney

While browsing through a toy store recently, I noticed what appears to be a trend in branding this holiday season – reintroducing classic or “nostalgic” toys.   It is very hard for me to accept that the toys I played with as a child could be considered “nostalgic,” but upon first sight of the Chatter Phone™, my childhood was calling.

The beauty of these toys is in their simplicity.  They require imagination; as a toy should, but often doesn’t today.  Another great thing is that the toys and packaging are identical to the originals.  This is interesting from a branding and trademark standpoint in that the product, product packaging and stylized trademarks have been modernized over the years, only to return to the original version.   Some great examples include:

Fisher Price® Chatter Phone™ (with rotary dial):

 Fisher Price Classic Pull Toy: Chatter Telephone

Snoop n Sniff™, first introduced in 1938 (please note – this one is well before my time):

 Fisher Price Classic Pull Toy: Snoop n' Sniff

The Classic Slinky® in a retro box:

Classic Slinky in Retro Box

The Classic Etch A Sketch®:

Classic Etch A Sketch - Ohio Art - Toys"R"Us

For some fun reading on other beloved brands and trademarks, check out the Brandland USA blog – “home of America’s best-loved legacy brands.”

We all would agree that “As Seen on TV” is one of the great brands of all time. The brilliant marketeers behind it recognized the extraordinary power of television – people believe as true what they see on TV.

Why that is I’m sure has been the subject of enumerable studies; after all it defines who we are as consumers and sets the stage for a marketplace where the phrase “targeted consumer” takes on real meaning. Between infomercials laden with celebrity endorsement, a tried and (sometimes) true tactic for moving people closer to their wallets coupled with compelling “just like my neighbor” testimonials, and home shopping networks with live celebrities and testimonials whose “it has to be true” quality rings true for millions of people, consumers are drawn to purchase like moths to a light.

The online world has taken this phenomenon and cranked it up a notch. The more modern version of “As Seen on TV”, its sister brand “As Seen on the Internet” – is an even more powerful lure. It is extraordinary how so many people believe that the “default” for the Internet is Truth, as if there were a mysterious group of censors and law enforcement officials who were reading everything found on the Internet to ensure that anything false or fraudulent automatically was removed. If only that were so.

Social networking has taken this propensity to believe anything electronically delivered to an even higher level. People tend to believe as true what others in their electronic neighborhoods say. This tends to be the case whatever the form of visual channel, from “expert” blogs in About.com, to the thousands of pseudo-news blogs, closed social environments like Facebook or MySpace, or in some form of IM (Include Twitter here). The stories of fraudulent promotion on Twitter already are legion. Add to this the hundreds, perhaps thousands of for-hire bloggers who will supply testimonials for a fee, and the potential for online, “As Seen on the Internet” consumer deception increases dramatically.

It was inevitable that at some point the FTC would have to step in. The Federal Trade Commission historically has taken consumer fraud seriously, but the massive amounts of online fraud, ranging from paid for false testimonials to the most severe forms of identity theft , have created a new vigor in that agency.

On December 1, 2009, new Federal Trade Commission’s Guides Concerning the Use of Endorsements and Testimonials in Advertising (the “Guides”), with heightened requirements for bloggers to disclose affiliations with sponsors of those endorsements, go into effect.  See FTC Press Release dated October 5, 2009, here.  The text of the Guides, 16 CFR Part 235, is available, here.  Although these Guides are advisory in nature and do not expand the scope of liability under Section 5, they are intended to provide guidance as to how the FTC would apply governing law to various fact patterns.

Continue Reading Let’s Play “Truth or Consequences”: The New FTC Guides for Endorsements & Testimonials Bring Truth a Little Bit Closer

Today, the U.S. Supreme Court declined to hear the requested appeal of Harjo v. Pro-Football, Inc., the nearly two-decade old trademark case seeking cancellation of the U.S. Trademark Registrations owned by the NFL franchise in the Nation’s Capitol. In doing so, the highest Court in the land, has permitted the laches ruling to stand. Basically, permitting dismissal of the action given a perceived "unreasonable delay" by the Native American Petitioners in bringing the trademark challenge, despite clear language in the Trademark Act permitting such challenges outside the typical five year statute of limitations, and specifically indicating they can be filed "at any time."

My prior involvement in filing the case back in 1992, the victory we all enjoyed in 1999, and my admittedly rather critical coverage of the dismissal of this historic and ground-breaking case may be found here (9/17/09) and here (May 21, 2009).

Although many ironies may be highlighted from this odd conclusion to the Harjo case, certainly one of the most striking ironies is that it took far longer for this case to wind its way through our legal system than the accused delay by Mateo Romero, the youngest of the original Native American Petitioners, led by Suzan Shown Harjo.

Be that as it may, the torch has been passed to a brand new generation of Native American Petitioners, eager to have the case decided on the merits. The "new" case filed by Amanda Blackhorse and others, more than three years ago, was promptly suspended, pending the final outcome in the Harjo case. Now that the Harjo case has concluded, the Blackhorse case will proceed before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office, the same admininstrative body that found in favor of Harjo’s disparagement claim in 1999.

Moreover, the TTAB appears to have read the news accounts and just today issued an order, indicating that if the parties to the Blackhorse proceeding don’t advise it of the status of the Harjo case within thirty days, it will automatically resume the Blackhorse proceeding and issue a new scheduling order to move the case forward, so stay tuned.

OK, here is my prediction. Some day, I don’t know when, justice will prevail, and some talented branding guru will make a tidy sum re-naming and re-branding this offensive NFL franchise name that could have and should have been re-named long ago.

Gift Chocolates on any Occassion - Pack of 24 - Snickers Crispy,Crunchy Choclates

A couple of months ago I saw in a convenience store a large Snickers point-of-sale floor-display depicting a prominent and attention-getting cross-section of a Snickers candy bar. Given Mars’ apparent interest in owning and creating non-traditional trademark rights surrounding the Snickers brand (revisit Dan’s post from earlier this year), it made me wonder whether Mars might view (and want consumers to view) the cross-section of the famous Snickers candy bar as a trademark too. After all, trademarks are one form of intellectual property that can last forever, so long as they continue to be used in commerce. In case you’re wondering, I couldn’t find any indication that Mars has sought to register any candy bar cross-sections as trademarks.

Now, keeping in mind, to be a non-traditional trademark, the symbol or device must (a) identify the goods, (b) distinguish the goods from those of others, and (c) indicate the source of the goods, there appears to be (at least) some potential for treating candy bar cross-sections as trademarks, provided the cross-sections actually are used as trademarks in commerce. In other words, it’s not enough that the bars could be sliced to view their otherwise purely internal cross-sections; depictions of the cross-sections would have to appear on packaging or at least point-of-sale materials (advertising alone won’t cut it).

So, to satisfy a court’s hunger for the "use in commerce" requirement, and if depicting the candy bar cross-section on packaging leads to a creative buzz-kill, then a prominent cross-section on point-of-sale displays should suffice. Having said that, given the non-traditional nature of a cross-sectional trademark, perhaps some "look-for" advertising might be just what the candy man ordered to help create the cross-section as a delicious new non-traditional trademark. The Candyblog certainly enjoys showing cross-sections of candy bars in discussing the pros and cons of the various goodies they review.

What about functionality, you ask? Yes, if the depiction of the cross-section is determined to be functional, then it can never serve or be protected as a trademark. What do you think, is it functional? While the taste of the candy bar is clearly functional, the appearance of the cross-section is far less clearly functional. For example, presumably taste would remain unchanged so long as the ingredients remain constant, even with multiple variations on the internal configuration and layering of those ingredients.

There are actually some on-line quizzes you can take to test your visual sweet tooth skills, on Slashfood, here, and The Science Museum of Minnesota’s Thinking Fountain, here. Some are easier than others. Now, to the extent consumers are able to "name" the candy bar associated with the shown cross-section, does that help satisfy all three trademark elements or only the first two? And, to avoid the leading nature of the question (as criticized in a U.K. trademark opposition brought against Mars involving candy bar appearance) would it make sense to first ask respondents whether they are able to determine who put out the candy bar in question by only seeing its cross-section?

On a related note, Mars is currently soliciting video content "starring" Snickers, so perhaps some creative type will accept the assignment, and in the process, author some powerful "look-for" advertising to help Mars acquire and build non-traditional trademark rights in the Snickers cross-section. If I were to accept the assignment, my submission would be to depict nothing but the cross-section of a Snickers candy bar within the non-traditional federally-registered parallelogram shape, but then, I’m a trademark type with only limited creative abilities.

So, can you identify a Snickers bar and distinguish it from others by the cross-section alone?

Do you believe consumers perceive the cross-section as a trademark pointing uniquely to one single brand?

–Dan Kelly, Attorney

As we hit the ides of November, we are nearing the proverbial calm before the storm of the holidays. What you probably do not know is that we are but two, short days away from a little-known holiday before the Holidays, one that celebrates the preparation for the Holidays. This, of course, could only be National Bundt Day.

The first National Bundt Day was declared in 2006, the 60th Anniversary of the founding of the company that is the source of the Bundt® pan: Nordic Ware. This family-owned company, legally incorporated as Northland Aluminum Products, Inc., is located on the outskirts of our own Minneapolis, Minnesota, and specializes in aluminum and other cookware. Nordic Ware has sold more than 60 million Bundt® pans, estimated to be enough to be in two out of three U.S. households. According to Nordic Ware, the word BUNDT, a coined term and registered trademark for cake pans, is derived from the German word “bund,” which means “a gathering of people.” Adding to the uniqueness of Nordic Ware, the company still manufactures in the United States (in Minneapolis), and openly states, “in the marketplace struggle between price and quality, quality wins every time.”  Amen.

Although Nordic Ware makes Bundt® pans in numerous shapes and sizes, and has even registered the shape of one of its unique pans as a trademark, it doesn’t appear that Nordic Ware has sought to register its “original” shape Bundt® pan as a trademark, but it probably could:

Indeed, the Bundt is iconic and enjoyed by peoples of all cultures and ethnicities.

For a brief third-party history of the Bundt® pan and a review of Bundt buying and baking, click here.

Happy baking!

Viking fans will recall the famous Purple People Eaters from the late 1960s through the late 1970s. The nickname arose for the defensive line of the Vikings from their purple jerseys and the popular Sheb Wooley song bearing that name. Although they went to four Super Bowls (unfortunately, not taking home a Super Bowl ring), the Purple People Eaters did not receive the astronomical, multi-million dollar, contracts received by the Pro Bowl players today. Accordingly, the retired players rely upon the use of their names, images, and likenesses on paraphernalia, sports bars, and other businesses to make money.

 

To protect their valuable trademarks in their names, images and likenesses, Purple People Eater Jim Marshall, along with five other retired National Football League (“NFL”) players, filed a class action lawsuit against the NFL to recover for their injuries as a result of the NFL’s unauthorized use of their identities to promote the NFL, sell NFL-related products and otherwise generate revenue for the NFL.  They have brought claims for false endorsement under the Lanham Act and various state law claims. The lawsuit was filed in the United States District Court for the District of Minnesota.

Their Amended Complaint alleges that “by commercializing the names, images and likenesses of its players, both active and retired, the NFL has become one of the largest entertainment conglomerates on the planet, raking in an estimated $6.9 billion in 2008 alone.” In contrast, the “now-retired NFL players, as a group, suffer severe physical maladies and disabilities as a result of the sacrifices they made to make the NFL what it is today.”  One example identified in the Amended Complaint was that safety Toby Wright sought to use his name, likeness and identity as an NFL player to promote two businesses, one a sports bar and the other a training facility. In response, the NFL informed him that he would have to pay the NFL $100,000 to use his own identity. Because he did not have the funds, the safety was effectively “blocked” from using his own identity. 

Only time will tell if Minnesota Supreme Court Justice Alan Page, who is also a Purple People Eater, will join the class action and whether the Purple People Eater Jim Marshall and the other retired players can beat the NFL off the football field.