-Mark Prus, Principal, NameFlash Name Development

When you finally identify a name for your business, product or service, you must conduct proper due diligence to ensure that you have a legal right to use the name. Trademark searches are mandatory and I’d strongly recommend talking to a great trademark attorney. A little upfront time and money can save you a ton of heartache and cash at a later point (if, for example, the name you decide to use is challenged by someone who is already using a similar name).

One of the other things you should do is conduct foreign language checks using native speakers to identify if the name has unfavorable meaning in a foreign language. Even if you do not plan to market in a foreign country, you do not want your name associated with unfavorable meanings. Here are some examples that prove the point:

  • Barf Detergent – In Persian apparently Barf means snow. But can you imagine the conflict in the mind of an English speaker when seeing a detergent called Barf?

  • Vicks – When Vicks was introduced in Germany, somebody forgot that the German pronunciation of “v” is “f” which made their “Vicks” brand name sound like slang for sexual intercourse (the name in German speaking countries is now Wick which translates correctly).
  • Scat Airlines – An airline based in Kazakhstan. Not sure if an English speaker would fly them.

  • Emerdata – This is the reincarnation of Cambridge Analytica. I find great irony in the fact that the name translations in Portuguese and Italian refer to the act of defecation.
  • IKEA – IKEA has a unique naming convention that often leads to translation errors. For example, some product names sounded like sex acts. And in many cases, IKEA names just sound amusing to English speakers:

Perhaps there is an alternative strategy to conducting a disaster check on international translation. What if you actively looked for names that translate well across the major languages of the world? As an example, one of the reasons that Kit Kat is so successful in Japan is the name “Kit Kat” famously translates to “You will surely win.”

“Good Translation” might be an excellent naming strategy!

On a recent happy hour trip to HopCat, a brewpub chain with an incredible beer list of local and regional craft beers, I expected to find a trademark issue or two among the tap handles.  However, instead, I was distracted by a “catsup” bottle (hah) positioned casually next to a bottle of Heinz mustard.

The familiar green and gold border, the white cap, the white background, the shape of the plastic bottle…it reminded me of this previous DuetsBlog post involving a de-branded ketchup bottle.  Private labeling and contract manufacturing has become an increasingly popular means of overcoming barriers to entry, entering new market segments, or accommodating increased demand,  especially for breweries, wineries, and distilleries.

I doubt I’m alone in quickly jumping to the conclusion the HopCat “catsup” was a private labeled version of this and also wondered why the mustard wasn’t similarly branded (other than the lack of appropriate mustard puns):

But looking at the back of the bottle, I was proven wrong just as quickly:  “Manufactured for Hop Cat by Red Gold, LLC.”   However, Red Gold ketchup bottles appear to be sold generally with a yellow cap and a yellow label.  Hmm.

I suppose the shape of the HopCat bottle is closer to Red Gold’s shape, but everything else suggested to me that Heinz was the source behind the brewpub’s ketchup.

In contract manufacturing or private labeling agreements, it’s important to consider the responsibilities of each entity for packaging decisions.   Is the buyer responsible for providing the artwork for approval by the supplier?  Or is the manufacturer responsible for that with the buyer’s approval?  What are the approval conditions if any?  And depending on that decision, which entity is responsible for any liability associated with intellectual property or regulatory claims?  The representations and warranties in the agreement should also appropriately protect the entities – especially the buyer who is ultimately putting the product out into the market.

I just got back from my yearly trip to hang out with creative people and learn about branding and design at FUSE. This year we traveled to the brand capital New York City.

On Monday, I participated in the FUSE Trenzwalk through Chelsea, Greenwich Village and the Meatpacking District in New York City. Earlier this week, you may have seen Steve Baird’s post inspired by this walk, What You Need to Un-Suspend a Trademark.

There were two places in Chelsea Market that caught my eye and have trademark registrations:

  1. KIKKERLAND®, and
  2. FAT WITCH®.

The KIKKERLAND® store sells various products such as personal grooming devices, sports spectacles, massage apparatus, electric lamps, electric light fixtures, chronometric instruments, stationery, furniture, household utensils, kitchen utensils, and briefcases.

The FAT WITCH® brand is associated with brownies, cookbooks and recipe cards. Although the brand name itself might not inspire consumers to come in to consume brownies and become “fat,” the cute design of the witch below does invite people into the store.

Day two of FUSE was devoted to presentations at the DREAM hotel. I attended the presentation entitled “The Augmented Body – Sustainable Fashion Futures for a Connected World,” by Dr. Amanda Parkes. We learned about a company that was using waste from oranges to make “Orange Fiber,” which is a sustainable silk fabric. The company partnered with famous designer Salvatore Ferragamo® for his Capsule Collection.

Adidas is also getting on the sustainability train by selling shoes and swimsuits made from ocean plastic. Specifically, the footwear giant partnered with the non-profit organization Parlay for the Oceans. The organization seeks to raise awareness about the precarious state of the world’s oceans and to work on projects to help protect and conserve the oceans.

ZOA™ was another sustainable fabric discussed in the presentation. The brand features biofabricated leather products made without animals. Modern Meadow filed a trademark application for the ZOA mark in connection with various bioleather products.

Has anyone been involved with the development of sustainable products, or bought any products made from them?

Earlier this month, a California federal judge kept alive a suit brought by the estate of famous jazz musician Thelonious Monk against North Coast Brewing Co. for trademark infringement and infringement of the right of publicity. The dispute centers around North Coast’s popular “Brother Thelonious” Beligan-style abbey ale (beer seems to be on the mind here at DuetsBlog as of late), which features a likeness of Thelonious Monk on its label:

Credit

The estate, managed by Thelonious Monk’s son, Jr., agreed to allow North Coast to use the likeness for selling the beer so long as North Coast agreed to donate some of its profits to the Thelonious Monk Institute of Jazz. North Coast apparently upheld its end of the deal, donating over $1M to the Institute since 2006. Though, North Coast also expanded its use beyond beer, to beer brittle, goblets, hats, apparel, signs (metal, neon, and paper), playing cards, pins, and even soap (made–incredibly–using the beer).

North Coast even registered a trademark on its label design, which “consists of a profile portrait of a gentleman in a red cap, dark glasses, and brown monk’s garb holding a glass of dark beer in one hand and a human skull in the other hand, with a stylized circular black and white piano keyboard behind his head, in an abbey setting.” Sounds like Thelonious Monk, don’t you think? North Coast also has a registered trademark on the name “Brother Thelonious.” A little late to the game, the estate registered a trademark on “Thelonious Monk” this summer.

In 2016, the estate rescinded its permission to use Thelonious Monk’s likeness, and after North Coast refused to stop using the likeness, initiated its lawsuit. The district court judge denied North Coast’s motion to dismiss the case, stating that the factual record underlying the dispute needs to be fleshed out before any of the estate’s claims can be decided. Give it several months to up to a couple years before the court issues a ruling.

The estate’s lawsuit, especially the claim for infringement of the right of publicity, got me thinking about the bases for the right of publicity and the right’s applicability to celebrities who have died–sometimes referred to as “delebs.” Sadly, Thelonious Monk died in 1982. But, like many celebrities, the value of his work and likeness endure after death. Indeed, some celebrities have become bigger in death than they were in life (e.g., Tupac Shakur, Michael Jackson, and Elvis Presley). And beloved local delebs continue to make appearances:

Credit

At first glance, it seems odd that a deceased celebrity (through an estate) would have any right to control the use of likeness after death, let alone profit from it. Indeed, the right of publicity, provided under state law, is largely founded on privacy grounds, protecting the use of one’s identity in commercial advertising given the personal and private interests at stake. After death, those personal privacy interests are no longer compelling. But the right of publicity in many states is also founded on property grounds, in view of the fact that (at least for many celebrities) individuals often invest extensive time, energy, and money in promoting and creating their own personal brand. The thought is that, like other intellectual property rights, one should be able to receive the benefits of that investment (which encourages such investment in the first place). Thus, the right of publicity is based upon both privacy and property interests.

The right to publicity is recognized in over 30 states, but the scope and breadth of the right varies in each state largely because states have differing views on whether the right should be grounded in privacy, property, or both (and if both, to what degree?). Many of these states have a right of publicity statute, but some do not. For example, as I discussed previously, Minnesota does not have a right of publicity statute. In 2016, the Minnesota State Legislature considered the “Personal Rights In Names Can Endure” (“PRINCE”) Act, but never passed the bill. Have no fear, though; previously, in Lake v. Wal-Mart Stores, Inc., the Minnesota Supreme Court recognized the right of publicity based on “individual property” rights and “invasion of privacy,” citing Restatement (Second) of Torts § 652B (1977). 582 N.W.2d 231 (Minn. 1998).

Interestingly, because the right of publicity is a creature of state law, where a person was domiciled (residing) at the time of death controls what kind of right of publicity that person’s estate has after death. Estates for celebrities who were domiciled in Oklahoma are the most fortunate and can enforce the right of publicity for up to 100 years after death. But woe be upon an estate in Wisconsin, which bases its right of publicity on privacy interests and only allows living persons to enforce the right. The amount of time a right of publicity can be enforced after death varies dramatically state-to-state. For a helpful run-down of most states, see this useful overview.

How about in Minnesota? The PRINCE Act would have allowed an estate to enforce a right of publicity for up to 100 years, like Oklahoma’s statute. Under the common law, it remains unclear how long the right persists–though, the U.S. District Court for the District of Minnesota held (ironically) in Paisely Park Enterprises, Inc. v. Boxill, that the right survives death. See 2017 WL 4857945 (D. Minn. Oct. 26, 2017) (Wright, J.). How long thereafter? The Restatement (Second) of Torts doesn’t say.

The most basic takeaway from the current state of the law is that celebrities with likenesses that may have great value in commercial use should consider domiciling in states that have favorable post-mortem rights of publicity. Thelonious Monk was domiciled in New Jersey when he died, and the New Jersey right of publicity extends no longer than 50 years after death. So the estate has about 14 more years during which it can enforce the right, which Thelonious Monk may not have ever exercised in life.

By the way, if you’re interested in trying out the Brother Thelonious, it is available in two Twin Cities locations: First, and most appropriately, the Dakota Jazz Club & Rest (Minneapolis), and also at Hodges Bend (St. Paul).

It is frequently becoming more and more difficult to remember all the topics we’ve covered here over the last — almost — nine years. A recent Snickers end cap display jogged my memory:

Turns out, eight months into this little adventure we call DuetsBlog, I wrote a blog post called Delicious Trademarks: Candy Bar Cross-Section Trademarks? Then, a year later I wrote this one.

My only friendly amendment to the above point of sale end cap convenience store display is to swap the ™ notice for the coveted (or not so, under certain circumstances) ® registration symbol.

Wow, I have been asleep at the switch on this topic, my sincere apologies dear readers. Nearly a year after my second post on this topic, Mars filed an application to register this trademark:

After a couple rounds of descriptiveness office actions, Mars was able to persuade the Trademark Office that the claimed non-verbal candy bar depiction had acquired distinctiveness.

But, that wasn’t the end of the story, because as is often the case when unusual trademark protection is sought, a direct competitor came knocking, in this case, Hershey Chocolate opposed.

Our friend Marty Schwimmer over at the Trademark Blog was johnny-on-the-spot back in 2013 as Hershey opposed the day before Halloween, while I was distracted with this cheesy topic.

