You’re well aware of the fact that we have a burning desire for great brands and trademarks.

Outside Whole Foods last evening, with snow falling, I found a beautiful display of firewood:

A smile came to my face as I read the SnuggleWood brand name for this kiln-dried firewood.

We’ve written a lot about the many legal benefits of suggestive over descriptive trademarks.

I’m fortunate to have enjoyed many evenings snuggling with loved ones around a blazing fire.

Later, it also brought warm and toasty feelings to see a federal trademark registration exists:


Sadly though, the fire was doused after learning that an earlier, broader trademark registration for the single word SNUGGLEWOOD lapsed, extinguishing more than 15 years of nationwide priority.

Apparently ownership changed between the original 1998 filing and a decade later when renewal evidence was due, so the USPTO rejected the evidence, as no clear chain of title was provided.

It’s sad to see because trademark ownership and chain of title issues are preventable and fixable.

Let’s hope for the SnuggleWood brand that it is never burned by unregistered trademark rights that could have developed in remote geographic parts of the country before the new filing in 2014.

Debbie Laskey, MBA

Who owns the brand in your business? If your business is top heavy with numerous members in the C-Suite, this may be a difficult question to answer if you don’t have a Chief Marketing Officer. Your Chief Sales Officer may claim ownership, or your Chief Information Officer may claim ownership. Perhaps, your Chief Legal Officer may claim ownership. If you don’t have a large number of people in your C-Suite, your Chief Executive Officer may be the face of your brand and simultaneously leads your messaging.

But no matter who owns the brand in your business, there are three key responsibilities for the person in this role.

First, make sure that all brand tools are consistent. This means that all your digital assets including your main website, your blog, and all your social media accounts reflect the same look and feel; and make sure all your printed collateral also reflects the same look and feel (brochures, newsletters, flyers, annual reports, etc.). Make sure they all provide the same description about your company and brand, feature the same logo and/or tagline, and include the same color palette. For example, you would look twice and not trust a site with a purple Coca-Cola – those iconic red and white colors are as famous as the product they represent.

Second, make sure your brand has a defined voice. If you provide professional services, for example, legal or financial services, you may use formal language that matches your industry. But if you sell consumer products, your ads and emails may be full of informal lingo or slang. Think detailed emails versus brief texts. Also, depending on your industry, there may be appropriate words that would be considered essential to include in your brand messaging. For example, professional sports have terminology that is important in their branding – football ads can easily integrate “touchdowns” and “hail Mary’s,” and baseball ads can easily integrate “home runs” and “shut outs.”

Third, create brand advocates. As the owner of your brand, you want to welcome employees into the branding process so that they understand their importance in sharing your brand story with the world. Since all employees are brand advocates, take the time to educate employees about your brand’s strengths during the onboarding phase and also re-train on a regular basis. Make the training fun and always have a smile on your face.

What do you do as your brand’s owner? Please chime in.

It’s been a little more than a week, and I still have the FUSE conference on my mind. One of the more entertaining speakers at FUSE was a futurist by the name of Magnus Lindkvist who talked about “The Attack of the Unexpected: Trendspotting, Brands and Possible Futures.” I can’t shake two impactful images from his presentation, one still, the other moving.

First, the still one. Lindkvist noted, the easiest way to institute change in an organization is to do so slowly and incrementally, because no one will even notice (until your work is done):

My take on this image, from a branding perspective, is a little different: If the hard, day-to-day incremental work of brand building is taken seriously, over time, the bond between a brand and follower (or guest) becomes simply inextricable. This kind of bond is unlikely to occur over night.

As to the interesting moving image from Lindkvist’s presentation, it communicates to me how important the ingredient of courage is to inspire others to follow. This video is really worth the 3 minutes it takes to experience (more than 7 million others apparently agree).

I really love the metaphor of life embodied in it. By the way, did you hear the question asked at the end of the video? “How did he do that?” My answer, “courage” (albeit perhaps, “courage” of the liquid variety). Nevertheless, the question it begs, in stark contrast to the still image is, will what has been built last? In other words, for how long will your brand be “unstoppable,” if it is built too quickly, to borrow from the video’s soundtrack?

Trademark types frequently encounter brand owners and managers with substantial misunderstanding and confusion about when use of the federal registration notice symbol is lawful. Most of the time a misuse or technical violation results from an honest mistake, but sometimes the misuse is, and starts out intentional, or perhaps the misuse begins to look intentional if it isn’t promptly fixed or corrected upon learning of the misuse.

Section 906 of the U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure (TMEP) answers some of the most common questions regarding misuse with this guidance:

  • The federal registration symbol should be used only on or in connection with the goods or services that are listed in the federal registration.

  • The federal registration symbol may not be used with marks that are not actually registered in the USPTO.

  • Even if an application is pending, the federal registration symbol may not be used until the mark is registered.

  • Registration in a state of the United States does not entitle a person to use the federal registration notice.

  • A party may use terms such as “trademark,” “trademark applied for,” “TM” and “SM” regardless of whether a mark is registered. These are not official or statutory symbols of federal registration.

This information and guidance, however, begs the question of whether misuse is a serious violation and the possible consequences of misusing the registration symbol? As you may recall, we’ve talked a bit before about possible false advertising claims against the trademark owner who misuses the symbol and a possible unclean hands defense in favor of the trademark owner’s enforcement target, especially when the misuse is accompanied by a bad faith intent to deceive.

As it turns out, we really need to add another important potential consequence to the list, one that I fear will be abused and used for pure tactical advantage in trademark enforcement efforts, namely, assertions of trademark fraud, despite the current heightened standard of fraud, with the Court of Appeals for the Federal Circuit now requiring a specific intent to deceive the Trademark Office. Actually, registration symbol misuse is not really a new ground of trademark fraud, but it has been rather uncommonly and infrequently alleged, at least in recent years.

One of the reasons for my concern of abuse stems from a recent TTAB decision permitting this rather conclusory and bare bones trademark fraud claim to survive a motion to dismiss:

Applicant knowingly and willfully used the ® symbol in connection with the term … in an attempt to deceive or mislead consumers or others in the trade into believing that the mark was registered.

A pdf of the TTAB’s decision with scant analysis — from about six weeks ago — in North Atlantic Operating Co., Inc. et al v. DRL Enterprises, Inc. Opposition No. 91158276), is linked here.

Relying only on the above-quoted allegation, the TTAB decided: "We find that the allegation set forth above includes the necessary pleading of intent, and specifies that applicant’s misuse was knowing and willful, and an attempt to deceive or mislead consumers."

In contrast to most trademark fraud cases where various false and misleading statements — relied upon by the Trademark Office — are the focus of the fraud challenge, in North Atlantic Operating Co.,  the focus was on an alleged intent to deceive the public, as opposed to the USPTO.

The Federal Circuit has held: "The improper use of a registration notice in connection with an unregistered mark, if done with intent to deceive the purchasing public or others in the trade into believing that the mark is registered, is a ground for denying the registration of an otherwise registrable mark." Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991). Presumably, the same conduct would sustain a petition to cancel as well. Although, the statutory support for the broader focus is unclear, it appears that an intent to deceive the USPTO is not required, so long as there is an intent to deceive the relevant public regarding registration.

Another reason for my concern stems from the apparently satisfactory yet conclusory fraud allegation. There are simply no details regarding the who, what, where, why, and when, of the alleged trademark fraud, and this failure appears to contradict recent TTAB case law confirming that fraud must be pled with particularity under Fed. R. Civ. P. 9(b). Indeed, our friend John Welch over at the TTABlog has reported multiple times on the TTAB tightening up the pleading requirements for trademark fraud claims, following the Federal Circuit’s landmark decision in In re Bosehere, here, and here.

Finally, the Federal Circuit’s Copelands’ Enterprises decision makes clear that how quickly a trademark owner corrects a misuse of the registration notice symbol after learning of the misuse, will impact the determination of whether the trademark owner is charged with an intention to deceive the public. If we couple that guidance with the current uncertainty of whether the requisite intent may be established with a reckless disregard for the truth, trademark types and the brand owners and managers they represent, are all well-advised to pay more attention to what many previously have written off as honest mistakes and technical violations with no real or significant consequences.

Only time will tell whether the registration notice symbol misuse type of trademark fraud claim will remain uncommon or gain traction in our Post-Bose world.

Seth Godin’s recent post entitled Subtlety, deconstructed, struck a chord with me, and should strike a chord with all trademark types and the brand owners they represent. Here is my favorite excerpt:

Subtle design and messaging challenge the user to make her own connections instead of spelling out every detail. Connections we make are more powerful than connections made for us. If Amazon and Zappos had been called "reallybigbookstore.com" and "tonsofshoes.com" it might have made some early investors happy, but they would have built little of value.

As you may recall, I have been tough on Seth Godin’s trademark advice in the past, but I couldn’t agree more with his view set forth above on naming and building powerful consumer connections and a resulting asset of significant value, by utilizing subtle design and messaging.

We have spoken and written about not "hitting the consumer over the head" in the context of naming and placement on the Spectrum of Distinctiveness, instead, encouraging the use of suggestive as opposed to descriptive names and marks, but, let us not forget, there is a trademark paradox that does appear to reward use of a blunt instrument, called look-for advertising, at least when it comes to developing trademark rights in certain non-traditional marks.

 

One of Minneapolis’ most recent hotel additions, Aloft Hotel, branded as a "hip" hotel and a "vision" of Starwood’s W, apparently features the WXYZ Bar. Or is it XYZ?

