When ideas from different realms converge in a single moment of time, a new blog post is born.

Catcalling” — albeit a rebranded, reimagined, or redefined version of it — recently has been front and center in a political Twitter storm and remains a lightning rod in the non-stop news cycle.

So, imagine my surprise also to see the sturdy Cat construction-oriented brand calling my fashion-forward daughter to select it for her brand new, back-to-school footwear look this coming Fall:


Photo credit: G. Baird

This isn’t our first rodeo with Cat footwear. We previously kicked heels with my son’s steel-toe boot choice, also covering the careful timing of Cat’s truncation from the four-syllable Caterpillar.

While the brand extension from construction and earth-moving equipment to boots makes perfect sense, especially the steel-toe variety, here is the explanation for women’s casual dress shoes:

Photo credit: G. Baird

Marketers, the extension seems unnatural and forced to me, but I’d love to hear from our readers who have a stronger vantage point on whether this brand extension will work long term for Cat.

What called me to create this story for you is the hidden trademark strategy to be unearthed.

“Footwear” is one of those broad descriptions of goods that the USPTO will accept as sufficiently precise. Selecting it facilitates and better positions your brand for line extensions yet to come.

In other words, narrowly selecting “slippers” or “steel-toe boots” over “footwear,” in trademark filings may leave you boxed in when seeking to expand or extend the lines of your present brand.

Not sure when Caterpillar first introduced women’s casual dress shoes under the Cat brand, but it has owned federally-registered rights in the word CAT for “footwear” for more than a decade.

Caterpillar likely began using CAT with steel-toe boots, but given its broader registered rights, I’m guessing it didn’t lose much sleep wondering if it could grow into those broader registered rights.

In fact, this Cat has become quite active enforcing its broader rights at the USPTO’s TTAB, here.

On a recent shopping trip, I couldn’t help but notice some interesting brand extensions inside and outside the stores.

My encounter inside involved Burt’s Bees . The brand encompasses a wide variety of lip balms, lotions, cosmetics, and personal body care items. (pets, too). Yet I discovered a new addition to the lineup: Burt’s Bees protein shake powder.

While most cosmetics and lip balm companies don’t make a jump into the nutrition field (a ChapStick shake just doesn’t sound appetizing), Burt’s Bees’ extension seems to make sense. In my mind, I’ve always associated it with an image of healthy, natural products, and nutrition products seem to fit that image.

Outside, I ran into a similar situation in the lawn and garden center: a blast from childhood past:

This seemed a bit further afield than Burt’s Bees. Had my childhood sugary “fruit” drink really expanded into live flowers? After all, the company does sell Hawaiian Punch lip balm.

However, the answer seems to be no. The flowers are a sold by Canadian company Fernlea Flowers. The company has even registered the mark with the U.S. Patent and Trademark Office, without an opposition from Dr. Pepper/Seven Up (the owner of rights in the HAWAIIAN PUNCH mark).

Are flowers sufficiently related to fruit juice and lip balm such that Dr. Pepper should have objected to the use of HAWAIIAN PUNCH for flowers? Generally speaking, I’d say the goods are highly unrelated. Yet the marks are identical, the HAWAIIAN PUNCH mark has been licensed for other non-food goods, and the HAWAIIAN PUNCH mark is arguably famous. Plus, the mark could have been licensed because the flowers are the colors of various flavors of Hawaiian Punch drinks. Are these factors enough to create a likelihood of confusion?

If there isn’t a likelihood of confusion, is there a claim for dilution? This seems more plausible, but would extending protection of HAWAIIAN PUNCH to live plants in this instance effectively give the owner a right in gross to the phrase HAWAIIAN PUNCH? Is that okay for marks that can establish that they are famous? What do you think, was this an enforcement punch worth pulling?

As a frustrated and bored Minnesota Vikings fan, Monday Night Football last evening caught my attention with the division battle between the Green Bay Packers and the Chicago Bears. In case you missed it, the Packers lost to the Bears, despite the Packers typical home field advantage at the legendary Lambeau Field.

As much as the plentiful Packers fans in our office grate on those who still claim to be Vikings fans, I already can hear the celebrations brewing around the water cooler later this morning.

The novelty hat depicted to the left got a lot of air time during the game, probably more than Aaron Rodgers, given his early injury and exit from the game. It even found its way into a State Farm Insurance commercial featuring a crazy Packers fan flying off the wing of an airplane.

In case you’re wondering, the configuration of the novelty hat is protected as a federally-registered non-traditional trademark in the color yellow/gold. The term CHEESEHEAD also is federally-registered as a word trademark for novelty hats. Who owns these trademarks? Neither the Packers nor the NFL — the rights are owned by a brilliant company, with roots in the south side of Milwaukee, called Foamation.

Seems as if the notoriety of Foamation’s novelty hat and brand is growing, so it is only fitting that the product offerings expand beyond the original novelty hat to include all sorts of other novelty headwear, apparel, drinkware, and other gift items.

Given this cheesy brand extension, it is good to see that Foamation recognizes the importance of expanding its trademark portfolio beyond the original novelty hat trade dress and word mark to capture the essense of the trade dress as it migrates to other differently shaped products: “The mark consists of the color yellow/gold and a pattern of pock marks which are circular or oval-shaped depressions applied to the entire surface of the goods in a manner evoking the appearance of cheese.”

Unfortuantely, Foamation is encountering some problems at the USPTO, so we’ll see how much cheese Foamation is willing to invest in overcoming them.

Within the last few weeks the USPTO issued a final refusal on two substantive grounds. The assigned Examining Attorney is maintaining the “failure to function as a trademark” registration refusal, and she is also continuing to refuse registration, asserting that the above drawing of the mark does not match the specimens of use.

Stay tuned, we’ll keep you posted on developments with this interesting non-traditional trademark application.

But until then, gotta love the creativity and ingenuity that flows from an unhealthy sports rivalry, meet the GRATERHEAD: “For too long, the Packers and their fans have raided our stadiums, drunk our beer, eaten our food, and beaten our teams—all while wearing ridiculous wedges of cheese on their heads.”

So, has the CHEESEHEAD finally met its match? It apparently did last night, but in a friendly effort to pander to those grating Packers fans in our office, there is a lot of season yet. We’ll see.

What other anti-Packer and trademark-worthy headwear might we see down the road?

As we have written before, any brand extension requires the necessary due diligence to mitigate the risk of a serious trademark conflict. And, from a trademark perspective, both strength and scope of rights necessarily expand as the number of different goods and services sold under the brand grows.

If recent marketing research on brand extensions is followed by brand owners, the necessary due diligence is going to become that much more important — both risk and reward will become significantly elevated with the advent of more dramatic and surprising brand extensions.

Karl Greenberg, reporting for Marketing Daily of MediaPostNEWS, writes about a new study from Northwestern University’s Kellogg School of Management, indicating that the perceived quality of a brand is far more important than the fit between the heritage product it is known for and the new extension. He quotes Kelly Goldsmith, Assistant Professor at Northwestern’s Kellogg School, as saying: “Historically, there has been an overestimation on the importance of fit,” with the research apparently concluding that Nike deodorant (high perceived quality, low fit brand extension) would fare much better than CVS deodorant (high fit, low perceived quality brand extension).

So, on the risk side of the trademark equation, the larger the gap between the core goods and the newly expanded goods, the greater the chance for a serious conflict with intervening third party rights that must be taken into account when determining availability of the brand-name and mark for use on the new goods.

And, on the reward side of the equation, to the extent this research begins to justify brand extensions here-to-fore thought too far afield to be viable, they have the potential for greatly expanding the strength and corresponding scope of trademark rights since they will not only be unrelated to the brand’s core goods, but they are also likely to be unexpected or otherwise surprising to consumers.

Of course, the more unrelated the expanded goods are to the core goods and the more unlikely consumers would expect them to come from the same source, the stronger and broader the resulting rights will become. 

What do you think, are we going to start seeing more “less-fitting” brand extensions?

–Dan Kelly, Attorney

I enjoyed Brent’s “I’m with the Brand” post last week, in which he detailed being turned off by overzealous fandom of some popular, or perhaps trendy, brands.  I can identify (although I have no qualms about being, or admitting that I am, an “Apple Core”).

This week, I read about a situation that illustrates the contrapositive of what Brent discussed.  The Wall Street Journal is reporting that some triathletes are disappointed with the World Triathlon Corporation’s decision to expand its use of the IRONMAN

® brand to triathlons shorter than the 141-mile Ford Ironman Triathlon World Championship.

Brand extensions are, of course, fairly common things.  The issue is really about overextending a brand (on which we have commented here, here, and here).  A good question is, “where does the goodwill start diminishing and the ill will begin increasing?”  But the key business question will more often be, “to what extent is it most profitable to extend a brand?”  Or, “when do you begin to reap diminishing returns on brand extensions?”

When a company has customers that brand themselves with the company’s trademarks, I suspect that it may hit the point of diminishing returns on brand extensions, at least with existing clientele, rather quickly.

One good thing leads to another, or perhaps, vice versa (then again, maybe not):


Odds are, you probably are familiar with the logo on the left, but maybe not the history behind the brand and company it represents. Apparently, a guy named Jimmy John Liataud founded Jimmy John’s Gourmet Sandwiches in Charleston, Illinois, in 1983, and since then, has grown his successful franchised restaurant business to more than 1,000 locations in 38 states, including many in Minnesota.

And, I’m guessing most of you haven’t encountered the logo on the right, so, hat tip to Ed, who guessed right that it would capture my interest. Apparently, a second generation family business called Jimmy’s Johnnys was founded in the northern suburbs of St. Paul, Minnesota, four years before Jimmy John’s came into existence, all the way back in 1979.

Branding conflict? Trademark problem? Antitrust problem via brand extension and vertical integration (for tongue-in-cheek reasons that will become more apparent far, far below)?

Need more information?

What if Jimmy’s Johnnys isn’t selling sandwiches at all, but assuming its position in the food chain, by helping dispose of them, through this business (answer below the jump):

Continue Reading And, Here’s . . . Jimmy’s Johnnys

It appears that energy drink brands have found another way to expand or extend their reach while still getting their active ingredients into the bloodstreams of consumers. This past weekend I encountered the Amp brand, not only in the refrigerated cases of convenience stores, but also at the grocery store check-out register, side by side with other traditional chewing gum brands. Some other blogs have already reviewed Amp energy gum here and here. Apparently the new gum brand hit the streets earlier this year, as evidenced by this pending trademark application, owned by Pepsico.

The Rockstar energy drink brand, which is curiously owned by an individual named Russel G. Weiner, not some corporation or other liability-shielding entity, apparently was thinking about brand expansion all the way back in October 2005, as evidenced by this still pending intent-to-use trademark application. Other blogs already have reviewed Rockstar energy gum here and here, but they have not reported that registration of the Rockstar trademark for gum has been opposed by Take-Two Interactive Software, a video game computer software company with trademark rights in the Rockstar name as well.

Seems like a good time to remind brand owners and managers that they don’t necessarily have the automatic and unfettered right to expand their brands to new products, services, and categories. Most appreciate the importance of conducting the necessary trademark due diligence before launching a new brand, but some may overlook the need for due diligence when pursuing brand extensions, operating under the misapprehension that they own the right to put the brand on anything they want to put it on.

There are other times too, when the need to consider trademark due diligence is sometimes overlooked, so I thought I’d share a handy checklist I put together several years ago:

  1. Before adoption and first use of mark anywhere within the United States;
  2. Before extending use of mark to new products, services, or categories;
  3. Before licensing mark to others;
  4. Before modifying or modernizing mark;
  5. Before extending use of mark in new geographic areas within the United States, if no federal registration was obtained at the outset;
  6. Before use of mark outside the United States.

Back to energy brands, you may recall, I previously blogged about the Bawls energy drink brand, and the unique product packaging, complete with tactile bumps, here. I’m not sure whether Bawls is considering a brand expansion into the gum category, but doing so would be interesting from a branding perspective.

Now, if I were creative enough to help the Bawls energy drink folks expand their brand into the chewing gum category, I’d probably anticipate and be hopeful that "Gum Bawls" (my idea, not theirs) was probably clear, but I’d double check with some appropriate trademark clearance measures and, if clear, promptly follow with the filing of an intent-to-use trademark application.

Marketing types, how did I do? And, yes, I’m keeping my day job.

Mark Image

In November, I wrote about how Gatorade’s 2009 re-branding as G has been a complete failure. G was an ill-conceived approach to slowing sales in 2007 and 2008. It damaged brand equity, confused consumers and didn’t reverse the trend of falling unit sales.

In the final paragraph of my last blog, I noted that PepsiCo CEO Indra Nooyi said the company is planning a “massive Gatorade transformation” for 2010. I recommended that Gatorade should follow the model of Coca-Cola when they decided to retire New Coke. By doing this, Coca-Cola admitted their mistake and moved on by hitting the reset button on their brand.

Initial details of PepsiCo’s 2010 “massive Gatorade transformation” have been made publicly known here, here and here. Gatorade’s brand strategy for 2010 seems mediocre. Although they are making some positive changes, other moves indicate that they still don’t understand how to successfully market their brand.

Continue Reading G Doesn’t Grasp Successful Marketing