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It’s been a little while since the last example we’ve shared showing a brand turning its face, or a blind eye, on age-old rigid trademark advice, counseling against using a brand name as a verb.

Given the more common trend of many alcoholic beverage brands focusing attention and their messaging on drinking responsibly, MillerCoors has made a surprising choice with Hamm It Up!

While we’re all for encouraging brand owners to carefully explore the true risk of genericide from verbing their brand name, encouraging drinkers to be “ridiculous or over the top,” is over the top.

We get it, Hamm’s is going gangbusters as an economy beer brand, but there is a way to verb an alcohol brand more gracefully, so I’m left wondering when MillerCoors will, let’s say, Hang it Up?

UPDATE: In case you’re wondering, the microscopic text in the lower right corner of the billboard reads like a disclaimer: “ENJOY IN MODERATION.” How’s that for a messaging mixed drink?

Earlier this year, we contemplated a suitable, accurate, and efficient generic name for the service category created by the highly-disruptive Uber brand: App-Based Ride Service.

A visit to Chicago this past weekend, left me thinking that Ride-Share Service or Ride Sharing are suitable alternatives, that appear to be gaining some traction, as seen here:

RideSharePickUpSign

The sign appears to be designed by the hotel to steer drivers of these kinds of vehicles away from the apparently more-highly preferred and more traditional incoming taxi lane.

Especially interesting to me is that the hotel apparently opted to avoid a generic-looking informational sign with no brand names or logos, like the one at the Minneapolis airport:

App-BasedRideSign

Do you think the hotel knows that using more of another’s trademark than is necessary to fairly identify another’s brand disqualifies the user of the nominative fair use defense?

Conventional wisdom has been that using the visual style and/or logo of another brand is, in fact, more than needed to fairly communicate and refer to the brand by name only.

Does the sign above showing the Uber and Lyft logos suggest that conventional wisdom is eroding, perhaps indicating that a recognizable brand symbol is now nominative fair game?

Or, does using the actual logos suggest that the hotel has arrangements with Uber/Lyft?

If so, the third element of the nominative fair use test would be missing too, but unnecessary, if in fact, permission exists.

Does anyone happen to know if hotels might be paid by a ride share brand to promote their brand, kind of like product placement in a motion picture context?

Before you answer the question posed in the title of this post, your initial question might be: What is an App-Based Ride Service?

The Minneapolis St. Paul International Airport is using a handy sign directing passengers on where to go to access their favorite one, does that help?

App-BasedRideSign

I’m thinking the designated area in the airport is where passengers can hail Uber or some alternative brand to Uber, as opposed to a traditional taxi and/or cab, right?

As you know, we love to write about signs, and the one above sparked a thought and reminder about the importance of a frequent topic on this blog: Brand owners launching a new category of product or service do well to design a simple generic category name too.

Remember how it took Rollerblade an entire decade to come up with “in-line skates”?  Before that, the generic name it adopted at the USPTO was “boots equipped with longitudinally aligned rollers used for skating and skiing,” leading to a multitude of generic Rollerblading misuses.

We covered this topic in the fitness tracker category too, so let’s not forget the insights we covered in: A Missed Step in Branding Fitness Trackers?

Why the concern about having a bite size consumer-friendly generic category name? Besides risking a loss of rights, taking this step can help avoid appearing on our Genericide Watch list.

So, back to App-Based Ride Services, what say our marketing types, does this name appearing on the sign accurately, efficiently, and generically name the category created by Uber?

Yes and no are at opposite ends of the spectrum. North Pole, South Pole. Night and day. Win, loss. Black, white. Available, unavailable. Protectable, unprotectable. Infringing, non-infringing. They represent a binary proposition, like a traditional light switch with two settings: on and off.

My daughter loves the yes end of the spectrum; no, not so much; and maybe is tolerable, because it’s easy to get hopes up and accelerate to hearing yes. The problem is the large chasm between maybe and either end of the yes/no spectrum. Maybe can be uncertain and confusing.

Maybe spans a great distance between yes and no. Maybe can mean a slight possibility, or it can also mean a strong probability — creating a vast range of very different options that can be rather unhelpful to those who are paying for legal advice to make smart business decisions.

As we have written before, marketing types understandably love to hear yes too, when they seek legal advice about trademarks, and they are ever more prepared to probe, question, and challenge advice when they hear no, by way of example, remember the brandverbing trend?

Although we launched this blog seven years ago from the springboard of distancing ourselves from Dr. No and his Parade of Horribles, it is also worth noting, lawyers are frequently criticized for not giving a straight answer because, after all, it depends! Sounds like maybe, right?

