How much do I believe in federal registration of trademarks and brand names? Well, this much:

I’ve always been a big fan of practicing what you preach. Actually walking the talk. Not just talk.

That mindset helps explain why we stuck with the suggestive name of this blog, even after the experts recommended against it several times, for SEO and other reasons. They do agree now.

Anyway, the registration issued in the nick of time, given my true fortune just two days earlier:

Seriously though, obtaining federal registration of a personal brand name can be a bit challenging.

A common refusal when personal names are involved is that they merely identify a person, and they fail to function as a mark, the very refusal the USPTO initially issued in my particular case:

“Registration is refused because the applied-for mark, as used on the specimen of record, is a personal name that identifies only the name of a specific individual; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services.”

“In this case, the specimen shows the applied-for mark used only to identify the name of an individual and not as a service mark for applicant’s services because it is used to identify the author of blog posts, but does not separately indicate the source for any service. Applicant has applied for services including providing information in the field of law. The specimens shows the applied-for mark being used merely to name the author writing the posts, and to identify a particular individual and give information about him. The specimens include a short biography or “about the author” post with the name of the author or individual at the top, and several posts that show the applied-for mark included only as “By Steve Baird.” This shows the applied-for mark being used in a by-line, attributing authorship, but not identifying source. The applied-for mark is not used in association with the offering of any service in a way that would make it a service mark.”

Fortunately, I’m surrounded by really bright, passionate intellectual property and trademark attorneys, and in this case, our Tucker Chambers came to the rescue, with this winning response.

And, thankfully Tucker had some decent facts to work with, especially given kind commentary of some generous giants from both the legal and marketing fields, two of our core audiences.

Trust me, the irony has not escaped me, that one of these generous giants recently allowed the registration for his blog’s name to lapse, and the other giant likely prefers to Just TM It instead.

I’ve never professed to resemble a purple cow, but my mother and father did teach me to follow the beat of my own drum, after taking in a variety of different perspectives to settle on my beat.

So, if you have a personal brand name that truly functions beyond indentifcation to indicate the source of goods or services, my hope is that you will consider federal registration to help protect it.

Keep in mind, personal brands can go beyond an actual name to embody a non-verbal image too, where consent of the individual so identified is of record at the USPTO, hello Ralph Lauren:

Personal brands also may include nicknames, like Mr. Wonderful aka Kevin O’Leary from Shark Tank fame, who is seeking registration of Mr. Wonderful for roasted nuts, hello Wonderful:

 

So, I’m left thinking that Mr. Wonderful best get crackin’ on his anticipated response to the inevitable likelihood of confusion refusal that he’ll be experiencing in the not-to-distant future.

The producer and promoter of the James Bond movies Danjaq, LLC has filed an opposition to the intent-to-use application for the mark “.007%” with the United States Trademark Trial and Appeal Board (“TTAB”).  You may have seen some of the 007 movies, including:

Dr. No (1962); From Russia With Love (1963);Goldfinger (1964); Thunderball (1965); You Only Live Twice (1967); On Her Majesty’s Secret Service (1969); Diamonds Are Forever (1971); Live And Let Die (1973); The Man With The Golden Gun (1974); The Spy Who Loved Me (1977); Moonraker (1979); For Your Eyes Only (1981); Octopussy (1983); A View To A Kill (1985); The Living Daylights (1987); License To Kill (1989); Goldeneye (1995); Tomorrow Never Dies (1997); The World Is Not Enough (1999); Die Another Day (2002); Casino Royale (2006); Quantum of Solace (2008), Skyfall (2012), and Spectre (2015) (collectively, the “James Bond Motion Pictures”).

Many people debate who the best Bond has been: is it Sean Connery, Roger Moore, Pierce Brosnan or Daniel Craig (I am doubting there are many that would pick Timothy Dalton)?  My favorite is Daniel Craig, and I enjoyed the Casino Royale and Quantum of Solace movies best.  Skyfall was good too. But, I digress.

.007 Percent, LLC touts itself as an exclusive, invitation-only, social network for Bond villains aimed at the richest people in the world.  Specifically, the application at issue seeks to register “.007%” in connection with various goods and services, including: computer services; electronic delivery of images, email and photographs via a global computer network; providing on-line chat rooms and electronic bulletin boards for transmission of messages; streaming of data; and video broadcasting services, in International Class 38 and online social networking services, in International Class 45.

