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.

– Mark Prus, Principal, NameFlash

I’m often asked by companies if they should change the name of a product, service or even the company itself. Here is my shortlist of 10 really good reasons to change your name:

  1. People Can’t Pronounce or Spell Your Name – Here are a few of the names chosen by startup companies last year: Zairge; Xwerks; Synthorx. If no one can pronounce or spell your name how do you expect people to remember it?
  1. Your Name Requires Explanation – Xobni (pronounced “zob-nee”) was founded in 2006 and made software for mobile and email applications. The founders of Xobni loved the name because it was inbox spelled backwards. However, without an explanation, most consumers could not “get it.”
  1. Your Name Is Generic Or Descriptive – If your product is called “Fast Chop” because “fast chopping” is the main benefit of your product, you may think you have a great name. But if your competitive set consists of products called EZ Chop, Speed Chop, QuickChop, and TurboChop then nobody is going to notice it. Advertising will be wasted because even if consumers think “Fast Chop” is great when they get to the shelf they will be confused by all the similar names and products. If your name does not stand out versus your competition you had better change it.
  1. You Have A New Target Or Strategy That Won’t Fit Your Current Name – Speaking at Macworld Expo in 2007, Apple CEO Steve Jobs announced that Apple was dropping the word “Computer” from its name. “The Mac, iPod, Apple TV and iPhone. Only one of those is a computer. So we’re changing the name,” said Jobs. Today, Apple is a powerhouse of consumer electronics and is a great example of why a strategy change should drive a name change!
  1. Your Name And Current Brand Identity/Execution Clash – In 2003 the world’s largest tobacco company, Philip Morris, officially changed its name to Altria Group. While some considered this a PR maneuver to distance the company from its tobacco heritage, CEO Louis Camilleri said that the name change was “an important milestone” in the evolution of the company. “It doesn’t signify an end or a beginning,” he said. “Rather, it marks how far we have come and gives us a framework for how much further we aim to go.” The sleek and modern Altria Group has been a star performer in the stock market since this name change.
  1. You Are Ready To Enter The Big Leagues – Larry Page and Sergey Brin started a search engine called BackRub. A year later they changed the name to Google, which reflected their mission to organize a seemingly infinite amount of information on the web. Blue Ribbon Sports was founded on January 25, 1964. The company, started by Bill Bowerman and Phil Knight, officially became Nike, Inc. on May 30, 1971. Sometimes the name you start with is not one you want to use when raising money from the investment community!
  1. You Can Add A Relevant Benefit To Aid Recall & Persuasion – Diet Deluxe was the name for a new frozen entree company which was renamed Healthy Choice to add a benefit to the product name. Sound of Music operated nine stores throughout Minnesota in 1978. After a tornado hit their largest store, the owner decided to have a “Tornado Sale” of damaged and excess stock in the damaged store’s parking lot promising “best buys” on everything. After Sound of Music made more money during the four-day sale than it did in a typical month, the company was renamed Best Buy. Is there a relevant benefit in your name? Should there be?
  1. Your Current Name Is An Ego Trip – The biggest factor in selling or gaining an investment in your business is the degree to which the business can operate without you. If your name is the business name, then growth and investment will be limited. Subway started out as “Pete’s Super Submarines” in Bridgeport, Connecticut. Do you think that Subway would have grown as fast if it were still called Pete’s Super Submarines?
  1. Your Current Name Is An Acronym – Sometimes the acronym represents the initials of the owners (e.g., A&W Restaurants after Roy Allen and Frank Wright). Sometimes the acronym is a shortening of a larger name (e.g., Aflac is the first letters of American Family Life Assurance Company). Acronym brand names are almost always bad. Not only do they take years of advertising to establish, the risk of mis-pronunciation is huge and can often cause negative brand equity. SAP is the market leader in enterprise applications and software. Their primary competitor, Oracle, loves to use the “sap” pronunciation and SAP-haters say the acronym stands for “Sad And Pathetic.”
  1. Your Name Is Not Likeable – What is the “Acid Test” response? If you expose the name to your target customer and she smiles when she hears it or says, “That’s a great name!” without thinking about it, then you may have a winner on your hands. On the other hand, if she has a puzzled look or a negative reaction, you might want to consider a change. I also count “polite indifference” as a failure. If people have no reaction, then they are probably too polite to tell you how bad it is. And please do not expose the name only to friends and family. These people are programmed to be nice to you and so you won’t get honest feedback. If your name does not bring a smile to your customer’s face, then maybe you should change it.

