Throughout our nearly decade-long journey and exploration called “DuetsBlog,” we have been blessed and we remain grateful to have met so many incredible new friends along the way.

Next Tuesday, we have the remarkable privilege of publishing here on DuetsBlog an interview with Seth Godin, a generous person, overflowing with thoughtful insights and valuable perspectives.

In the meantime, many thanks to Fred McGrath for his interest and generosity in sitting down with me to capture a conversation about DuetsBlog, editing our discussion in 3 videos, here’s the first:

— Aaron Keller, co-author, The Physics of Brand, co-founder Capsule.us and Columnist at Twin Cities Business magazine.

There are so many hidden dangers in the process of naming any new offering — many of which can sneak up on you. We all like to believe we’ll see the danger before it meets us squarely in the forehead like a baseball bat, but the number of horror stories would indicate otherwise.

We’ve illustrated the Jimmy’s Johnnys in past blog posts, which certainly doesn’t create a good brand image for Jimmy John’s. But, really that’s a trademark issue, not a meaning issue. The meaning issues happen because there’s existing cultural meaning around a word that really isn’t good for your brand.

Rusty Taco dealt with it by moving to R Taco — not something this writer agreed with, but it happened. If you’re wondering what meaning existed with that name, try using your imagination before you search it on a work computer.

Fairview University, in their previous partnership had a minor issue when they turned the name into an acronym and stenciled it on hospital equipment. Do it yourself by writing those two letters in your whiteboard.

Or, the classic, Federal Express before they became FedEx, because in most countries “Federal” means government and slow, very, very slow. FedEx needs to be on time and certainly not slow — seeing the hidden meaning was essential.

Now, my own personal favorite today, the brand Sheetz, which is best consumed via this link, which tells me they know the brand name is amusing. Though, it does have a gastronomic implication that likely doesn’t create a smile in your mind after eating their foot long sub sandwich.

So, how do you avoid this?

Test the meaning with your audiences and there are simple rather inexpensive ways to get a clear picture of what your brand name means in culture. Even if you’ve got an existing brand name and culture has changed around it — like Tsunami Herbicide — a test might identify a need to change or refine your brand name.

Test your meaning before you test your job security. If you run into an amusing brand name story you think needs to be told, please pass it along to AaronKeller@capsule.us.

Photo credit: G. Baird

Another Creative Brand Protection event is in the books, thanks to our incredible panel of experts:

  • Karen Brennan, Senior Director, Intellectual Property, Best Buy
  • Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine

Their insights and perspective on launching new brands and refreshing mature ones were priceless.

Aaron Keller, Tim Sitzmann, Karen Brennan, Anne Hall (Photo credit: G. Baird)
Anne Hall’s storytelling gifts were on display for all to learn from and enjoy (Photo credit: G. Baird)
Photo credit: G. Baird
Photo credit: G. Baird

Despite tricky last minute weather with a rainy metro area, an engaged audience still joined us.

Photo credit: G. Baird
Photo credit: G. Baird
An engaged audience with excellent questions (Photo credit: G. Baird)
Matt Smyth reading the fine print with encouragement from Kyle Kroll (Photo credit: G. Baird)
Kyle Kroll working the room and sharing the DuetsBlog wealth (Photo credit: G. Baird)

In typical DuetsBlog-style, we avoided legalese, to bring trademark and branding types together.

Photo credit: G. Baird

If there are topics you’d like to have us cover next time, please let us know, we’d love your input!

Yeah, we usually mean this Apple, when we spill digital ink, not today, instead the edible varieties:

Hat tip to Erik Pelton who tweeted about the federal registration of LUDACRISP for fresh apples.

We know something about non-ludicrous trademark protection for apples > First Kiss and Rave.

They are newly minted brands for the MN55 Apple, a cross between HoneyCrisp and MonArk.

As it turns out, Honeycrisp might have been a trademark, but for its inclusion in a plant patent.

If an apple a day keeps the doctor away, does that include juris doctors who are into trademarks?

Or, would it be ludicrous for Apple, you know the iPhone XS one, to name a device Honeycrisp?

If only Honeycrisp could be a University of Minnesota apple trademark; Apple still has a chance.

To grasp lessons learned from the Honeycrisp story, and fully digest the Best Buy brand refresh, join us in Minneapolis on Thursday, a few seats remain for our Creative Brand Protection II event:

Winthrop & Weinstine’s Trademark and Brand Protection practice group will host a few hours of trademark and brand protection education, food and drink, and networking!

For the educational portion of the evening, we’ll share valuable insights and guidance for those who love brands and want to learn creative strategies for maximizing their value.

Yours truly, will moderate a panel discussion joined by:

  • Karen Brennan, Senior Director, Intellectual Property, Best Buy
  • Anne Hall, Technology Strategy Manager-Life Sciences, University of Minnesota
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Tim Sitzmann, Trademark and Brand Protection Attorney, Winthrop & Weinstine

The panel will share best practices and creative approaches to both launching new brands and refreshing a mature brand. The panel will develop a robust discussion using the University of Minnesota’s MN55 apple launch and Best Buy’s brand refresh to explore the following themes:

  • Transforming a commodity into a valuable brand
  • Strategies for selecting and owning names and marks
  • Carving a path for global trademark and brand protection
  • Legal considerations for refreshing a brand’s visual identity

Reserve your spot now, space is limited. We hope you will join this lively and informative event!

And, I’ll say it again, if only Honeycrisp was an apple trademark, or an Apple trademark . . . .

In the meantime, since Honeycrisp is generic for fresh edible apples, is this stylization distinctive?

Nope, the pedestrian style is not striking enough to be trademark ownable, contrast Miller’s Lite.

Besides some team tournament sadness, the only thing sad about our remarkable Creative Brand Protection Event was our camera problem, so these few photos are all we have to share, so sorry:

From left to right above, special thanks to Shaelyn Crutchley (former PepsiCo, now Volo Creative), Aaron Keller (Capsule), and Rosalie O’Brien (University of Minnesota), they were fantastic, and their valuable insights about Super Bowl LII, Ambush Marketing, and Brand Protection Strategies were nothing short of brilliant.

Equally exceptional were our three alumni Trademark and IP attorney panelists, special thanks to Sarah Lockner (Ecolab), Sharon Armstrong (3M), and Susan Perera (United Health) — their energy and passion, as guardians of the “most important assets” of their companies, was wonderful to witness and experience. Amazing leaders, they offered very balanced, matter-of-fact, and pragmatic insights on how they approach their important brand protection work and certain trademark enforcement tools.

Duey certainly wasn’t sad either, he was the star of this 9th birthday cake (thankfully captured on my iPhone before cutting), congrats Duey, and thanks for ALL those who joined us, as we look forward to Creative Brand Protection II, date to be announced soon, likely late June, so stay tuned.

We’re always looking forward, but every once in a while we look in the rear-view mirror and become amazed at how far we’ve come since our humble beginnings a short nine years ago.

Well, it’s almost time to celebrate another birthday here at DuetsBlog, and if we make it to March 5th, Duey will be ecstatic, thanks so much again to our many devoted readers and guest bloggers.

On Thursday March 8th, we’ll be doing more than cutting and sharing slices of our 9th Birthday Cake (promise it will be fresh, not four days old), we’ll be educating and entertaining our guests.

Beginning at 4 PM, in our newly reimagined cool office space, we’ll host a few hours of trademark and brand protection education, entertainment, food, drink, celebration, and conversation.

For the educational portion of the evening, we have assembled two dynamic panel discussions with valuable insights and guidance from a pair of national branding and design experts and leading trademark counsel for some very notable brands with global footprints.

Yours Truly, will moderate this panel of accomplished luminaries:

  • Shaelyn Crutchley, Former Senior Director, Head of Design – N. American Beverages, Pepsico
  • Aaron Keller, Co-Author: The Physics of Brand; Co-Founder Capsule Design
  • Rosalie O’Brien, Senior Associate General Counsel, University of Minnesota

Our focus will be on the development of a creative, coherent, and compelling brand protection strategy. In addition, we’ll look back together on Super Bowl LII through our collective brand protection eyes, discuss so-called trademark bullying, and the latest on trademark fair use.

Brad Walz, Winthrop Shareholder and Adjunct Professor, University of St. Thomas School of Law Trademark Clinic, will moderate a panel discussion joined by some of our esteemed alumni:

This panel will focus on the implementation and execution of creative trademark and brand protection strategies. Attendees will learn about the effective and efficient use of trademark watch services, brand registries, website complaint programs, USPTO Letters of Protest, cease and desist correspondence, TTAB and UDRP proceedings, and also, when federal district court may be necessary to achieve goals.

Space is limited for this special event, but we have set aside a few seats for readers who may not have received invitations, so please let me know if you’re interested in joining us.

I’ve been meaning to write about a TV commercial for a while, but I keep forgetting to do it.

Perhaps I need the very product being advertised in the commercial, because what gained my attention was the clever tagline following the brand name: Prevagen. The Name to Remember.

Given the goods being sold, it struck me as a clever play on words, literally descriptive, but figuratively not, so the double meaning allows it to be registered without acquired distinctiveness:

Prevagen (apoaequorin) is clinically shown to help with mild memory problems associated with Aging.