The functionality opposition continued for roughly three years until Hershey was able to extract some pretty sweet concessions from Mars, as revealed in this Consented Withdrawal of Opposition Without Prejudice Contingent Upon Amendment of Application.

So, after a little interpretation and modification by the Board, the registration issued with these express limitations:

“The mark consists of a cross-section of a candy bar showing layers within the candy, namely, a middle light brown layer containing several tan-colored peanut shapes and a bottom tan layer, all surrounded by a brown layer. The mark depicts a distinctive two-dimensional cross-sectional view of a candy bar.”

“No claim is made to the exclusive right to use the following apart from the mark as shown: THE SELECTION OF CANDY BAR INGREDIENTS DEPICTED IN THE MARK OR TO THE CONFIGURATION OF A CANDY BAR CONTAINING THOSE INGREDIENTS, EXCEPT AS DEPICTED IN THE APPLIED-FOR MARK.”

Now, there’s a mouthful. Suddenly, the actual issued trademark registration, doesn’t seem all that non-traditional, non-verbal yes, but clearly a two dimensional slice of, let’s say, non-configuration.

Given that, would you be speechless explaining to a client (anyone other than Hershey) what it can and can’t do in advertising food looking something like that when broken in half?

Another question, why doesn’t the end cap display of the cross-section match the drawing of the registered mark? For what it’s worth, I’m more tempted by the end cap than the registration.

Last question, what about Mars’ representation that the claimed mark “always appears in exactly the same manner when used by Applicant.” Maybe it was true when made, don’t know for sure.

To me, one of the most exciting aspects of intellectual property law is when patent law and trademark law intersect in product or packaging design.  Last week, I had the honor of speaking to a graduate product design class at the University of Minnesota’s School of Design, where I discussed the valuable strategy of having a novel design that can translate into forming trademark rights in a distinctive look and feel of the product that allows consumers to instantly associate the look of the product with a brand.

One of the best Instagram accounts for seeing copycat design is @Diet_Prada, and they recently posted quite a gem.  (H/T to my sister for alerting me to this one.)

On the left-hand side is packaging for cosmetics sold by Pat McGrath Labs, a high-end cosmetic brand from one of the most influential makeup artists in the world.  Pat McGrath’s iconic packaging – putting the $100-ish products in shiny sealed foil pouches filled with sequins – has gained significant attention and notoriety in the fashion world.  There are even blog posts about what to do with the sequins.

On the right-hand side is packaging for some ornaments with $20 mini perfumes by Victoria’s Secret for this season.  Does it look familiar?

 

“They took a pouch, and put some sequins in it, and packaged some beauty products in it.  So what?”  Well, I think think the copying goes even beyond that.  The choice of the color palette.  The positioning of the label on the package.  Accidental?  Perhaps but seems unlikely.

So how can a company protect its thoughtfully designed packaging from being ripped off?  First, try to seek design patent protection or even utility patent protection, if there’s some functional aspect to the packaging and not purely ornamental.   Then craft an appropriate marketing / PR strategy draw consumer attention to the packaging so that you could argue that consumers associate that packaging with your company.   Also, pay attention to your agreements with your packaging suppliers and, if you are asking them to do something unique and to your particular specifications, ensure that there’s language in the agreements to protect you in the event your supplier makes similar packaging for others.

Kim Kardashian West’s (“Kardashian’s”) company Kimisaprincess, Inc. won its motion to transfer a pending case against the company from Illinois to California. Danish makeup artist Kirsten Kjaer Weis (“KKW”) sued Kimisaprincess in Illinois alleging claims of trademark infringement, false designation of origin and unfair competition against Kardashian’s company.

Kim Kardashian and her family are no strangers to Duets Blog or the Courts. See Kardashian/Jenner TrademarksKardashians Caught Without Makeup, But Not The Way You’d Expect, and Keeping Up With The Kardashians.

Danish makeup artist KKW sells and distributes her products with a stylized KW brand or with her full name through fancy retailers such as Barney’s. In contrast, Kardashian’s company sells products in less expensive superstores such as Target, CVS and online. Kimisaprincess sells a brand of makeup called “KKW Beauty” after her initials that was released in June 2017. The products are sold exclusively online.

Makeup artist KKW alleges that she and Kardashian’s company are direct competitors. Because of Kardashian’s fame and celebrity, it is likely consumers will mistakenly believe KKW’s products—despite its prior rights to the trademark—is associated with Kardashian. This will damage KKW and prevent KKW from controlling the reputation and goodwill that KKW has established for her products.

Kardashian’s company brought a motion to transfer the pending case to California. Her company argued that that there is better access to documents and witnesses in California where Kimisaprincess and Kardashian herself are both located. In addition, third parties such as Kardashian’s momanger (as she’s known by the press), Kris Jenner and the company that designed Kardashian’s KKW Beauty products are also in California. Plaintiff lives in New York. There are not people or documents at issue located in Illinois.

In opposing the motion, Plaintiff Danish makeup artist KKW argued that Illinois was an appropriate venue, because actual confusion between her products and the KKW Beauty products had occurred in Illinois during a survey conducted about the products. The Court found this argument to be unpersuasive, because the KKW Beauty products are sold nationwide, so confusion would also occur in California.

The Court noted that there would be a marginal increase in cost to go to California, but it does not create a cost where none was. Plaintiff KKW would have to travel to Illinois too.

The showdown between the Danish makeup artist (KKW) and Kardashian’s Kimisaprincess will take place in California. Do you think the dispute will end up on the “Keeping up with the Kardashians” reality show?

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?

For the past couple years, General Mills has battled to register a yellow color mark in connection with its Cheerios® breakfast cereal.  More specifically, back in 2015, General Mills applied to register (Serial No. 86757390) the mark shown below, described as “the color yellow appearing as the predominant uniform background color on product packaging for the goods,” in connection with the goods “toroidal-shaped, oat-based breakfast cereal.”  (For those wondering, “toroidal-shaped” basically means doughnut-shaped.)  Below is the drawing of the mark:

The use of colors — even a single color alone — on a product or its packaging may be subject to trademark protection and federal registration. For example, in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995), the Court held that the greenish-gold color of dry cleaning press pads was protectable as a trademark. As another example, in Christian Louboutin, S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012), the Second Circuit recognized that the use of red lacquered outsoles on shoes is a protectable trademark (provided that such protection is limited to shoes in which there is contrast between the red outsole and the adjoining shoe, and does not extend to monochromatic red shoes).

However, there are relatively steep requirements to obtain a trademark registration for a color mark. To obtain a federal registration for a color mark on the Principal Register, it must be shown that the mark has acquired distinctiveness (also referred to as secondary meaning). This is so because the U.S. Supreme Court has held that color marks can never be inherently distinctive as a source indicator, and therefore the applicant must submit evidence establishing acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 211-212 (2000) (citing Qualitex, 34 USPQ2d at 1162-63); see TMEP § 1202.05(a). Also, as with other types of marks, registration for a color mark will be refused if the mark is functional, such as where there is a utilitarian advantage (e.g., yellow or orange for safety signs), or where a certain color is more economical or competitively advantageous (e.g., where a certain color is a natural by-product of manufacturing, and using other colors would be more expensive). See TMEP § 1202.05(b).

A couple weeks ago, General Mills received some bad news from the Trademark Trial and Appeal Board (TTAB), which affirmed a refusal to register the applied-for yellow color mark, shown above. In re General Mills IP Holdings II, LLC, Serial No. 86757390 (TTAB Aug. 22, 2017) (precedential). The Board recognized the extensive body of evidence submitted by General Mills, showing the company’s longtime, expansive efforts to create an association between the yellow product packaging and the Cheerios® brand cereal. See id., slip op. at 5-9. For example, numerous print and television advertisements focused on the yellow product packaging, or specifically referred to the phrase the “yellow box” or the “big yellow box.” Id. at 7. However, the Board emphasized that “no matter how hard a company attempts to make an inherently nondistinctive word or symbol serve as a unique source identifier, it is proof of results—that consumers so perceive the purported mark—that is the touchstone of our inquiry into acquired distinctiveness.” Id. at 8.