Of course, each situation is unique and there are always costs to changing a name that should be considered. Are there other situations where changing a name can be a good idea?

Maybe my memory is worsening with each year, but I have to admit that I do not recall “Black Friday” existing as a child. I know that I didn’t have school and I know that a lot of adults had the day off. I’m certain that quite a bit of shopping happened, but I don’t recall it being any sort of major event as much as a convenient time to get holiday shopping done prior to the Christmas rush toward the end of the calendar year.

One of my cohorts has already touched upon some of the history of Black Friday, so I do not plan to rehash that. I also don’t plan to question unbridled capitalism. I was raised Catholic, I let the Pope handle that. Instead, I just want to point out that for an event with such a singular focus on consumerism, I would have expected the advertising and marketing to be a bit more interesting. As far as I can remember, companies have primarily focused on straight-forward “lowest prices ever” advertisements. For most companies, this year’s biggest innovation appears to have been opening the stores earlier, which is the most innovative improvement I’ve seen since Coors Light allowed us to not only tell if our beer is cold, but if it is super cold.

There is one exception though, namely, the company behind the increasingly popular party game Cards Against Humanity. The company describes its product as a “party game for horrible people” that is “as despicable and awkward as you and your friends.” Rather than lowering its prices for Black Friday, they decided to go in a different direction with the following deal:

Yes, thousands of people “liked” the status, not to mention numerous comments, shares, and presumably other unsolicited social media advertising through other outlets such as twitter. Plus, a number of major internet and traditional media outlets picked up the story. According to Business Insider, sales were up on that day from a year prior (with the $5 increase), and sales spiked up on Saturday, once the product returned to its normal (i.e., “boring”) price.

As the Business Insider astutely points out, “Obviously, this kind of “offer” won’t work for everyone — or probably, anyone, ever again.” The product itself uniquely lent itself to this sort of snarky type of offer and, besides, it wouldn’t be as interesting the second time around. However, Wal-Mart, Target, Best Buy, and other major corporations, even with all of their business experience, advertising budgets, and marketing consultants, it seems like the best they could come up was charge less and open earlier. A couple of friends with a Twitter account charged more for their product, got free publicity, and even improved their sales numbers.

The sellers of Cards Against Humanity built a brand identity around their product, tailored their advertising to reflect that identity, found a way to engage potential customers in an interactive way, and, most importantly, they didn’t give up on the idea just because it was unconventional or because their retailers (Amazon) initially pushed back. Whether this exact offer in this specific form is likely to work for anyone ever again, isn’t really the point. Instead, the success of this campaign relied on marketing strategies that can benefit any product or company. I don’t know whether the people behind this product really are as “despicable” as they claim to be, but I don’t need any mountains to turn blue, black, or any color to know that they’re at least creative. Super creative.

I went to Best Buy on Monday to pick up a new modem (it probably would sound cooler if I said I was getting the Xbox One, but the truth is it was a modem).  It’s been a little chillier than average here in Minnesota this week, yet there were already three tents out in front of the store in anticipation of Black Friday.  Where else in the world would you see that other than in the US?  I asked the cashier how long they had been there, and he said that they showed up over the weekend.  People camp out for FIVE days to save a few hundred bucks on a television?!?  Do these people have jobs?!?  I certainly pride myself on fabulous purchases at a fraction of the price, but they have this wonderful thing called “the internet” where you can shop for deals in your PJs without waiting in line.  You just need one of these pretty little modem things.  Standing in line FOR DAYS to fight people for a toy or a deal on a TV is something I will never understand.  Watching the local and national news Thanksgiving night, the stories oscillated between a story about people standing in line to shop and a story about people standing in line for food — I’m a fan of capitalism, but there’s really something wrong with that picture.  But enough of my soap box.