I’ve never tried it, but since I’ve seen this ad more than a few times, I’m left wondering if I’m within their target market? So, I know I’m AARP eligible, but I can’t recall if I’m really a member.

Yet, I’m left wondering why the Prevagen folks haven’t sought separate registration for the tagline, standing alone, apart from the Prevagen brand name, as their specimen of use shows.

I don’t know, maybe they forgot?

Aaron Keller of Capsule noted, in another context, that “memory decay is abhorrent” for brands.

Anyway, going through this exercise has reminded me that we need to submit evidence of our continued use of this clever tagline — that I think I designed myself — for our legal services:

If You Want to Protect Your Name Remember this One®

And, when I search for the word “memory” on Ron Coleman’s Likelihood of Confusion® blog, this gem keeps coming up, perhaps the repetition exists for those with “mild memory problems.”

You might be wishing I’d be done by now, hoping I’ve disremembered what’s next, but I’m really feeling it currently, and our friend James Mahoney, has provided me with a hot tip that Tom Rush, American Folk Icon, will be performing at the Dakota Jazz Club in Minneapolis later this week.

You guessed it, or perhaps you’ve never memorized Rush’s hits or play list, but he’s the guy who has his Remember Song on YouTube, currently showing over 7 million views.

And, there’s more, before I omit something else, our friend Seth Godin also has weighed in on the subject of memory, I’m sure he hasn’t forgotten this one, nor has Nancy Friedman for that matter.

The good news is, as John Welch — from the TTABlog — reported way back in 2007, thanks to genericness, it would appear that anyone could sell card games called, you guessed it: Memory.

Apparently though, times and circumstances have changed, or the Rhode Island decision John discussed was not the final word, or perhaps someone simply failed to remember, because Hasbro, in fact, still maintains federally-registered rights in Memory for a card matching game.

Oh, by the way, back to our federally-registered tagline, searching the USPTO database for marks with both “name” and “memory” yields surprisingly few live ones, so broad rights, right?

Well, I’m not making this up, but as it turns out, there is presently a trademark fight, between two law firms, going on now for nearly five years at the TTAB and in Philadelphia federal district court, over the claimed mark: Remember This Name. Well, imagine that, and then commit it to memory.

Larry Pitts & Associates, P.C. is arguing that Lundy Law’s claimed Remember This Name mark is generic, and part of the public domain for anyone to use, oral argument is likely in January 2018.

There might have been more I wanted to say on this subject, I’m not sure, but I’m thinking that this has been plenty for a pleasant stroll down memory lane, at least for now. Do you agree?

That’s our motto here, but we live, eat and breathe trademark protection, so no surprise.

Our friends in the creative and design community also know the value of trademarks.

Love to see the bean-counters getting on board with this mantro too, a pleasant surprise.

In case you missed it, Tim Lince over at World Trademark Review did an interesting piece last month, entitled: “Groundbreaking study suggests trademark count, rather than patent count, is a better predictor of innovation.”

It draws from the results of a study called “Innovation Worth Buying: The Fair Value of Innovation Benchmarks and Proxies,” written by two professors at The George Washington University (James Potepa and Kyle Welch).

The World Trademark Review summary piece/interview definitely is worth checking out, in addition, here are some notable clips directly from the study, that sound pretty good to us:

  • “trademark counts significantly predict innovation-related intangible assets”
  • “trademarks represent an innovation measure much less covered in the literature, yet they have potential to capture innovation distinct from patents”
  • “if a product or service is unique enough, trademarks enable a firm to protect the innovations deployed in delivering the product or service”
  • “trademarks are significantly and positively associated with brand innovation”
  • “trademarks are positively and significantly associated with innovation”
  • “trademark count is a robust proxy for brand innovations but research and development expenditure is not”
  • “trademarks are also a significant predictor of the market’s value of innovation”
  • “AirBnb, Uber, and Netflix have transformed markets, yet patents don’t defend their core innovations.”

In addition, one of the authors of the study, James Potepa, also revealed in an interview:

“It is clear that having a recognisable name and an associated reputation is valuable, but our evidence indicates trademarks are able to pick up something above and beyond the value of recognition. Trademarks can actually predict the value of a firm’s expected future advances, which is amazing but not entirely surprising. In fact, it is worth considering whether trademarks are actually undervalued.”

Bottom line, we look forward for more and more scientific and scholarly research that will continue to validate what we already know to be true, the value of trademarks to an organization or business should never be minimized or underestimated.

