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.

Love the new Minnesota State Lottery advertising slogan: I’MN. Or, as one of my college age sons often says, when he’s in agreement with someone’s idea or proposal, I’m down.

The lottery slogan cleverly plays off the affirmative and adoptive slang phrase “I’m in” (i.e., “Count me in”) — it also plays off the MN abbreviation for Minnesota. Congrats, Periscope.

How long before we start to see brand owners saying “count me in” when it comes to using the similar meaning “I’m down” phrase as a meaningful adoptive rally cry for action?

Maybe a more direct and hip version of Apple’s I’m a Mac campaign? Or, is the I’m Down phrase, simply too confusing (and assumed negative) across the general consuming public?

Dear readers and especially our beloved marketing types, who’s down for sharing their wisdom on the subject?

A picture is said to say a thousand words, and ironically that is almost literally and exactly true when it comes to Apple’s focus on non-verbal icon branding.

A week before the 4th of July, Apple filed these three non-verbal trademark applications:

A
B
C

Clicking on each will take you to the detailed USPTO information for each application, but for our purposes here and the ease of discussion, let’s call them, A, B, and C, moving from left to right.

Clearly, each of the three contains a number of elements to form each of the claimed composite marks.

And, when design elements form the claimed mark or portions of the claimed mark, the USPTO recognizes that words are needed — at least behind the scenes — to explain and describe the claimed mark, even if those words are not part of the drawing for the claimed mark.

So, each individual piece of the mosaic must be identified and described in relation to each other piece that forms the whole collection of pieces.

Given that, how many words do you suppose were used by Apple to describe the claimed marks A, B, and C?

Sparing you the suspense, here is the answer: A = 1,008; B = 984; and C = 52.

Obviously, the more elements, and the more detailed the elements are, the more words are needed to accurately and fairly describe the claimed mark. What might that say about the scope of rights associated with each? Have a little patience on that question, please.

In the meantime, another question that arises might be, why file for all three?

My answer: To obtain layers of broad and narrow protection, to maximize the overall scope of trademark rights, and thereby keep the most competitive distance with newcomers.

Back to the question of the implications of using extremely wordy mark descriptions, although I’m certain there is not a linear formula that can be extrapolated from the number of words used to describe a non-verbal mark, it stands to reason that the more easily and efficiently a non-verbal mark is described, the greater the potential for enjoying broader and stronger rights.

In general, the more elements included in a claimed composite mark, the narrower the scope of rights, and the easier it should be to obtain registration at the USPTO without getting hung up based on potentially conflicting third party rights.

Imagine all the room for argument about the absence of likely confusion when only a few minor elements of a claimed mark overlaps with prior rights of another’s mark. The same principle should apply when it comes to enforcing those rights. When a newcomer only adopts a few of the many elements claimed in another’s prior mark, this opens the door for a healthy dialogue about peaceful coexistence without likely confusion, provided the only claimed mark is the entire mosaic as opposed to each piece or element that forms the whole.

I suspect this helps explain why Apple has either registered separately or sought to register each individual app icon as a standalone mark, and here are just a few of them to help make the point:

   

 

 

 

 

 

With all that in mind, going back to the mosaics claimed as marks A, B, and C, shown at the top of this post, I’d consider A to be the claimed mark with the most narrow scope (because it contains the most elements). Although you’d never guess it by the almost identical word count between A and B, I’d consider B to be a fair a bit broader than A because B is not limited by what surrounds it within A.

Of the three, C appears the most valuable and ground-breaking, if allowed. In my mind, it is the claimed mark with the broadest scope of rights, as may be evident by the relatively brief description of claimed mark C (but, stay tuned on whether the USPTO requires more verbiage in the required Description of the Mark section of the application during examination):

“The mark consists of of the configuration of a rectangular handheld mobile digital electronic device with rounded edges and an arrangement of twenty-two icons consisting of squares with rounded edges arranged in six rows on the screen of the device. The matter shown in broken lines is not part of the mark.”

If this description survives examination at the USPTO, C will be a valuable registration for Apple as it will protect the layout of the icons without any limitations as to what the icons are, what they look like, or their various color schemes.

Curious readers might wonder why Apple didn’t provide close to the same 1,000 words for C, as it did for A and B — the answer lies in the fact that Apple used dotted lines for the internal detail of each of the twenty-two icons, so that detail is excluded from and not claimed as part of the overall composite mark shown in C.

Knowing that Apple’s efforts to obtain a federal trademark registration for the configuration of the iPhone have been opposed by Samsung and Microsoft, we’ll need to wait and see what happens with A, B, and C:

We’ll also have to wait and see whether any of them lead to any fireworks at the USPTO.

For other recent DuetsBlog coverage of Apple’s IP strategy, check out Martha’s posts, here and here.

By the way, given my word count for the day, I better wrap it up, at least for now.

Apparently iPho by Saigon, a Vietnamese restaurant located in St. Paul, Minnesota, is quite good.