Unlike SUPER BOWL, OLYMPICS, WORLD SERIES, or most musical acts that people might wait in line for maybe hours to grab a ticket, no one ever registered the term BLACK FRIDAY for discount retail services.   DOORBUSTERS also is not a federally registered trademark.    “Black Friday” originated as a phrase used in Philadelphia to describe post-Thanksgiving traffic.  Its use did not expand outside of Philadelphia until after 1975.  As applied to retail, the term was eventually used to describe when retailers went from operating at a loss to making a profit for the year.  The fact that no one registered the term BLACK FRIDAY related to retail services could be because it had already developed too much use descriptively or even generically that it could never function as a source identifier.  The earliest trademark application for BLACK FRIDAY in the USPTO database was filed in 1997 by Miller Brewing Company for beer, but was abandoned.

In 2012, however, BLACK FRIDAY  became a registered trademark for “beer” owned by one of my favorite craft brewers in Brew Town (Milwaukee) — Lakefront Brewery.

Another application for BLACK FRIDAY has been allowed for computer games, board games, and entertainment services related to games, which was applied for by Dynamics, Inc. but it will soon be abandoned for failure to file an Extension of Time or Statement of Use.

So while you’re out shopping today, hopefully you’ll spare some credit card swipes for Small Business Saturday® (celebrate small businesses) on Nov. 30 and Makers Monday (buy American) on Dec. 2.

P.S. Happy Thanksgiving, DuetsBlog readers!

 

Best Buy was the subject of some intense criticism at the end of last week when Chris Morran of The Consumerist Blog and Mike Masnick of the Techdirt Blog took Best Buy to task and Mike went so far as to label Best Buy a “trademark bully” for sending a cease and desist letter to Newegg for use of the “Geek On” logo shown above and for running a television advertisement poking fun at Best Buy who asserts the advertisement misleads consumers by portraying Best Buy employees as “slovenly and uninformed.”

We’ve previously questioned the scope of rights in Best Buy’s Geek Squad mark and whether it has sufficient scope to reach the use of other Geek marks by competitors, given the number of third party marks containing the term for similar goods and services.

In addition, Dan and I have both discussed the PR fallout relating to Best Buy’s previous God Squad trademark flap. I’ll have to say, this one leaves me continuing to wonder whether there is sufficient coordination/collaboration between Best Buy’s PR and Legal departments.

So, how do you come down on this one?

Is this legitimate trademark enforcement or another example of trademark bullying?

What about the complaint about the television advertisement, does that have merit?

It will be interesting to see whether Best Buy files a lawsuit on this one, so stay tuned.

Years ago I recall hearing a veteran trademark lawyer warn intellectual property continuing legal education attendees, "When your toolbox only has a hammer in it, everything in your world starts to look like a nail."

Fair enough. It’s time for all of us to revisit the contents of our professional toolbox.

Last week, following the firestorm of criticism surrounding Best Buy’s cease and desist letter to a Catholic priest in Wisconsin, Dan provided some balanced and helpful Thoughts on the God Squad Matter, ending his post by indicating an interest in "hearing the thoughts of others on the question of how best to approach a potentially sensitive enforcement situation like this."

In further support of my admittedly Monday morning quarterback efforts and Dan’s suggestion that Best Buy probably was better off picking up the phone on this one, I offer legal and PR types one of Matthew Broderick’s most memorable and applicable lines from Ferris Bueller’s Day Off: "Ringy dingy":

Yes, the telephone (not the shower-head) definitely needs to be one of the tools in any trademark lawyer’s toolbox, especially when it comes to delicate enforcement efforts like the one Best Buy faced with Father Luke Strand’s use of a God Squad logo that appeared to be inspired by Best Buy’s Geek Squad logo.

It is always important to keep in mind the ultimate goal of the particular enforcement effort, and, in many cases, a successful enforcement effort is when the trademark owner convinces another to stop doing what the brand owner finds to be objectionable, with as little effort, hassle, and expense as possible. If this can be accomplished without sending a formal cease and desist letter, all the better.

Taking it a step further, after a phone call, why not consider a face-to-face meeting for the delicate kinds of enforcement efforts that have the legal department consulting with the PR folks before sending any cease and desist letters in the first place? For example, how might this have played out differently for Best Buy if someone from the PR or marketing department had reached out to and even met with Father Luke Strand to offer the placement of a couple of year’s worth of Geek Squad ads in the weekly bulletin of the Holy Family Parish in Fon du Lac, Wisconsin, and in return, obtain a modification of the appearance of the God Squad logo on Father Strand’s one vehicle?

In the end, Best Buy’s explanation that sending the cease and desist letter "was a really difficult thing for us to do," implies that the PR and legal teams discussed the pros and cons before sending the demand letter, but it also begs the question of why a more creative and less routine approach to their trademark concern wasn’t pursued, especially since Best Buy also has expressed that "we appreciate what Fr. Strand is trying to accomplish with his mission."

–Dan Kelly, Attorney

By now, I assume that our readership is familiar with the “God Squad” story of this week’s news cycle.  If not, the executive summary is that Best Buy recently sent a cease-and-desist letter to a priest in Fond du Lac, Wisconsin requesting that he cease using a logo on his black Volkswagen Beetle that says “GOD SQUAD” and is similar in design to Best Buy’s GEEK SQUAD logo.

Here is Best Buy’s registered trademark:

And you can see a decent photo of Father Luke Strand’s car here.

There has been much ink spilled in the past week about this story.  (A good current report is here.)  I have seen and heard some commentary with an undercurrent of disdain for the mere fact that Best Buy sent a nasty lawyer letter to a priest.  I haven’t seen the letter, but have a couple of general thoughts.

First, as someone who is regularly called upon to send demand letters on behalf of brand owners, such letters can come to feel a bit routine, and there is a danger that both lawyers and brand owners can become numb to how shocking these letters can be to receive–especially to non-lawyers.  Lawyers who handle enforcement issues are immersed in conflict on a daily basis.  Most other people are not–at least not in so formal a manner.  There is always a risk that a demand letter will kick up some dust, and perhaps some negative publicity.  In my opinion, an assessment of this risk should be a part of the calculus in sending such a letter.  With all of that said, I understand completely the need for Best Buy to address the situation, as low-level a threat as it might seem to the average viewer.  (See, for instance, my post from last week.)

Second, and this may be stating the obvious, there are alternatives to a cease-and-desist letter.  Like picking up the phone.  I freely admit to being in the position of a Monday-morning quarterback on this one, but a call in this situation would have probably been the best decision, at least if Best Buy wanted to take the lowest-risk path for stirring up negative publicity.

On the other hand, “there is no such thing as bad publicity.”  Best Buy and Father Strand have both made the news, probably to the ultimate benefit of both of them or their brands, difficult as this may be to quantify.

I would be interested in hearing the thoughts of others on the question of how best to approach a potentially sensitive enforcement situation like this.

As a trademark type, something struck me as odd about the Best Buy logo image appearing on the brand new outdoor baseball scoreboard at Target Field, during the Minnesota Twins recent home opener against the Boston Red Sox, so I captured a photograph to discuss it here on DuetsBlog.

What caught my eye was the curious placement of the ® federal registration symbol. Its positioning adjacent to the words "Best Buy" appeared to convey that the words "Best Buy" must be distinctive and federally registered, separate and apart from the hang tag logo, and I knew better, or at least, I thought I did, as I’ll explain.

After all, I knew a few things for sure, things that should counsel against placing the ® registration symbol next to the words "Best Buy":

