Last Friday was a big day for Erik Brunetti. He won his appeal at the CAFC, opening the door to federal trademark registration of his four-letter-word “fuct” clothing and fashion brand name.

The same door swung wide open for all other vulgar, scandalous, and immoral designations used as trademarks, because the 112-year old registration prohibition was found to violate free speech.

You may recall where I take a knee on the free speech argument as it relates to the government’s issuance of federal trademark registrations, see here, here, here, here, here, here, and here.

I’m continuing to believe Congress has the power under the Commerce Clause to distance itself from and not be viewed as endorsing certain subject matter on public policy grounds, especially when Certificates of Registration are issued “in the name of the United States of America.”

Having said that, I’m thinking the federal government has done a less than stellar job of articulating and advocating for this right, which may very well explain the current state of affairs.

What is striking about the CAFC ruling is its breadth. It isn’t guided by the Supreme Court’s Tam decision — requiring viewpoint discrimination — as the Tam Court found with disparagement.

The CAFC did not decide whether the “scandalous and immoral” clause constitutes impermissible viewpoint discrimination, instead it seized on mere content as lower hanging fruit for invalidation.

The problem with focusing on content alone is that it proves too much. Trademarks, by definition, are made up of content, and many other provisions of federal law limit the right to register based on content, so, if this analysis holds, what additional previously-thought-well-settled provisions of federal trademark law will fall? Importantly, some even allow for injunctive relief: tarnishment.

Asked before, but will dilution by tarnishment survive this kind of strict free speech scrutiny? According to the CAFC in Brunetti, strict scrutiny applies even without viewpoint discrimination.

All that leads me to explore with you Brunetti’s line of “fuct” clothing, and in particular, this t-shirt which is surprisingly for sale online, here.

We’ll see for how long it’s available online, or whether Mr. Brunetti will need to Go Further, to get another brand’s attention, hello, Ford:

It’s hard to imagine the famous Ford logo, consisting of the distinctive script and blue oval, not being considered sufficiently famous and worthy of protection against dilution — without a showing of likelihood of confusion. But, given Tam and Brunetti, is a dilution by tarnishment claim even viable, or is it just another federal trademark provision about to fall, in favor of free speech.

Just because Mr. Brunetti may be anointed with a federal registration for the word “fuct” doesn’t mean his depiction of the word in the above style and design is lawful for use or registration.

So, if Ford does pursue the Brunetti t-shirt, under a dilution by tarnishment theory, and if it were considered to be a viable claim, in the end, might Mr. Brunetti be the one, let’s say, uniquely suited — to vanquish tarnishment protection from the Lanham Act?

Or, will another potty-mouth brand be the one to seriously probe the constitutionality of dilution protection against tarnishment?

Last but not least, and sadly for me, last Friday also was a big day for Mr. Daniel Snyder too.

–Dan Kelly, Attorney

Certain late-baby boomers and gen X’rs will know that 3 is “The Magic Number.”  Don’t believe me?  See here.

I raise this cultural referent principally because I once stumbled upon, quite by accident and for reasons that I cannot now recall, the following items in the U.S. Trademark database:

  • The English translation of “SAMSUNG” is “three stars.”
  • The English translation of “MITSUBISHI” is “three rhomboids.”
  • The English translation of “SANYO” is “three oceans.”

I was starting to wonder if I was on to something, like the blue oval phenomenon, thinking that there might be some Asian cultural affinity to the number three, but I was hard pressed to find other well-known (in the U.S.) brands from Asian companies that also had ties to the number three.  Alas, another great theory down the drain.  But I did find some telling design trademarks for these companies, some of them admittedly old:

And, of course, astute readers will know that Samsung’s current logo is…

Continue Reading The Magic Number

–Dan Kelly, Attorney

I recently had another experience of coming across a branding trend that, while perhaps old in the creative world, hit me squarely through close-in-time repetitive encounters with the phenomenon, starting with these three marks:

Not to get too complex, but the “My 29” station carries broadcasts of nearly all home and away Twins games (and I think plugs the “My Twins Tickets” website), and during one such broadcast, I saw a commercial for my Talk 107.1, which is a local talk radio station (actually a gossip radio station, if I can take its ads at face value).  My, my, my!  What’s more, the Twin Cities my Talk 107.1 is not even the only 107 using the MY branding approach:

Admittedly, the others appear to be in different parts of the country–but that’s just the stations in the 107 band.  I shudder to think of how many I might find across the full FM dial and “coast-to-coast,” to borrow another hackneyed radio phrase.