In the meantime, we fully recognize that not all trademarks are created equal, so let’s do our part — as trademark types and marketing types — in collaboration, to steer trademark investments into inherently distinctive vessels with more potential for achieving great value.

cheese_curds_aaron_keller

When Aaron Keller of Capsule deeply cares about an issue (in a deeply fried kind of way), it’s hard not to stand up, pay attention, and follow instructions, especially when his picture of golden little nuggetized cheese curds are involved and the Minnesota State Fair is at stake.

As you might have discerned over the years, yours truly has been known to visit the Minnesota State Fair, perhaps not more than the most rabid of fans (our next door neighbors), but far more than the most average of fans or those with only tepid enthusiasm for said Fair.

Indeed, as an added benefit to the amazing culinary experience at the Fair, a colorful multitude of IP content from the Minnesota State Fair has inspired my keyboard over the years, including these little gems about the Tilt-a-Whirl trademark and Lulu’s (not the lemon in case you wonder).

Yet, before today, cheese curds have been uttered only once before on these pages, by our friend Brent Carlson-Lee of Eli’s Donut Burgers fame, but with Aaron Keller’s call to sign a petition (which I did) and his social media battle cry to #savethecurds, today rightly makes twice.

Truth be told, the entire category of cheese curds is not in question at the Fair, only one of the several curd vendors, but most importantly the original pioneer and cheese curd leader — in fact, after due testing, the one and only curd my family loyally patronizes multiple times each year.

So, to be told, no worries, you can still find cheese curds at the Fair, is like saying to Coke lovers, never mind your unwavering brand preference, you can still find Pepsi. Let’s face it, we live in a pretty divided world, so eliminating the curd pioneer is far more than a shoulder shrug.

Reminds me of when the Minnesota State Fair gave Porky’s Delight the boot more than a decade ago. I’ve never really forgiven them, having said that, I can’t say I’ve boycotted the Fair since then either, but the replacement pork chop stand has never measured up to my taste buds.

Thank goodness Porky’s Delight seasoning is readily available for those willing and able to bring-your-own-pork-and-grill, to do-it-yourself. Sadly, I’m not sure that the cheese curd recipe from the Original Deep Fried Cheese Curds vendor, as good as it is, presents the same opportunity to the stunned Mueller Family. Perhaps this explains the family’s interest in keeping the tradition alive at the Fair? Hopefully the Fair officials will do the right thing and #savethecurds.

In terms of the legal aspects of the issue, not having seen the agreements between the Fair and vendors, I’m not pretending to know the details of the legal terms governing the matter here, but instincts tell me that the Fair probably holds most of the cards, especially with one-sided terms like these (taken from the online 2017 Concession Manual):

“State Fair license agreements, any portion(s) thereof, as well as the privileges, duties, responsibilities, obligations and interests granted therein, may not be assigned, sublet, sold, transferred, devised by will, hypothecated or otherwise disposed of, except with the written consent of the Minnesota State Fair; nor may licensees subcontract or sublet space or license privileges to any other person or firm. Obligations provided for in said licenses, including, but not limited to, payments for insurance, utilities and/or special services, shall remain the obligation of the initial licensee regardless of approved assignment.”

But, do they really hold all of the cards? Perhaps others can weigh in here who have relevant knowledge to share on the details of the typical governing agreements.

For example, did anyone notice in the letter denying the license application to Tom Mueller, Richard Mueller’s son, that the previous license holder for the space appeared to be a corporation (Muskar, Inc.)? To the extent this language from the 2017 Concession Manual governed the license with Muskar, Inc., and to avoid the transfer prohibition above without Fair consent, why couldn’t the corporation have designated a new Principal for the same corporation and licensee to carry on operations at the Original Deep Fried Cheese Curds stand?

“Licenses are issued to, and in the name of, a company/corporation, organization, institution, agency or individual (of legal age) with a designated principal (i.e. owner, president, C.E.O. or executive director) and secondary agent (i.e. secretary, manager, division/department head or assistant). The principal, having primary legal and decision-making authority and responsibility, must sign the exhibit or concession license and all related business documents. In the absence of the principal for any reason, e.g., death, inability or unwillingness to continue as the principal, the license becomes null and void. The agent must be authorized by the principal and may speak for and conduct day to day exhibit or concession business on behalf of the licensee on site, but may not execute (sign) a license on behalf of the principal. Also, in the absence of a principal for any reason, e.g., death, inability or unwillingness to serve as principal, the agent does not ascend to become principal and the license becomes null and void.”

Back to the brand aspect of the issue, even if the Fair holds the legal cards on this one, I’d suggest we launch a new hashtag: #savethecurdcompetition (since the alternative, Mouse Trap Cheese Curds, needs some real competition at the Minnesota State Fair, in my opinion).