  1. Use of the federal ® registration symbol adjacent to matter not federally registered is a misuse of the federal registration notice which may result in serious repercussions such as false advertising liability, and/or a finding of "unclean hands," if there is an intent to deceive people into believing unregistered matter is, in fact, registered as a trademark; 
  2. Some twenty years ago in Best Buy Warehouse v. Best Buy Co., Inc., 751 F.Supp. 824 (W.D. Mo. 1989), "Best Buy" was buried in the trademark graveyard, when then Chief Judge Scott O. Wright held "that ‘best buy’ is a generic term not capable of receiving trademark protection";
  3. A generic term is the antithesis of a trademark. It can never function as a trademark to identify and distinguish the products or services of only one seller;
  4. Generic terms and trademarks are mutually exclusive concepts under the law. Generic terms are not subject to appropriation and they are ineligible for registration or protection;
  5. Generic terms are part of the "public domain" or "linguistic commons," they cannot be owned and they are free for all to use without risk of infringement or dilution liability;
  6. Best Buy actually asked for it, so to speak, because the genericness ruling was sought by Best Buy to short-circuit a trademark infringement case brought against Best Buy for its use of "Best Buy Co." and "Best Buy Superstore" in Kansas City, Missouri, by an earlier retailer of office furniture also operating in Kansas City, under the names "Best Buy Warehouse," "Best Buy Office Furniture," and "Best Buy Office Warehouse"; 
  7. In support of its successful genericness defense, among other evidence showing that "best buy" is nothing more than sales "puffing" in the area of retail sales, Best Buy had engaged an expert witness who testified that the term "best buy" is generic when used in association with the sale of goods to the general public;
  8. Best Buy’s silver-bullet style genericness defense resulted in the grant of summary judgment on all counts of Best Buy Warehouse’s complaint, including trademark infringement, false designation of origin, unfair competition, trademark dilution, and trademark disparagement;
  9. Former Chief Judge Scott O. Wright’s decision, finding "Best Buy" generic as a matter of law, and not the subject of trademark protection, was affirmed by the Eight Circuit Court of Appeals, and then the U.S. Supreme Court declined to hear any further appeal, so the genericness ruling became a final judgment; and 
  10. Each of these federal registrations containing "Best Buy" had expressly disclaimed exclusive rights in the words "Best Buy":

Mark Image  Mark Image

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Mark Image

As it turns out, however, what I didn’t know or appreciate is that Best Buy has been quietly working behind the scenes to undo the normally permanent implications of the genericness ruling by affirmatively seeking federal registration. I also didn’t know or appreciate until now that Best Buy convinced a Trademark Examining Attorney at the U.S. Patent and Trademark Office to approve for publication "BEST BUY," just the words, in standard character, without any design or style limitations. And, since no one opposed, a federal registration for BEST BUY issued about two years ago. As such, at least for the time being, there is no misuse of the registration notice symbol appearing in close proximity to the words BEST BUY. 

This may very well be the first time in American trademark history, where a party has avoided trademark infringement liability by winning its genericness defense and then later obtained a federal trademark registration for the very words it had previously convinced a federal district judge were generic and incapable of any protection.

Apparently recognizing the gravity of the change in position, Best Buy’s 2007 trademark registration application was not the garden variety type, but instead, it included a variety of atypical materials, including testimony from Best Buy’s Senior Vice President, Marketing Communications and Business Operations, testimony from a survey expert, and perhaps most significantly, a thirty-one page legal brief detailing and arguing Best Buy’s current position on the subject, including these highlights:

  • BEST BUY is not generic;
  • BEST BUY is descriptive;
  • BEST BUY has acquired distinctiveness;
  • Judicial estoppel should not be applied;
  • Best Buy’s different positions are not clearly inconsistent;
  • Collateral estoppel should not be applied;
  • The de facto secondary meaning doctrine should not prevent registration; and
  • Even if once generic, the Singer doctrine permits protection of BEST BUY as a trademark.

Needless to say, Best Buy’s submission makes very interesting reading, and next week, I’ll explore it in more detail. In the meantime, I wonder what Best Buy Office Furniture thinks about it?

More importantly, what do you think? 

Should the BEST BUY registration survive litigation scrutiny?

Should it matter who might challenge the registration down the road?

RadioShack recently introduced a new name, rebranding its stores "The Shack", which now adorns their retail environment and marketing efforts.

The change was prompted by a desire to update the 88-year-old brand as they transition to mobile phone and wireless products without losing brand equity and mind-share, according to RadioShack. As Dan Neil of the Los Angeles Times mused, "For a company that wants to talk up its expertise in mobile phones, no one seems to have noticed that mobile phones are radios!"

To officially roll out the new, shortened, and supposedly hipper moniker, RadioShack staged "The Shack Summer Netogether" in NY and SF August 6 – 8, broadcasting the event live via "massive laptops" located in Times Square and Justin Herman Plaza, respectively. Video was streamed live on their Facebook page and their redesigned web site.

The current trend to truncate brand names is puzzling. Is this an attempt to beguile the text-message obsessed youth market, where everything is "abrv8d"? Or drive up sales through brand-brevity because we lack long attention spans?

I understand distilling a brand to its essence. Coke and FedEx are good examples, but Pizza Hut and Circuit City are not.

Continue Reading A Shack by Any Other Name…