This phenomenon is a bit easier to quantify than the blue oval phenomenon:  There are more than 5,500 registered trademarks in the U.S. that use the word MY, and the related ME formative boasts more than 2,500 registrations.  These registrations are likely the tip of the iceberg of a host of unregistered uses.  There is clearly a marketing principle at work here based upon the objective evidence of the ubiquity of these terms.  The irony is that in marketing ME and MY goods and services to everyone, they’re not really “mine” or “yours” or any one person’s at all, are they?  Is this why MySpace is going the way of the dodo?

Well, let’s say that’s true as a general principle–that there’s an inherent tension in marketing “my” goods and services to everyone else.  Would it not make more sense to be more inviting, to market goods and services as “yours” and not “mine”?  You bet.  As of this writing, there are almost 14,000 registered trademarks in the U.S. that use the word YOUR, or variants, and more than 11,000 using YOU or variants.  From a meaning standpoint alone, YouTube sounds much more inviting than MyTube.

Whether to use MY or YOUR will invariably depend upon numerous other variables like context, point of view, phonetic considerations, and much more, but be assured that whichever you choose, you will not be alone.

What do you think, is Overstock.com selling bling with the Fordless blue oval logo?

Enamel Turquoise with Blue Ovals Bangle Bracelet

As you may recall from my post back in September, Ford Motor Company is attempting to register the below shown non-verbal logo as a trademark for a variety of goods in Int’l Class 12:

Mark Image

And, as you may recall from Dan’s I See Blue Ovals post back in August, there are far more than a handful of blue oval logos out there besides this one:

 

The pending Fordless blue oval intent-to-use trademark application recently was examined by the U.S. Patent and Trademark Office (PTO), and on October 23, 2009, the PTO found no substantive bases for refusal, but instead it issued an initial refusal noting only a couple of purely procedural or technical deficiencies, concerning the wording in the lengthy description of goods and the need for Ford to submit a claim of ownership to some related registrations (here, here, and here).

Continue Reading More On The Fordless Blue Oval

I must admit, I was quite intrigued by Dan Kelly’s Duets blog entry “I See Blue Ovals” (August 28, 2009). It got me thinking about some of the trends occurring in logo design today. My 20+ years in the world of branding has witnessed a few notable changes. Perhaps the most significant is the application of 3D effects to identity design. Many logos which were originally two-dimensional (circles), have recently morphed into spheres.

Take AT&T’s 3D sphere which replaced a 2D circle logo.

Minolta’s 3D design form also replaced its old 2D form.

XBOX has adopted a 3D design. 

Similarly, Xerox now uses a 3D sphere—a dramatic departure from their old logo (some would say that their new design borrowed heavily from XBOX).

This proliferation of 3D spheres also includes Firefox, BT, Sony Ericsson, and Wikipedia, to cite a few.

Part of the explanation for this transformation is pure evolution and advance in the field of design itself. CAD programs are now common in the design community, enabling and encouraging the application of three-dimensional drawing for corporate identities.

3D logo design isn’t limited to the development of spheres. GM, ABC, Apple, Ford (yes, the blue oval), Dell, VW, and Chevron (as well as countless others), have all been redesigned to bring dimensionality as well as a more modern, contemporary look and feel to their visual identities. As this trend continues, look for more logos of all shapes and sizes to take on 3D effects.

–Alan Bergstrom, Brand Insights

–Dan Kelly, Attorney

I think Steve once remarked something to the effect that the Internet is employment security for trademark attorneys.  Road tripping is too.  On one such recent occasion, my wife remarked on the similarity of Culver’s blue oval signage to Ford’s famous blue oval.

Obviously, there is no issue here from a trademark infringement standpoint.  Culver’s is clearly in the fast food business, and Ford is an automotive company.  No, the intrigue for me was how I started seeing blue ovals everywhere!  First was Carrier:

Then I noticed the Nasonex logo on a note on my desk from a promotional notepad:

Then the one that put me over the edge, the one that has now made me believe that there is a proverbial vast right-wing marketing conspiracy to toy subliminally with my latent positive associations with blue ovals:  Malt-o-Meal.

As if this were not enough, Brad, reading over my shoulder, suggested I take a look at American Idol:

Yikes!  What’s more, Brad pointed out that Ford is a major sponsor of American Idol!

Joking aside, isn’t it kind of interesting that of these examples, several use a light line to help outline the oval?  From a design standpoint, it seems to enhance the overall shape and clarity of the designs that use it.  I have a secret hope that there is some James Burke-esque “Connections” link in the depths of humanity’s art history that might explain the blue oval phenomenon.  I wonder how many marketing surveys exist that show positive associations with blue ovals?  Is this just a case of sensitivity on my part to the phenomenon, or could I find similar phenomena with, say, green triangles?

While you lose sleep (or not) over these questions, feel free to pass the time running Internet searches for the words “blue oval” to see which of these blue ovals might claim to be the blue oval.  (Hints here here here here here and here.)

UPDATE:  The hits keep coming: