As I mentioned last week, Apple’s present iPhone Xs billboard advertising campaign is ubiquitous at the moment, especially this image, totally flooding the Minneapolis skyway system, and beyond:

Putting aside whether the unique lighting and reflective nature of the indoor billboards do justice to the art of the iPhone Xs ad, I’m also questioning whether the Xs repetition might be, excessive?

See what I mean? Above and especially below, with stretches of hundreds of feet — in the frozen tundra of our Minneapolis skyway,  nothing in sight, but the same, glaring and reflective Xs ad:

A few questions come to mind. Repetition in branding, yes it’s important, but are there no limits?

In other words, we know Apple can afford to dominate our skyway billboard space, but should it?

And, if so, with what? Apple’s user-generated content campaign was welcome, brilliant and unique.

But, what is the end goal of covering the Minneapolis skyway, with a train of identical Xs boxcars?

Isn’t the art of the ad lost when it is the only thing in front of you, or should I say Outfront of you?

A boring train of Xs boxcar ads builds no momentum to a destination, like Wall Drug ads on I-90.

Where is this train of repetitive ads supposed to take us, online to drive more holiday unit sales?

That seems doubtful, the ad doesn’t explain why one should replace an earlier version with the Xs.

Ironically, Apple’s current struggle is distancing itself from the stock market’s focus on unit sales.

Billboard advertising is said to be effective for brand awareness, but Apple hardly struggles there.

I’m not seeing the point of this ad, and repetition won’t solve the problem of a saturated market.

I’m just left feeling like I paid too much for my Xs, because Apple wasted too much on these ads.

Welcome to another edition of trademark stories that are inspired by billboard advertisements:

This one was captured for obvious reasons, if you’re familiar with our interest in brandverbing:

Putting aside whether early October is too early to be promoting holiday wine shopping without a hint of a Halloween theme (there’s Stellaween for that), thoughts about the Stellabrate verbing?

Does Stellabrate make you want to throw a party? Hamm it up? Tanqueray? Or, count bottles?

Stella Rosa (Star Rose) has poured itself an overflowing glass of Stella-trademarks (Stellabrate, StellabrationStellaweenStella Peach, Stella Berry, Stella RedStella Pink, Stella Gold, Stella PlatinumStella BiancoStella Babies, Stella Moscato, Stella Rosso, Stella Rose, It’s Stella Time, and Stella Gets Around), but it does not own the six-letter, one-word, star of the trademark show:

If the actual Stella trademark was in Stella Rosa’s constellation of trademark rights, it likely wouldn’t need to be coexisting or peacefully orbiting with the likes of these other wine “star” marks: StellaGrey, Stella Bella, Stella MaePoggio Stella, AquaStella, and Buona Stella.

While Stella Rosa can continue to brandverb with Stellabrate, and grow its constellation of Stella-trademarks, without Stella, becoming a really bright trademark star isn’t likely in this wine galaxy.

Much less in a beer garden:

When can a brand owner lawfully use a competitor’s trademark on the brand owner’s product?

Over the years, we’ve lifted away a lot of dust on the hairy subjects of classic trademark fair use, nominative fair use, and comparative advertising, especially in the context of billboard ads.

It isn’t every day we see comparative billboard ads actually affixed to a product in question, so I can’t resist sharing this vacuum cleaner canister that captures all of these legal allergens at once:

For those unfamilar with the fierce competition between the Shark and Dyson vacuum brands, above is a cropped photo of a Shark Lift-Away canister vacuum, from my home closet.

As you can see, the label affixed to the canister portion of the vacuum actually refers to the competing Dyson brand twice. Just imagine what our friend James Mahoney might be thinking.

Why would the leading household vacuum cleaner brand — Shark — stoop to give its competitor Dyson free mentions (albeit negative) and publicity? Isn’t that kind of like punching down?

Actually, I’m not sure whether Shark had yet surpassed Dyson as market leader, when the canister left the store and entered our closet, so the above label might have been a punch up?

And, if comparative advertising induces sales, why does someone who already purchased the product need more reminders — with each use — that Dyson sucks, in more ways than one?

Turns out, the label shown above, as we now know, is fairly easily removed, so I suppose the joke is really on us, for leaving this comparative advertising on the product for more than a long while.

One of the dangers in affixing comparative advertising claims or content to the product itself may be, over time the claim might lose its original truth; perhaps that’s why the label is removable?

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.


The above advertising billboard is plastered all over the Twin Cities at the moment, and it got me thinking, so here I am, once again, writing about Coke Zero, remember this can?

Coke obtained a favorable decision from the TTAB early last year, ruling that ZERO is not generic for a soft drink category, instead it is descriptive and Coke has secondary meaning in it.

So, why on earth has Coke positioned SUGAR immediately next to the word ZERO beneath the Coca-Cola script in widespread billboard advertising and packaging?

Putting the key trademark issue aside, it doesn’t even look like there is a good business case for it?

Had the above billboard advertisement and depicted bottle been part of the TTAB case decided last year, instead of specimens like the above can, seems probable we’d have seen a different result.

Has Coke forgotten that like functionality for non-traditional trademarks, genericness can be raised as a validity challenge for word marks, at any time?

Coke Zero, welcome to the Genericide Watch.

By now, you’re familiar with my enjoyment in capturing and sharing new billboard signage that hits the streets of the Twin Cities. Question, what tagline might have inspired this one?

Was the Minnesota Renaissance Festival inspired by Nike’s famous “Just Do It” tagline?

Almost four years ago now, we noted — in this gem from the archives — the following about Nike’s famous “battle cry” tagline when we discussed “Just Ship It” reluctance with Seth:

“The irony in Nike’s ‘battle cry’ tagline is that its trademark enforcement program for the ‘Just Do It’ tagline and mark is not a model of clarity or simplicity, much less one easily understood by those paid to advise clients about the risks of potentially conflicting trademark rights.”

We further noted that Nike had only filed two oppositions with the TTAB enforcing its “Just Do It” tagline since Nike’s previous resounding TTAB win against Just Jesu It back in 2011.

Since that October 22, 2013 blog post gem, Nike appears to have stepped up enforcement activities at the TTAB, filing twenty “Just Do It” oppositions at the TTAB, with all concluded proceedings showing victory for Nike:

  1. Just Fake It for clothing;
  2. Just Mak’in It for clothing;
  3. Just Fix It for golf equipment;
  4. Just Chew It for chewing gum;
  5. Frac-N-Hose Just Frac It & Design for clothing;
  6. Life Just Live It for clothing (opposition withdrawn after “Just” removed from applied-for-mark);
  7. Just Did It for clothing (Board granted opposition, sustaining likelihood of confusion and dilution by blurring grounds);
  8. Just Choose It for clothing;
  9. Just Weld It! for clothing;
  10. Just Be It! for clothing;
  11. Just D!dIt & Design for online marketplace services;
  12. Just Taste It! for dietary supplements (still pending);
  13. Just Beer It! for clothing;
  14. Just Ripp It for clothing;
  15. Just Dough It for cookie dough;
  16. Just Girl It! for group coaching services;
  17. Just Bring It for clothing (WWE withdrew application with prejudice);
  18. Just Taste It for advertising services (still pending);
  19. JustSayIt for books and ebooks concerning positive oral communication (still pending); and
  20. JUSTKIT for clothing(still pending).

This recent timeline of oppositions seems to show more clearly that third party trademark applications employing the “Just __ It” format will draw attention/opposition from Nike.

Interestingly, since it doesn’t appear that the Minnesota Renaissance Festival is seeking federal registration, we might never know whether Nike objects to the use shown above.

Instead of tweaking the middle term of Nike’s tagline — “Do” — as all of the oppositions above show, the Renaissance Festival’s format plays on the leading word “Just,” substituting “Joust,” a term with special meaning in the context and theme of its festival.

Is this a material difference that justifies peaceful coexistence, or is it simply a new form of “battle cry” that similarly will be linked to Nike?

If you were advising Nike, would you recommend activating a trademark “battle cry” against use of “Joust Do It!” in the above billboard advertisement?

What if this tagline became an annual tradition for promoting the Renaissance Festival’s entertainment services?

What if a federal trademark or service mark application was filed?

Finally, what if the tagline was applied to clothing to promote the Renaissance Festival?

CaptainPhilipRapalaIt took me a little while to find the message and humor in this one. I’m generally not the first to get the joke, probably dead last on this one though, since the fishing opener was last month.

As you know, we have enjoyed commenting on Rapala’s billboard ads each year, but when I first saw this one, I figured it must relate to some inside joke about a certain film I never saw.

How much do you like this Rapala Billboard ad?

I’ll ask a larger question too, how do marketing types go about predicting ad effectiveness when the embedded and intended humor is not immediately accessible to all potential consumers?