For those of you who may not have been engaged here for our inaugural Dr. No blog post, might you remember J.D. Waffler: The Art of Taking a Position? If not, maybe you should check it out?

Over the weekend, we didn’t just have our seventh birthday, our friend Seth Godin artfully wrote again (like clockwork) about “Saying No,” and with the passing of former First Lady Nancy Reagan, we were all reminded of the simplicity of her famous “Just Say No” anti-drug campaign.

So, I’m left wondering if the historically rigid trademark advice against verbing and other concepts sounded in no as a way of keeping the advice simple to avoid client confusion and potential adverse outcomes, no matter how remote? Perhaps a strong candidate for a maybe?

It seems to me the key to successful relationships with trademark types is being able to enjoy the benefit of their experience, clear communication, and trust, and knowing that getting to yes is often possible and worthwhile, but not always the easiest or most direct path from maybe.

And, just maybe, your favorite trademark type can help remove for you the confusing and uncertain nature of the it depends and the maybes of trademark life.

FUSE 2015 is off to being yet another amazing, inspiring event for brand strategy and design professionals. The keynote speaker for day one was Eric Quint, Chief Design Officer of 3M, who delivered a very interesting presentation called: “Future Forward: Beyond Design Tourism.”

Little did Mr. Quint know that he set the table nicely for many of the points I ended up emphasizing during my presentation later in the day entitled “Back To (Trademark) School For Designers and Branding Professionals.” By the way, I was relieved the title of my presentation didn’t scare off too many attendees, it was a very engaged audience, with more questions than time to answer them all during the session, so a special thanks to all who attended.

After revealing that 85% of 3M’s business is B2B, Quint emphasized how important design is to the organization so well known and recognized for its innovation and science. But, instead of spending time and effort justifying or explaining the need for design within the organization, his preferred and recommended approach is: “Show, don’t tell . . . . the value of design.”

If that recommendation sounds familiar, you may recall that Bob Worrell, founder of Worrell Design uttered a similar message in a recent webinar that we collaborated on together:

“One of the important takeaways from our recent webinar entitled “Strategies for Owning Product Designs,” was spoken by legendary product design guru Bob Worrell of Worrell Design: “There is another adage in the design world. Advertising is the very expensive penalty you pay for poor design. I think if we listen to that adage, we’d talk less and let the product do its thing.” (quote at 1:22:31)”

Then, in that same webinar, Derek Mathers, Business Development Mananger of Worrell went on to describe how Apple is doing a masterful job of this in launching the Apple Watch, using advertising that shows the operation of the watch’s product benefits and features without uttering a single word. Apple is walking the walk, without the need for using any words.

Back to FUSE, Quint noted the majority of 3M’s value proposition for design promotes differentiation and branding; only a small amount (10-20%) focuses on optimization of products.

So, my articulated hope was that when marketing types are tempted to communicate in advertising about product optimization, little bells and whistles should alert them that the words they choose have significant legal implications that can undermine, if not destroy altogether, a brand owner’s ability to own the created design (at least as a non-traditional trademark).

My call to action for us all was to work together to Bring Down the Bauhaus Principle of Form Following Function when it comes to communicating about product design features, opting instead for the use of more brand-friendly language that strives to create emotional connections as opposed to merely touting the benefits of functional product features. Loyal DuetsBlog readers know full well where that kind of loose talk can lead. So, “show, don’t tell” became my mantra too, given the serious negative consequences resulting from ads touting function.

Quint also described how 3M created a set of visual standards around the highly recognized red 3M logo instead of tinkering with the logo itself, sharing this compelling Tom Fishburne cartoon:

brandguidelinescartoonI simply love this cartoon; it helped me make the point about how every set of brand guidelines I’ve ever seen forbids the use of brand names as verbs, yet we all know brandverbing has become commonplace, and the current generation of marketing types appear unwilling to blindly follow black and white rules without fully testing and probing the true risks of losing trademark rights through the worst case scenario of genericide.

To the extent your brand desires the emotional engagement of verbing, and you’d like to advocate for a hall pass to avoid wearing an orange jumpsuit behind the bars of your favorite legal department, here is some recommended reading from our archives to consider: Managing The Legal Risk of “Verbing Up” Brands and Trademarks.

– Draeke Weseman, Weseman Law Office, PLLC

When I think of Twitter, I think of — it’s really hard to define because we’re still coming up with the vocabulary — but I think it’s defined a new behavior that’s very different than what we’ve seen before.

— Jack Dorsey, Twitter Co-Founder in 2009

My, how time flies. Only four years ago, co-founder Jack Dorsey was still trying to figure out how, exactly, to define Twitter. Last week, Twitter filed its Form S-1 — the public prospectus required ahead of an initial public offering — with the Securities and Exchange Commission. In it, Twitter describes itself as “a global platform for public self-expression and conversation in real time” that has “democratized content creation and distribution.” Analysts evaluating Twitter’s S-1 suggest the company is worth $12 billion.

Trademark-types reading news coverage of Twitter’s S-1 discovered something else: Twitter is concerned that its trademarked 140-character messages, called “Tweets,” may become generic. Discussing the risks to its intellectual property assets, Twitter warns potential investors that “there is a risk that the word ‘Tweet’ could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of this trademark.”

For Twitter, such loss would be an unfortunate twist of fate because the brand was so well thought out in the beginning. Reading Jack Dorsey’s explanation of how the name “Twitter” (and from that, “Tweet”) came about provides an enlightening peek at how start-up entrepreneurs think about trademarks:

The working name was just “Status” for a while. It actually didn’t have a name. … So we did a bunch of name-storming, and we came up with the word “twitch,” because the phone kind of vibrates when it moves [from receiving an SMS message.] But “twitch” is not a good product name because it doesn’t bring up the right imagery. So we looked in the dictionary for words around it, and we came across the word “twitter,” and it was just perfect. The definition was “a short burst of inconsequential information,” and “chirps from birds.” And that’s exactly what the product was.

. . . So we just fell in love with the word. It was like, “Oh, this is it.” We can use it as a verb, as a noun, it fits with so many other words. If you get too many messages you’re “twitterpated” — the name was just perfect.

Like most start-up entrepreneurs, Jack Dorsey clearly understood the spectrum of trademark distinctiveness and the value of a suggestive name. Yet, a few other important trademark concepts eluded him.

First, he uses the dreaded D-word to tell the story of naming the company. This is a trademark no-no that has been discussed extensively here, here, and here. Second, he announces how versatile the word Twitter is: how it can be a “noun” (presumably generic?), how great it works with other words, and how it will make a great brandverb. Brandverbing – or turning a perfectly good trademark into a verb – is also a very dangerous trademark activity. It ranks right up there with with – I don’t know – tweeting while rollerblading (do that too often, and you’ll need a lot of band-aids.) Third, and perhaps most importantly, he is aware of trademark opportunities from extending the brand and is openly talking about them to the media, but he hasn’t filed an intent-to-use trademark application to protect them.

Case in point: Twitter ran into some trademark problems soon after the interview that produced the above quotes. About a month after the interview, Twitter filed for trademark protection for the word “Tweet” as applied to telecommunication services, blogging, and social networking services. But another company had already registered the trademark “Let your Ad Meet Tweets” for related services (yes, Tweet makes a great noun), and Twitter’s application for “Tweets” was refused. Adding to the refusal were two prior pending applications, one from the company Tweetdeck, Inc. for the trademark “Tweetdeck” (see how great Tweet works with other words?) and another for “Cotweet” filed by Launchability, Inc. (doesn’t Tweet make a great brandverb?). Twitter subsequently acquired all three trademarks, resorting to litigation in federal court for one.

Perhaps for that reason, we saw the following statement from another Twitter co-founder, Biz Stone, in a Twitter blog post just a few months after Jack Dorsey’s interview:

We have applied to trademark Tweet because it is clearly attached to Twitter from a brand perspective but we have no intention of “going after” the wonderful applications and services that use the word in their name when associated with Twitter. In fact, we encourage the use of the word Tweet. However, if we come across a confusing or damaging project, the recourse to act responsibly to protect both users and our brand is important.

In this statement, Twitter acknowledges that it didn’t get its trademark act together quickly enough, but shows a sensitivity to the problem and a recognition that earning the label of a trademark bully would be even worse. When faced with the choice between managing a tribe by giving permission or building a bullet-proof brand by revoking it, Twitter clearly favored the tribe and the freedom to associate. That choice will have a huge payoff for Twitter’s founders in a few months.

That choice, however, could also have continuing consequences for Twitter. As trademark-types know, trademark rights are dynamic; and, as Twitter’s S-1 discloses, there is still a real risk that the word “Tweet” could become generic and unprotectable as a trademark. Some of this risk is because of Twitter’s ubqiuity, and some of it is because of Twitter’s early trademark choices. Investors looking at Twitter will have some tough trademark questions to answer.