The logo design is eye-popping, and dare I say clever, but does it cross one of the many legal intellectual property lines?

We can all agree as to the source of the “inspiration” for this visual identity, right? Our little friend located in Cupertino, California:

But, can we agree on whether this use constitutes infringement or dilution?

Marketing types, would you be proud of creating the visual identity for iPho?

Following up from yesterday, is this a job for LogoThief?

Trademark types, what is the strongest objection to be made here, and which side would you rather be on, assuming you could be fully paid for your efforts? I know, I know, a highly unrealistic hypothetical, unless of course, insurance coverage might level the playing field.

The iPho name, if shown differently, could be used without raising any eyebrows, no doubt.

Whether or not you’re a fan of pho, who says phooey when confronted with this visual identity?

Look what the email spam filter snagged for the holidays:

As you may recall, this isn’t the first time we’ve seen iPad brand bait email solicitations. Back when they first appeared, the ownership of the iPad name was unsettled, but since then, it appears Apple has secured federal registration of the iPad brand name and trademark, at least, for a "hand-held computing device for wireless networking in a retail environment."

But, interestingly, Apple isn’t the only owner of iPad as a trademark.

So, as popular and notorious as Apple Computer’s iPad device is, it seems fair to ask, can Apple own a famous trademark in iPad worthy of federal dilution protection, when others (such as Mag-Tek, Siemens, and Coconut Grove Pads), each own federal trademark registrations for their own iPad trademark in connection with other goods?

Might the answer to that question explain why Apple apparently chose not to oppose registration of yet another’s iPad trademark, this one for a medical device?

I’m thinking, just because a product might be famous doesn’t necessarily mean the trademark for the product is also famous.

What do you think?

–Dan Kelly, Attorney

In the past on these pages, I have been hard on Apple Inc. for apparent missteps in securing trademark rights to some of its more well-known products (iPhone, iPad).  Last week, Apple landed a victory on the domain name front, winning a Uniform Domain Name Dispute Resolution Procedure (“UDRP”) decision for the appl.com domain name.  This was a no contest affair, and the panelist called it “a textbook example of typosquatting.”  Apple also owns another omitted-letter typo of its apple.com domain name, aple.com.  It does not appear to own the two other omitted-letter typos of its principal domain name:  appe.com or pple.com.

Admittedly, upon visual inspection of just the domain names themselves, neither appe.com nor pple.com, to my mind, really calls to mind apple.com.  Appe.com looks more like an added-letter typo of app.com (app.com seeming to be owned by the Asbury Park Press, though you have to look pretty hard to find it), and pple.com looks like a shortened form of people.com, predictably owned by People Magazine.

Well, pictures tell the story.  Here are screen shots of the appl.com, appe.com, and pple.com landing pages as they appear as of this writing:

All three are obviously trading on mis-directed traffic from apple.com, which goes to show you that domainers understand the dynamics of direct navigation and type-in traffic on the Internet.  They understand it better than most brand owners.

And here is a humorous aside that I stumbled upon in my research:  the World Intellectual Property Organization (“WIPO”), provider of UDRP arbitration services, can be found at wipo.org–and the owners of wipo.com know it.  Physician, heal thyself.

–Susan Perera, Attorney

Well, it appears that yesterday’s guest blogger, Andrew Miller, and I are on the same wavelength as I also prepared some thoughts on the new iTunes Ping social networking platform. I guess such is the case in the world of social media where current events can be discussed ad nauseam in a matter of minutes.

Apple’s current hot topic is the release of iTunes 10 which encompassed multiple trademark surprises.  The most noticeable change can be seen on your desktop if you have upgraded your iTunes software.

You may have noticed the iTunes logo has changed from:                             To:

                

If you didn’t watch the lengthy keynote presentation, Steve Jobs announced that the decision to ditch the old CD logo was made due to the fact that iTunes sales are on pace to surpass CD sales within the next year. Already, there has been quite a bit of criticism regarding the new logo, discussed in depth in Clinton Duncan’s post at Brand New.

The second trademark surprise was the addition of iTunes new social networking platform, which has been named Ping. Surely it was only a matter of time before Apple tried to take a bite out of the social network market but – Ping? 

Is anyone else surprised with the name choice? Ping is a well-known computer function for testing a connection between two computers.  And, even if you’re not a computer whiz you may be familiar with “ping” from Blackberry Messenger, which has a “ping” function that notifies the recipient of a message. Thus, Ping for connecting and sending messages to your friends via a social networking tool is not all that original.

What is even more interesting is that Apple entered into a license agreement with the well-known PING golf equipment brand to use the mark. What do golf clubs have to do with music oriented social networking you might ask? Well, Karsten Manufacturing (the owner of the registered PING mark for golf equipment) actually applied for numerous PING marks in connection with computer and online services just months ago. Take a look at a few of the applied for marks here, here, and here. Thus, Apple’s social networking venture might have created a potential risk of confusion with Karsten’s use of PING in connection with the applied-for marks.