MYMellowYellowLove the new bold look of the Mello Yello can, and it’s hard to miss the prominent abbreviation to MY, along with the trademark assertion: This is My World.

Actually, as we have written before, there are more than a few operating within the world of MY, and that’s not limited to our writing about pillows and other such talk.

Yet, it looks like Coca-Cola was able to secure the stylized depiction of the MY abbreviation as a trademark for soft drinks, and the federal registration should issue any day now:

MYmelloyelloMy questions: Why no standard character trademark application for just the word MY too, or is Coca-Cola trying to avoid conflict with another MY in their soda space with a different style?

And, for our marketing types: Would you promote MY as an acronym or initialism, if you were Coca-Cola? And, would you eventually shed or diminish the originating words Mello Yello?

Seems to be a mixed message here: Coca-Cola appears to describe its mark as an initialism to the USPTO with “the letters ‘M’ and ‘Y’ in a stacked, stylized form,” but the message to consumers shown above in the billboard ad appears to invite seeing and reading the letters as an acronym and the word MY, meaning “of or belonging to” the speaker or writer.

The Minnesota History Center is currently promoting its Toys of the ’50s, ’60s and ’70s exhibit — my favorite promotional billboard is the one captured above, featuring none other than Gumby.

I can still remember my Gumby toy and watching the Gumby Show as a young child along with the Davey & Goliath television series, both creations of Art Clokey (who passed away at 88 in 2010).

The programs were so perfectly wholesome, making the anthropomorphic Gumby character the natural target of an iconic series of R-rated Saturday Night Live parody skits featuring a young and hilarious Eddie Murphy as Gumby, a “cigar-smoking show business primadonna,” who coined the infamous and often repeated catchphrase: I’m Gumby Dammit!

The Gumby trademark — bolstered in strength, if not fame, by the character’s status as a long-lasting pop culture phenomenon — has enjoyed a similar exclamation of self-confidence and apparent, well-deserved respect from others over the years, as the brand’s owner Prema Toy has had virtually no trademark oppositions (one for footwear averted with a little help from an Examining Attorney), at least as it appears from the USPTO’s online TTAB database. This third party application for Gumby’s Pizza, was most likely brought into the fold, as detailed below.

The GUMBY word mark is still federally-registered in Int’l Classes 9 (DVDs), 16 (paper products), 25 (clothing), 28 (toys), 41 (entertainment services), and Gumby’s is also federally-registered in Int’l Classes 30 and 42, since Gumby’s Pizza & Wings is a restaurant franchise offered by Prema Toy. I figured there would be non-verbal product configuration trademark registrations for the appearance of the Gumby character too, but nope, nope, nope, only two dimensional depictions (here, here, and here).

Notwithstanding the fact that the only federally-registered marks consisting of or including the GUMBY word are owned by Prema Toy, this once singular trademark meaning of GUMBY recently has been threatened by a hightech software firm called Digital Surgeons who have dubbed one of their products with the so-called GUMBY FRAMEWORK trademark for “software development tools for the creation of mobile internet applications and client interfaces.” Their application was published for opposition last summer, and there is no record of Prema Toy opposing or seeking an extension of time to oppose, and once Digitial Surgeons submits evidence of use, the registration should issue.

Digital Surgeons is currently promoting GUMBY 2.6, as a flexible, responsive CSS framework — powered by Sass: “Now more flexible than ever.” So, the Digital Surgeons have drawn their scalpels to clearly play on at least the meaning behind the iconic Gumby character, perhaps explaining this statement on the bottom of their website:

“Disclaimer: Gumby Framework holds no affiliation or association with our friends at, Primavision Inc. or Prema Toy Inc.”

Since the Digital Surgeons are apparently friends with the folks at Prema Toy, perhaps the disclaimer is enough to satisfy the brand owner, assuming they are aware of the use and pending application for federal registration.

So, if you were responsible for the GUMBY brand, how flexible would you consider it to be, and would you easily bend on this encroachment? Why?

If a flexible approach is adopted to permit unrelated brands that play on the bendable meaning associated with the GUMBY brand and character, will it lead to others, eventually taking the GUMBY brand into a very different posture and position? Would it make a difference to you to know that the Prema in Prema Toy means “heart” in Sanskrit?

Oh, and in case you’re wondering where Gumby’s best pony pal Pokey is, it appears that he doesn’t hold the same status as Gumby, since Pokey’s registrations have lapsed (here and here).