The premise of this blog, Duets, suggests a certain harmony results when law and marketing play together. Is the same true for the law and public relations, a discipline that is part marketing and part business management? 

It brings to mind vintage perceptions of lawyers providing counsel as media swarm people exiting a courthouse. Classic Perry Mason, the attorney and client dismiss the reporters with the familiar, “No comment.” 

This simple statement technically says nothing but really says everything. 

With that perspective, some might think that attorneys and public relations practitioners are at odds. The legal point of view: Say as little as possible. The PR recommendation: Communicate openly and frequently with everyone in every possible way.

At the heart of public relations, it’s about building trust through action and communication. What an organization or person does and how much is or isn’t said as well as the sincerity, context and credibility of the messenger all contribute to the perception of truth and reputation.

On one level it’s simple: say what you mean and do what you say. Yet we know it’s far more challenging than that, especially today with an overwhelming number of online and offline connections. 

Today, it’s not just relationships between people, but relationships with brands and with ideas. Amazon’s Kindle has tens of thousands of followers on Twitter and even community initiatives such as www.stopthedrinktax.com have nearly 7,000 fans on Facebook. 

Heck, I have enough trouble communicating and showing my interest and concern for the people I care about without worrying about the followers of my company and its brand on Twitter! Yet, I do – in business, we have to — take these brand relationships seriously and work to nurture trust and mutually beneficial interactions. 

It would be easy to say “no comment” or simply post nothing, yet there is an expectation and obligation to act and communicate. What did commentary by Bernie Madoff or Michael Jackson make you think? How did it impact your perceptions of them, their businesses and industries?

As we build and represent brands, there is an increasing need to protect these brands – legally via trademarks and copyright – and equally important, an increasing need to build brand trust through communication. That’s the potentially beautiful duet that can play when legal and PR counsel work in harmony to comment or not to comment as the situation dictates.

—Rose McKinney, Risdall McKinney Public Relations

twitterrificDownload-Spam Logo-

What does Twitter have in common with Kool-Aid, Mickey Mouse, and Spam? Maybe nothing, at least yet, but I predict that it will soon, unless Twitter retains some talented PR help in a hurry. Why?

The Kool-Aid, Mickey Mouse, and Spam brands all have spawned secondary or alternate and negative non-trademark meanings that have become part of the English language, meanings in each case that lack positive brand associations, to say the least. If Twitter is not careful it will find itself “following” the likes of Kool-Aid, Mickey Mouse, and Spam, and be in the similar undesirable position of tolerating language changes that distract from their brands and favorable brand messages, to be left watching others make generic use of their brand names to communicate a variety of ideas and meanings that are neither flattering nor brand building.

Continue Reading Is Twitter¬Æ “Following” Kool-Aid¬Æ, Mickey Mouse¬Æ, and Spam¬Æ?

Under Consideration’s Brand New Blog has on two recent occasions commented about the trend in using white as the color for product packaging of consumable goods. Wal-Mart was the first to use this color packaging for its private label brand and the European community appears to be following suit. Using a white background has its marketing appeal, but consumers are unlikely to rely on the color white to distinguish between two different consumable goods. Additionally, it is unlikely that the user of a white background will be able to obtain a federal trademark registration for this color. However, product packaging backgrounds can be another way for companies to distinguish their products from their competitors, and it is possible to obtain a federal trademark registration for the product packaging background.

Background designs can be registered as trademarks even if they are to an extent ornamental and aesthetically pleasing. The key is whether a background design creates a commercial impression separate and apart from the other elements that appear on the product packaging. If the background design creates a separate commercial impression, it can be registered as a trademark. In fact, a background design can be inherently distinctive. In other words, consumers can immediately rely on the background design to distinguish between two sources of goods.

Unless business reasons dictate using an ordinary background, why waste an opportunity to connect with your consumer. Therefore, keep in mind that the background design of your product packaging can function as a trademark and help you further distinguish your goods from those of your competitors.

–Dan Kelly, Attorney

Sometimes the world hands you lemons, and sometimes it hands you lemonade . . . or free beer . . . or even free advertising.  What serendipity for the Bud Light, Red Stripe, and Blue Moon brands that the media’s most recent tempest in a teapot has culminated in a “Beer Summit,” and that it is being widely reported that the principals will quaff these three brews while finally solving the nation’s proverbial race relations problems.  (The last clause of that sentence is hyperbole.)

While this occasionally happens–a commercial product being in the right place at the right time in a news cycle–the Internet adds a whole new dimension to the import of appellations like “Beer Summit.”  (And, by the way, it is high time for some new hackneyed appellations in political reporting.  “___ Summit” or “___-gate” are quite tired for being applied to every controversy / scandal / kerfuffle / etc. that touches D.C. politics.)  So, imagine all the Internet searches occurring today for the “beer summit,” and how that may impact an event like Beer Summit or a company like Summit Brewing Company, which, after news results, are generally the first and second hits in Yahoo, Google, and Bing search results for the string “beer summit.”  Interestingly, Summit Brewing’s website is generally the top hit for the search string “summit beer,” so word order is relevant in search strategy.

Cheers!

Although intellectual property lawyers of the Dr. No variety may not like to admit it — I submit that, not all slippery slopes are created equal. While some slippery slope cautions might prevent a few bumps and bruises in traveling along a particular path (e.g., the one on the left below), I suspect far fewer slippery slope cautions actually prevent life-ending falls from perilous cliffs (e.g., the one on the right below), yet other man-made slippery slopes specifically are designed for fun and enjoyment — not danger — and have generated enormous sales over the years (e.g., WHAM-O’s SLIP’N SLIDE brand products).