Here is a full description of the goods and services contained in the application.

In the Opposition, Danjaq asserts that “[t]he 007 Marks are extensively used in connection with, and to market and promote, the James Bond Motion Pictures and a wide range of goods and services.”  “Opposer and its predecessors have invested substantial time and expense promoting the James Bond Motion Pictures and the 007 Marks.” Accordingly, Danjaq asserts that “[a]s a result of extensive sales, advertising, and promotion of the James Bond Motion Pictures and the broad range of products and services sold or offered under the 007 Marks for decades, the 007 Marks have developed enormous goodwill and secondary meaning, and they are famous under 15 U.S.C. §1125(c).”  Danjaq asserts claims of likelihood of confusion, likelihood of dilution of its famous 007 Marks and that there is no bona fide intent to use the .007% marks in commerce for the goods identified in the Application.

This is not the first time Danjaq has taken legal action to protect its 007 marks.  Indeed, Danjaq spent more than fifty years battling script writer Kevin McClory who worked with Ian Fleming who famously authored the original novels.   The dispute was finally resolved in 2013.  Further, Danjaq was able to obtain rarely afforded copyright protection for the Bond character itself.  Finally, Danjaq filed oppositions against applicants seeking to apply for the trademarks “Super Bond Girl,” and “Inspiration Shaken and Stirred.”

James Bond has been a topic before on DuetsBlog, including here and here.

Will .007 Percent secure its trademark registration?  Who is your favorite Bond actor?

— Jessica Gutierrez Alm, Attorney

Twitter, the social media giant, is being sued by its internet cousin, TWiT.  TWiT, which initially stood for This Week in Tech, is a netcast network providing audio and video tech-related content.  TWiT owns the registered service mark TWIT for visual and audio entertainment performances.

According to the Complaint, TWiT founder Leo Laporte and Twitter co-founder Evan Williams had some discussions about the similar brand names in the mid-2000s.  The Complaint is available on Scribd, courtesy of TechCrunch.  In 2007, Laporte invited Williams on TWiT’s net@night show to promote Wiliams’s new company, Twitter.  Laporte alleges that although the two founders recognized their companies’ similar sounding names, at the time, they provided entirely different platforms—Twitter was text-based microblogging, and TWiT was video and audio streaming and downloading. The two founders apparently agreed informally that their companies would continue to coexist on their respective platforms.

Now, after ten years and still no formal agreement, Twitter is planning to launch original video streaming content.

Last year, TWiT sent a letter demanding that Twitter abandon its planned expansion into video content.  The parties’ subsequent attempts to resolve the dispute without legal action apparently have not been successful.

TWiT alleges twelve causes of action in total, including infringement of the TWIT mark.

Perhaps the moral of this story is: put it in writing (preferably more than 140 characters).  Presumably in Twitter’s early days, no one could have foreseen the future success of the social media platform and an eventual expansion into video content.  But maybe TWiT should have sought something more than a handshake coexistence agreement.  What do you think?

A few weeks ago, a Mexican restaurant in Fort Collins, Colorado, named “Dam Good Tacos,” agreed to change its name based on a settlement in a trademark dispute with another Mexican restaurant, Torchy’s Tacos.

Torchy’s Tacos owns a federal trademark registration for the mark “DAMN GOOD TACOS” (Reg. No. 4835497) for restaurant services. After learning of the Dam Good Tacos restaurant, Torchy’s filed a complaint in federal court, asserting trademark infringement based on the nearly identical use of its mark, for related restaurant services.

The re-branded name of Dam Good Tacos is now DGT, an acronym for its previous name. Some Coloradans are unhappy with the name change, and Torchy’s is facing some significant backlash on social media for initiating this trademark dispute.

For example, one social media user states that she “kinda hates” Torchy’s for suing DGT, and another stated “shame on Tochy’s” regarding its “frivolous lawsuit,” which makes them “look foolish.”