Andrew’s earlier post aptly identifies the benefits that Karsten will receive out of the license agreement, namely, possible financial gain and association with a bleeding-edge technology company.

But, why did Apple pay for a license to use Ping, a snappy, but far from original mark? Apple could have easily chosen a mark that fit within its i-family of marks or, following in the footsteps of it’s world famous Apple mark, it could have chosen something arbitrary and new, either of these choices would have launched the new concept without the need for a license agreement.

Maybe this decision is not all that surprising for Apple. As you might remember, Dan opined on a similar trademark clearance issue with iPad earlier this year. What are your thoughts on the new Ping social media adventure?

 

—Andrew Miller, Intern, Fast Horse Inc.

In terms of name recognition, PING is to golf what Louisville Slugger is to baseball, so you’re right if you found it odd Apple would name its new music-based social network, of all things, Ping.

Apple is no stranger to trademark litigation after wrangling with Cisco (“iPhone”) and Fujitsu (“iPad”), but it reached what seems to be a mutually beneficial agreement with Karsten Manufacturing Corporation/PING Golf before product launch. Ping (the social network) hit one million users in its first 48 hours, despite generally poor reviews due to a confusing interface and lack of Facebook integration. Give it time – Ping will catch fire.

On Sept. 1, the day Apple CEO Steve Jobs introduced Ping at the Apple Special Event, Karsten/PING issued this highly opportunistic press release:

This announcement involves two companies that were founded by visionaries who created products that greatly impacted their industries.  Karsten Solheim invented the PING® putter in his Redwood City, California garage and went on to revolutionize the golf equipment industry.   The groundbreaking first Apple® computer was developed in nearby Palo Alto in 1976.

‘We are pleased to enter into this agreement with Apple,’ said John Solheim, Chairman and CEO of Karsten Manufacturing Corporation and PING.  ‘Like PING, Apple carries a reputation for innovation and quality.  I have always had great respect for companies that have changed and improved the ways things are done and I continue to model PING along those lines.  Apple is a truly great example of this kind of enterprise.’

(As an avid golfer and Mac addict, I can’t help but fantasize a golf club-meets-mp3 player hybrid. It’s not as crazy as you might think.)

Give Solheim credit for not only entering agreement with Apple, but also seeing it as an opportunity to strengthen the PING brand. Often, trademark agreements are based on one of two concerns — avoiding consumer confusion or maintaining the integrity of a brand. In allowing Apple to use the “ping” name, PING actually improved its own brand.

PING is a privately held company, so there was no concern over investor fallout. Will it spike late-season golf sales? Maybe not. The point is golfers love new technology and innovation, and they’re willing to spend thousands to keep their golf bag stocked with the latest and greatest equipment. PING got paid to associate its name with one of the world’s most respected personal technology brands.

Talk about a tap-in.

 —David Mitchel, Vice President of Norton Mitchel Marketing

Successful brands often find holes in markets that need to be filled. There are numerous examples to illustrate this point. Microsoft found a great niche in the computer software market and their success made Bill Gates one of the richest individuals on the planet. Apple’s iPod was a product innovation that really enhanced the company’s bottom line. In the 1980’s, Porsche expanded their line of sports cars into a new niche with the 944 and it helped save the company from bankruptcy. However, sometimes holes exist for a reason and they can’t be filled despite the best branding efforts.

The latest example to illustrate this is Devotion Vodka. Devotion Vodka is a protein based vodka. The protein used in Devotion is casein, the same type of protein found in dairy products. According to its website, Devotion is "the world’s first and only 80 proof, triple-distilled casein infused vodka made in the USA". Recently, Devotion announced that they signed Mike "The Situation" Sorrentino of "Jersey Shore" fame to be their spokesperson. Additionally, The Situation will have an equity stake in the company. I believe The Situation is a reasonably qualified spokesperson for this brand. The Situation likes to drink and party as evidenced by his actions on "Jersey Shore" and he is also a fitness enthusiast.

Despite the alignment between The Situation and Devotion Vodka, it is unlikely that this will be a successful brand. This is because the product concept is flawed. The vodka is aimed at a fitness oriented individual. However, vodka is not perceived as a fitness oriented beverage. Additionally, I believe that people will have a hard time understanding how casein protein fits into a hard alcohol product. If the product concept flaw wasn’t a convincing enough argument, consider Devotion’s pricing strategy. Devotion will enter the market similarly priced to Grey Goose. Grey Goose is a vodka brand that is well perceived and associated with quality. It also holds cachet with those who live a Jersey Shore style lifestyle, a target market for the Devotion brand. In a consumer purchase decision between Devotion and Grey Goose, the vast majority of consumers should choose Grey Goose because of its brand equity and stronger price-value proposition.

Continue Reading When Holes in Markets Can’t Be Filled