In the end, the primary basis for the Examining Attorney’s refusal, and the TTAB’s affirmance of that refusal, was the lack of substantially exclusive use of the color yellow by General Mills. Id. at 11-21. The record established that several competitors offered the same goods–toroidal-shaped, oat-based cereals–in yellow, rectangular packaging of similar proportions, such as the brands Trader Joe’s, Meijer, Wegmans, Nature’s Path, One Degree, Ralston, and Barbara’s. See below the product packaging for those cereals:

The TTAB reasoned that “Applicant is not alone in offering oat-based cereal, or even toroidal-shaped, oat-based cereal, in a yellow package,” and that “[t]he presence of products of this type in the marketplace interferes with the development among relevant customers of a perception that the color yellow on packaging indicates that Applicant is the source of the goods (or that there is any single source of such goods).” Id. at 16. The TTAB also referred to numerous other yellow boxes for various types of oat-based cereals that, even if not “toroidal-shaped,” which further detracted from any public perception of yellow packaging as a source-indicator for Applicant, as cereal manufacturers commonly offer many different brands and varieties of cereals side-by-side in stores. Id. at 17-18.

Therefore, the TTAB concluded that “the number and nature of third-party cereal products in yellow packaging in the marketplace [is] sufficient to convince us that consumers do not perceive the color yellow as having source-indicating significance for [Applicant’s goods].” Id. at 19.

What do you think about this decision? Separate and apart from the name “CHEERIOS” itself, do you associate predominantly yellow product packaging with General Mills and its (doughnut-shaped, oat-based) cereal?

A few months ago I posted about a trademark infringement lawsuit filed by Ornua, seller of Kerrygold® Pure Irish Butter, against Defendants Old World Creamery and Eurogold USA, who briefly sold Irish butter under the mark Irishgold. The court granted Ornua’s motion for a temporary restraining order (TRO), concluding that Ornua had a reasonable likelihood of success on its trademark infringement claims, and that Ornua would suffer irreparable harm based on Defendants’ use of the Irishgold mark.

I concluded my post by suggesting that the grant of the TRO may push the parties to settlement. When a TRO is granted, it sends a strong signal to the parties about how the court may rule down the road at the summary judgment stage, because a key factor in granting the TRO is the court’s determination that the plaintiff has a “reasonable likelihood of success on the merits.”

Following the grant of the TRO, the parties indeed shifted to settlement talks and a mediation. Last month, the parties executed a settlement agreement and filed a stipulated motion for a consent judgment and permanent injunction, which was granted by the court.

Unsurprisingly, several terms of consent judgment and injunction focus on the IRISHGOLD mark, and generally require Defendants to cease use of that mark in connection with the sale of butter and other dairy products, and to expressly abandon the trademark application for IRISHGOLD. However, it is interesting that the consent judgment allows Defendants to continue using the mark “EURO GOLD” for butter, and to maintain the trademark application for EUROGOLD, provided that an amendment is entered with a space or hyphen (EURO GOLD or EURO-GOLD), and provided that the identification of goods “butter and butter blends” is amended to add the exclusionary language “but excluding Irish butter and Irish butter blends.”

I wonder if there is any wiggle room here for the Defendants to the extent there is ambiguity in the meaning of “Irish butter,” as suggested in my previous post. At one end, it seems clear that imported butter that is manufactured, graded and packaged in Ireland, from Irish cow’s milk, is “Irish butter.” But what about butter that is manufactured, graded and packaged entirely within the U.S., but includes milk from Ireland as an ingredient–which is essentially how the Defendants’ butter is made. What do you think?