However, the lawsuit is hardly frivolous. The parties’ marks and restaurant services are nearly identical, and Tochy’s appears to have priority, in addition to all the legal presumptions that come with its federal registration. Also, the parties’ businesses are in the same market, with a Tochy’s Tacos location just a couple miles away from DGT. And before suing, Tochy’s offered DGT financial assistance with a name change, but DGT refused.

Nevertheless, the social media backlash is a reminder that, no matter how strong the case for infringement, trademark “bullying” is a prevalent topic, and it’s important to be cognizant of the potential for negative PR in any enforcement efforts, particularly when there is a significant disparity in the size and resources of the parties, and/or when either party is popular or well-known in a particular market.

There have been several recent examples in this context, where large well-known companies initiated enforcement efforts against smaller parties, but have done so in creative, friendly, and humorous ways, which not only avoided criticism, but also benefited all parties involved, with a supportive public reaction and widespread media coverage.

Two of my favorite, recent examples of this, are the Netflix “Stranger Things” demand letter (we blogged about it here), and Bud Light’s Dilly Dilly demand scroll — which was read aloud by a medieval character at the alleged infringer’s brewery (see our blog post here). Rather than face any backlash or claims of bullying, the reactions to these enforcement efforts were positive, with both companies receiving significant praise, such as “funny,” “cool,” and “super classy.”  That’s quite a feat, as those words are quite rarely applicable to legal demand letters.

What do you think about Torchy’s approach here? Do you have any favorite examples of successful enforcement efforts from a public-relations perspective?

RapalaDontTextandFishSorry for my delay in reporting Rapala’s annual billboard campaign, which began about a month ago, right around the fishing opener, more on my delay later.

As you can see, it reads more like a tongue-in-cheek public service announcement than past billboards, playing on the serious problem of texting while driving.

Anglers probably handle their cell phones more now than ever before while fishing, otherwise how would they capture notable moments for social media bragging rights?

Hopefully the humor in this Rapala ad won’t dilute the effectiveness of the many other ad campaigns designed to curb the dangerous activity of texting while driving a motor vehicle.

How would you assess this Rapala campaign?

Debbie Laskey, MBA

Take a look at anyone’s smartphone or tablet and you’re bound to swipe through screen after screen of applications, or more commonly known as apps. Some apps are pre-programmed into the device, such as, calendar, maps, and stocks. And, of course, there are also apps for contacts, a camera, and social networks. But others are chosen by the device owner. Many marketers are curious as to why you chose the apps on your device, but more importantly for all marketers, what do popular and successful apps teach us about brand equity and branding? Here are some branding tips from my five favorite apps.

[1] BLOGKEEN

This app is useful because it allows the user to provide the URLs for countless blogs, and then each day, new posts for each blog are available for reading in one easy space. No more searching for each blog’s URL separately. No more searching through Twitter for each blog’s latest post. This is a one-stop app if you enjoy reading blog posts and follow more than a few bloggers.

BLOGKEEN’S BRANDING TIP

How does your brand communicate your content? How often do you communicate with your audiences? Does your brand have a blog?

[2] DAILYART

This app is memorable because it provides a daily piece of art with information about the specific piece of art, its artist, the time it was created, and where it is housed. The art spans all genres and time periods. Users are just as likely to see a piece of art by Jackson Pollack as a sculpture from the Acropolis. If you cannot visit a museum or gallery on a regular basis, you can get your art fix on your mobile device with this app.

DAILY ART’S BRANDING TIP

Does your brand think of your customers and prospects as art lovers? This app reminds all marketers to create high quality images while simultaneously taking us on a daily museum visit without standing in line or having to deal with public transportation or parking. When you show visual content (photos and videos) to your audiences, how much time do you spend on making sure that the visual content is high quality? Continue Reading Branding Tips from 5 Awesome Apps

Instagram recently released a new feature called Instagram Stories, which allows users to curate a collection of photos or videos of moments to share with friends for them to view, but then it disappears after a day.  The thing is Snapchat, a competing photo sharing app, already had a feature called Stories, which allows users to curate a collection of photos or videos of moments from the past day to share with friends for them to view.  Mashable has a nice post comparing the two features and identifying some of their differences.

So, can Instagram have Instagram Stories and call it that when Snapchat Stories already exists?