What do you think, with 100 million daily Twitter users tweeting 500 million Tweets each day, is the word “Tweet” at risk for genericide? Would it matter? Will Twitter need to do an about face from Biz Stone’s permissive statements to prevent genericide, or dilution? Will doing so get Twitter labeled a Trademark Bully? How should Twitter balance these seemingly competing interests?

Last week I had the distinct pleasure of participating in a ninety-minute webinar with my good friend, frequent and eloquent guest-blogger on DuetsBlog — Aaron Keller of Capsule — complete with some friendly banter on the following: "Hot Marketing Topics with Trademark and Legal Implications."

Minnesota Continuing Legal Education has generously provided a link where the webinar can be viewed in its entirety, here.

As you’ll see, we covered the following topics of interest:

  1. The Importance of Early Collaboration Between Legal and Marketing Types;
  2. The Trend Toward Lower Case Branding & Visual Identity;
  3. The Trend Toward Brandverbing and Use of Trademarks as Verbs;
  4. The Creation of Non-Traditional Trademarks & Look-For Advertising; and
  5. The Debate of Form v. Function: Don’t Kill the Trademark.

Any other topics you’d like covered next time? Your comments and suggestions are welcome.

Yesterday the New York Times ran a story on the “Eat Mor Chikin” v. “Eat More Kale” trademark dispute — the same one we covered a week ago: Eat More Anything?

A couple of quotes from the NY Times article caught my eye:

“In a statement, Chick-fil-A said, ‘We must legally protect and defend our ‘Eat mor chikin’ trademarks in order to maintain rights to the slogan.'”

So, Chick-fil-A, am I hearing right, you’re saying “there’s a chance,” of becoming generic and losing all rights in your “Eat Mor Chikin” slogan if Bo continues selling his “Eat More Kale” products?

Here’s the response from Bo’s pro-bono counsel:

“We believe it’s pretty clear, the issue of dilution and confusion aren’t really triggered here,” he said. “There’s no one out there that’s going to come forward and say, ‘I thought I was buying a Chick-fil-A product but I got this T-shirt.’”

I’m thinking both missed the mark a bit.

As to Chick-fil-A’s position, there is no legal obligation to enforce, and the risk of trademark genericide here seems even more exagerrated and remote than the risk of genericide when brandverbing — something that significant brand owners have learned to manage.

And as to Bo’s position, while I agree with the conclusion that there is no likelihood of confusion or dilution here, whether consumers confuse the products — chicken sandwiches and t-shirts — is not the test of likelihood of confusion or dilution.

Any predictions on how this fight will end?

We have been following the truncation trend to single-letter branding symbols for some time now.

Visa appears to be heading in this direction with the relatively new V logo:

                                                                            

Based on trademark filings at the USPTO, it appears Visa began using this single-letter V logo by itself back in 2008 with the launch of a mobile app, but it also appears now that "Visa will no longer support the Visa Mobile Application as of September 23, 2011."

Another bit of interesting news, Visa was able to federally register the single-letter V logo, claiming an even earlier first use date, going back to 2006, two years before it appears to have begun using the V logo standing alone or separate and apart from this entire Visa logo:

Yes, that’s right, the specimen of use submitted with the Statement of Use supporting U.S. Reg. No. 3,446,502 shows no use of the V logo other than as part of the VISA logo shown above, so the Examining Attorney must have been persuaded that the yellow/gold accent on the leading V in the VISA logo was sufficient for the stylized letter V to create a separate and distinct commercial impression from the word VISA.

But that’s not all, now that Visa has fully embraced the truncation from VISA to V, it appears to be flirting with the brandverb trend as well with the new V.me branded digital wallet service to compete with PayPal, as noted by William Lozito over at Name Wire, the product naming blog.

Trademark types, do you agree that the single stylized letter V in VISA stands on its own?

Marketing types, do you think the V.me branding will become a successful form of brandverbing?

–Susan Perera, Attorney

On multiple occasions DuetsBloggers have discussed the risk of verb-ing your brand. While I won’t go into the legal and branding concerns which have been discussed at length, I do find it interesting how frequently these brand verb uses show up in current advertising. Clearly the marketing types aren’t cringing at the use of brands as verbs the way trademark attorneys are.

Some of the recent examples we have discussed include:

“This is how you SONIC”

“When you ORBITZ, you know.”

“The more you know, the more you Kohl’s.”

In addition, this morning I just saw a local version of this Kia commercial which appears to be taking a branding lesson from Culvers:

 

So do brand owners think trademark attorneys are overly concerned about the risks of brand verb-ing?  “Get Kia’fied” makes a catchy jingle.  Does the value of this marketing decision outweigh the trademark concerns?