I’m not sure, and I’m not sure if Starwood or W have made up their minds yet either (as there appears to be different font, size, and spacing between the W and the lower case xyz). In any event, Starwood has registered both XYZ and WXYZ as standard character service marks.

The Mpls reviews appear to be generally quite good and confirm the promised hipness. Given my previous "confession of a lamer," in admitting to being "out of touch with modern fads or trends," I haven’t had an occasion to step foot inside XYZ or WXYZ, at least yet.

The San Francisco W clearly shows use of XYZ alone, but at Aloft in Minneapolis (and perhaps other Aloft locations), given the minimal spacing shown above on exterior signage and the definite compression of letters shown below, it appears both the three and four letter versions actually are in use.  

 

As I understand it, W, one of the most well-known single-letter brands (and the only single-letter with three syllables), spawned the XYZ and WXYZ brands just over a decade ago. Starwood and W must have wanted to get the concept just right before making the debut in Minneapolis!

You may recall my previous blog post on Exposing Single-Letter Envy in Hotel Branding. We also have covered other contexts where single-letter branding continues to make "a" mark.

Can you think of a better single-letter brand than W?

This sponsored banner ad is currently appearing in AdAge’s Daily News on-line newsletter:

How many boxes of tissue do you suppose this ad is responsible for selling?

If the answer is none, that is probably fine with Kimberly-Clark since the return on investment for this ad is measured quite differently, I’m sure, given how the frequently misused Kleenex® brand is currently enjoying the lofty status as one of The 100 Best Global Brands. No doubt, Kimberly-Clark would like to keep not only this annointed status, but even more basically, it would like to keep the status as a brand and protectable trademark intact too.

In all likelihood, trademark types are behind this kind of advertisement, or perhaps more properly termed, “public service announcement,” and they also are probably behind the “brand tissue” phrase, closely following each use of the brand name Kleenex®. Both measures help emphasize to consumers that Kleenex® is a brand of tissue coming from a single unique source, not a type or category of tissue coming from a variety of different competing sources.

These kinds of precautions are important educational steps a trademark owner can take when a meaningful portion of the public may misuse the brand name as a generic term. They are designed to shape the public’s proper use of the trademark, and, hopefully, prevent the trademark owner’s ultimate fear: Genericide. Indeed, we previously noted Kimberly-Clark’s success to date on this very subject:

[W]hen the public misuses a famous trademark as a generic term and the brand owner risks losing exclusive rights through changes in the common meaning of the term. Avoiding the risk of this happening is something Kimberly-Clark® knows more than a little about, I suspect. No doubt, the legal team at Kimberly-Clark® has done an impressive job of preventing the KLEENEX® brand from following former brands like ESCALATOR, TRAMPOLINE, and ZIPPER, to name a few, into the unpleasant graveyard of genericide.

In the end, however, trademark owner’s efforts aside, the public will decide the issue of genericide, as we have discussed before:

Unlike the kind of trademark abandonment that automatically results from the single act of non-use of a trademark coupled with no intention at that time to resume use of the trademark, the kind of trademark abandonment that is also known as genericide, in contrast, results from a gradual change in the meaning of a trademark or brand to an unprotectable generic term. A change that shifts the meaning — understood by a majority of the relevant consuming public — from identifying, distinguishing and indicating a single source for a particular product or service to a designation that connotes no single source at all, but instead, an entire product or service category with multiple unrelated sources.

So long as the “majority of the relevant consuming public” (more than half) continue to understand Kleenex® as a brand, the exclusive trademark rights will remain intact.

If you read AdAge, congratulations, apparently we are part of the “relevant consuming public,” or perhaps you are viewed as someone who has influence on how the “relevant consuming public” perceives the Kleenex® brand.

I hope I did my part here, now it’s your turn.

From My Cousin Vinny:

Vinny Gambini: I object to this witness being called at this time. We’ve been given no prior notice he would testify. No discovery of any tests he’s conducted or reports he’s prepared. And as the court is aware, the defense is entitled to advance notice of all witnesses who will testify, particularly those who will give scientific evidence, so that we can properly prepare for cross-examination, as well as give the defense an opportunity to have his reports reviewed by a defense expert, who might then be in a position to contradict the veracity of his conclusions.

Judge: Mr. Gambini?

Vinny Gambini: Yes, sir?

Judge: That is a lucid, intelligent, well thought-out objection.

Vinny Gambini: Thank you, sir.

Judge: Overruled.

Not fair. That’s just how it feels sometimes.

You believe you have a sound position, a fine strategy or a winning campaign, all backed up by solid arguments. But then you’re overruled. And you’re left shaking your head and saying to yourself: “This is a winner. Why don’t they get it?”

I’m sure that’s how brand strategists and consultants, whether internal or external to an organization, feel at times when their proposals are rejected. In fact, I know that’s how they feel. I’ve been there.

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