The answer, as it often is in the law, is “it depends.”

On the trademark side, neither Snapchat nor Instagram seems to have filed a trademark application for their respective Stories marks, with or without their house brand.  Notwithstanding that though, Snapchat has been using Stories since at least 2013 and would have prior trademark rights to STORIES over Instagram, which was just released this year.  However, they would only have those rights if STORIES actually functions as a trademark, rather than being a generic term.  A trademark can be generic if it becomes the common word or term used to identify a particular product or service regardless of source.  Examples of this include aspirin or elevator.   Trademark owners risk their trademarks becoming generic by their own improper use of the mark, like by using the mark as a noun rather than an adjective next to a generic term for a product (e.g. KLEENEX® tissues).  They can also become generic by failure to properly police the use of the mark by consumers or the media.

There could also be some issues for Instagram on the patent side.  Snapchat owns at least U.S. Patent No. 9,026,943, which has the following claim:

1. A computer implemented method, comprising:

allowing a user to access a user-controlled social network profile page with posts in a specified order;
permitting a user to traverse an interface element across the posts in the specified order to establish a set position for the interface element;
providing access to posts on a first side of the set position for the interface element to define a viewable profile; and
blocking access to posts on a second side of the set position for the interface element to define a non-viewable profile, wherein blocking access to posts includes blocking access to posts observed by social network members associated with the user, while the user has access to posts on the first side of the set position and the second side of the set position.
If Instagram’s Instagram Stories feature practices each and every element of this claim, it would infringe Snapchat’s patent, assuming of course that the patent is not somehow invalid – a defense that would certainly be brought by any alleged infringer.  It’s also possible that Instagram designed its Instagram Stories feature around claims of Snapchat’s portfolio, which may explain why the order of displaying friends’ posts to a user is different and other differences between the apps.
Instagram is owned by Facebook, which has a history of mimicking features of Snapchat in its applications as this article from 2014 discusses (see this 2016 update as well).  We’ll have to wait and see if this is the final chapter of this ongoing saga between social media app giants.

By way of follow-up to Tim’s and David’s recent discussions about Rio2016 and related U.S. Olympic Committee trademark enforcement issues, it appears that a local Minnesota carpet cleaning business called Zerorez, is poised to press the issue of the USOC’s overreaching trademark policies by asking the federal district court in Minnesota to confirm it may lawfully post on social media platforms like Twitter and Facebook, comments such as these:

  • Congrats to the 11 Minnesotans competing in 10 different sports at the Rio 2016 Olympics! #rioready;
  • Are any Minnesotans heading to #Rio to watch the #Olympics? #RoadToRio;
  • There is no substitute for hard work. -Thomas Edison #TeamUSA is a great example of hard work paying off;
  • Let the rumble in Rio begin! From badminton to BMX, Minnesotan Olympians are at the #Rio2016 Olympics. Go #TeamUSA!;
  • St. Cloud native Alise Post is an #Olympian competing in the #Olympic BMX events today. Follow her at @alisepost11; and
  • Good luck to our 11 Minnesota Olympians competing in #RIO2016.

Do you think the USOC has some dirty carpet to be cleaned, once and for all?

Go #TeamZerorez!

UPDATE: Check out Brad’s interview on Kare11 here!

– Jason Sprenger – President, Game Changer Communications

2016, thus far, has been a busy year for celebrities passing away.  The shock and grief many people feel is palpable.  But it’s not just people reacting to these events anymore; in this new era of social media and creative advertising, it’s never been easier for companies and brands to react.

Take the death of Prince last month, for example.  It hadn’t even been a day after he passed before we started to see brands and companies issuing their own unique statements and remembrances.  3M converted its logo to purple and inserted a teardrop.  Corvette issued a full-page advertisement with a little red corvette pictured and the tagline “Baby, that was much too fast.” Cheerios also weighed in with a simple message, using a Cheerio to dot an “I” in there.  There were many more.

Almost instantaneously, the court of public opinion was in session.  It seemed most of these efforts were well received, and even applauded.  Yet there were others that people skewered early and often.  The reaction was so strong the Star Tribune caught on; I had the honor of being interviewed for a story on the subject, along with other leaders in the Twin Cities business community.

After some reflection on what we saw from brands around Prince’s death, and what the public had to say about it, I think there are some key takeaways we can glean about how to properly recognize and/or remember a celebrity in a situation such as this:

Do:

  • Be human. A big reason social media are so popular is because everyone has a chance to be authentic and themselves through their channels.  Accordingly, brands and companies should do exactly that.  They should convey emotions, if in fact they feel them.  They should console stakeholders, if it’s appropriate.  They generally should speak in the same voice as they normally would in any other post at any other time.
  • Be a part of your community. This can refer to geography; Prince’s death hit hard here in Minnesota because he was one of us.  As such, you saw a lot of local organizations weighing in on his death.  Similarly, it can refer to stakeholder groups and others with shared interests and experiences.  MTV played Prince videos the entire day he died, engaging with its audience in a way that made an impression on the people that hold MTV dear.
  • Relate shared experiences, if appropriate. This is where the Corvette ad was particularly fascinating; Prince song and lyric helped make the company famous, and Corvette paid appropriate homage.

Do NOT:

  • Be opportunistic. Reactions usually strike people one of two ways: they feel genuine, or they feel forced.  If it feels like you’re reacting just for the sake of reacting, or that it isn’t appropriate, then you’re probably right – and the better decision would be not to react at all.  Items that just don’t fit tend to incur a lot of negative public opinion.
  • Be out of touch. Similar to being opportunistic, sometimes a reaction lays it on too thick.  Or an organization with no connections to a particular person or cause – or its followers – will reach out and engage.  These items also tend to be received poorly.

At the end of the day, it’s really pretty simple.  If it feels right, go for it.  If it doesn’t, then abstain.  Now, hopefully, we won’t need this tip list again anytime soon.

-Wes Anderson, Attorney

As the hustle and bustle of the INTA 2016 Annual Meeting drew to a close yesterday, I reflected on the session “#HASHTAGS #EverythingYouNeedToKnow” from Tuesday. It seems trademark protection may not (yet) fit comfortably into the hashtag world.

DuetsBlog previously provided a helpful tutorial on the nuts and bolts of hashtags and how they function, particularly on the sites Twitter and Instagram. As James Mahoney alludes in his post, hashtags serve a collaborative purpose – they organize ideas, topics, and events, effectively creating “threads” of discussions on a medium that is otherwise a stream of consciousness. As brand owners grow in presence on social media, a question has arisen whether certain hashtags may become trademarks – and thus allow brand owners to stop others using those hashtags.

The U.S. Patent & Trademark Office now provides explicit guidance on the standard for registration of hashtags:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.

Most of the foreign jurisdictions discussed at the INTA session articulate a similar standard. Essentially, I see this standard to mean a hashtag mark must itself function as a trademark, and not just “contain” a trademark or house brand. If you’re familiar with hashtags, this might lead to some head scratching.

Consider how the appearance changes when a brand name is used as a hashtag. Applebee’s® gives all the information straight away, thanks in part to use of the registration symbol – it tells others that this is a brand name. But #applebees doesn’t readily convey as much information (and in fact here omits the apostrophe, because for some time hashtags were often “broken” by punctuation or numbering).

Among the social media savvy, the hashtag symbol itself is weighted with its own meaning – a hashtag is a self-contained invitation to be used by third parties on social media, much like an invitation to search for a term on a search engine. It invites users to see what’s already been posted containing that hashtag, and to contribute their own content. Consider the more natural functions of hashtags, such as charity events like today’s #RedNoseDay, which is trending this morning on Twitter. The very idea is to encourage unsolicited and unpoliced third party usage.

This is anathema to many trademark owners, who of course wish to (and are required to) establish control over use of their brand names. And there certainly can be exceptions for hashtags that zealously function as trademarks, and that consumers recognize as brand names unto themselves. Even then, brand owners must be prepared for rampant third-party use of a hashtag mark, and understand that nominative fair use is far more likely to apply in the hashtag context.

Twitter announced some new changes to its 140-character message limit, and will now no longer count username mentions, links, and photos toward the limit. So, we know nothing is set in stone when it comes to Twitter. So I would not be surprised should there come a day when some tweaks here and there make hashtags more trademark-friendly.