  

 

 

 

 

 

 

 

 

 

 

So, putting aside Professor Douglas Walton’s teaching that the slippery slope argument is “often treated as a fallacy,” it is worth asking what brand of slippery slope most accurately represents the risk associated with marketers using their brands and trademarks as verbs?

As discussed in Part I of my Just Verb It? series, many marketers love the idea of having their brands embraced as verbs, but many trademark lawyers totally forbid any “brandverbing,” i.e., “mis-using” brands (adjectives) as verbs: “Why? To prevent brand names and trademarks from becoming generic names and part of the public domain for anyone to freely use, even competitors.”

No doubt, genericide — the ultimate fear of using brands as verbs — equals certain trademark death, a horrible result from both marketing and legal perspectives; but, I submit it doesn’t necessarily follow that brandverbing activities automatically result in trademark death or genericide. To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?

Continue Reading Just Verb It? Part III: Testing the “Slippery Slope” of Using Brands as Verbs

— Karen Brennan, Attorney

Now that the Tour de France is over, it looks like the choices in evening television once again consist of several versions of the same reality show.  I can’t complain, the Tour was phenomenal this year and I enjoyed every minute I was able to watch (thank you DVR).

Last week, as the 2009 le Tour de France raged on, the TTAB issued another loss for product configuration marks everywhere, affirming a refusal to register a product configuration mark for bicycle wheels (In re Rolf Dietrich).  The applicant, Rolf Dietrich, described the mark as a specific spoke pattern which created diamond shaped regions between the rim and hub.

The Board concluded the proposed mark was functional and thus unregistrable, noting no amount of 2(f) evidence (acquired distinctiveness) would be sufficient to overcome a functionality refusal.  The applicant’s attempt to draft off of its existing, incontestable, registration for a highly similar design was of no further assistance.  In fact, the Board went so far as to note the applicant’s incontestable registration was subject to cancellation on the ground of functionality at any time.

The Board focused on evidence of utility patents owned by applicant relating to bicycle wheels, which it found to be sufficient to establish a prima facie case that the design was functional.  In summary, it is becoming quite clear that an attempt to register a product configuration covered by a utility patent will likely result in spinning your wheels and will simply die in the mountains.

For a summary of the best Tour moments, see Phil’s Top 5 Most Amazing Tour Moments.

Before the emergence of the Internet, there were two major conventional ways of doing intellectual property consumer surveys — mall intercept surveys and telephone surveys.   Mall intercepts work best for branded, consumer products where there is a visual element to be tested. They are moderately expensive and require some incentive. Telephone interviews are good for brand names, genericness studies or other types of research where the respondent does not need to view a visual. Most telephone research requires no incentives.

The Internet, in theory, combines the best of both worlds. Internet surveys not only permit the asking of verbal questions and recording verbatim answers, they also permit transmission of visual images such as products, labels, logos and packaging. Internet technology also permits sound transmission. Transmission costs are minimal with an e-mail blast of 5,000 names costing about $800 or $160 per thousand. (Typical mall costs are $30-$40 per interview). Unfortunately, there is no telephone book for e-mail addresses, and in order to use this medium you have to hook into a vendor that has large opt-in consumer panel data bases. By using opt-in panels, you will bypass all the SPAM filers and anti-SPAM on-line watchdogs. Moreover, you have an instant, real-time tabulation process.

Continue Reading Internet Surveys — Powerful Yet Perilous

–Sharon Armstrong, Attorney

What has a head but no neck, feet but no legs, a perfectly tipped hat but no arms, is 7’10” tall, and induces glee and cavities in people of all ages? The world’s largest dispenser of Pez, of course! A creation of the founders of the Burlingame Museum of Pez Memorabilia (the “Museum”) in Northern California, the enormous snowman-headed Pez dispenser likely appears to most consumers as no more than the ultimate homage to this legendary candy and dispenser and the place they have achieved in the popular consciousness.

The makers of Pez, however, beg to differ. In late June, Patrafico AG and Pez Candy, Inc., owners of the PEZ trademarks, trade dress and brand, sued the founders of the Museum for trademark infringement and related causes action stemming not only from the founders’ creation and promotion of the Snowman dispenser, but also from the founders’ alleged unauthorized manufacture and sale of unapproved Pez dispensers and related merchandise at the Museum. A copy of the complaint can be viewed here.

The plaintiff’s filing of this suit raises some crucial questions about the nature of well-known trademarks and trademark owners’ desire to see their brands protected through litigation. First, it is possible that the defendants will raise the defense of nominative fair use, which I’ve blogged about before here. In a nutshell, nominative fair use allows Party A to use Party B’s trademark provided that Party A’s use of the trademark is necessary to identify Party B or its goods and services and Party A doesn’t use the mark to suggest that it is endorsed by Party B. Here, the Museum, which has not only operated for over 14 years, but did so for many years under agreement and with the blessing of the plaintiffs, appears to use the PEZ trademarks and trade dress to refer to Pez candy and Pez dispensers only – not to refer to other types of candy, such as Hershey’s Kisses or Laffy Taffy. Though I’ve never visited the Museum, the Museum’s web site includes a disclaimer of affiliation with the plaintiffs and a note that PEZ is a registered trademark of the plaintiffs. All in all, such use would appear at first blush to pass the nominative fair use sniff test.

Continue Reading Sweet Candy or a Bitter Pill?