It all started here, nearly ten years ago now, with our inaugural DuetsBlog post called Dr. No and the Parade of Horribles. We used a Seth Godin post called Looking for Yes as our launchpad.

The rest is history. Seth revealed himself a fan of the blog on our 4th birthday, what a surprise. He generously has engaged with us since then, weighing in on topics ranging from branding to trademark bullying to Velcro’s fear of trademark genericide, with so much more in between.

Recently, Seth generously agreed to answer the 12 questions below. What should we ask next?

Continue Reading Seth Godin Answers 12 DuetsBlog Questions

As the drum beat grows for our interview of Seth Godin tomorrow, it is only fitting that we are reminded of the importance of embracing tension and the ruckus we’ve set out to make here.

Seth’s fabulous and penetrating new book called This is Marketing, will be released tomorrow, no doubt another best-seller, a must-read for any lawyer who cares to make change for the better.

Until then, thanks again to Fred McGrath for this second video, capturing how we embrace tension:

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:

It’s been a little while since the last example we’ve shared showing a brand turning its face, or a blind eye, on age-old rigid trademark advice, counseling against using a brand name as a verb.

Given the more common trend of many alcoholic beverage brands focusing attention and their messaging on drinking responsibly, MillerCoors has made a surprising choice with Hamm It Up!

While we’re all for encouraging brand owners to carefully explore the true risk of genericide from verbing their brand name, encouraging drinkers to be “ridiculous or over the top,” is over the top.

We get it, Hamm’s is going gangbusters as an economy beer brand, but there is a way to verb an alcohol brand more gracefully, so I’m left wondering when MillerCoors will, let’s say, Hang it Up?

UPDATE: In case you’re wondering, the microscopic text in the lower right corner of the billboard reads like a disclaimer: “ENJOY IN MODERATION.” How’s that for a messaging mixed drink?

uberUber, the popular brand that helps people arrange prompt ground transportation, is now also being called a verb. The Star Tribune recently reported that the founder of iHail, a recent competitor of Uber in the Twin Cities market, would like to achieve the same anointed status: “I want iHail to become a verb, just like Uber.” So, let’s say trademark types might be cringing.

Let me know if you’re still cringing after reviewing these gems from the archives on the risk of trademark genericide through trademark verbing:

Hat tip to Joel Leviton, who by the way did a very nice job earlier today presenting “Key IP Issues in Advertising Law” at the Minnesota IP Institute in downtown Minneapolis.

My question, has Uber become the brandverb über alles? (the link exists for those of you who didn’t get the pun in the title of my post or take German in high-school)

Samsung appears to be the most recent brand to board the brandverbing bandwagon with its Galaxy Note 4 advertising campaign, asking the critical question: Do You Note?

SamsungDoYouNote

Samsung has federally-registered in the U.S. the trademark GALAXY NOTE for smart phones, mobile phones, and tablet computers — note the absence of a disclaimer of NOTE, meaning that term is believed to be distinctive, not descriptive or generic for the goods (at least for now):

GalaxyNoteAnd, Samsung’s DO YOU NOTE? trademark application publishes for opposition tomorrow.

As you know, we have welcomed the challenge by marketing types to press the edges and not fall into the assumed knee-jerk legal trap when it comes to weighing the true risks of genericide based on the verbing of brands, but if you’re not Google, this recommended reading from our archives — on the subject of trademark verbing and the risk of genericide, is still highly useful:

Who will be the next to jump on the brandverbing bandwagon? How long will the ride last?

 

 

 

 

 

 

 

 

 

Diageo, the Tanqueray brand owner is currently running billboard ads in the Twin Cities as part of its “Tonight We Tanqueray” ad campaign. A couple of years back when the campaign first was announced, Diageo explained it this way:

“One of the world’s most awarded gins, Tanqueray London Dry has just launched a substantial new global campaign ‘Tonight we Tanqueray’, positioning Tanqueray as the drink to set the tone to an evening, inviting consumers to start the night right.”

Did you notice the verbing of the Tanqueray brand and trademark? Nancy Friedman over at Fritinancy did last year. As risky as verbing can be for some brands, as we previously have discussed extensively here, here, here, here, and here, Diageo appears to have gotten this one right, making a number of choices consistent with our earlier checklist for mitigating the risk of genericide and avoiding a complete loss of trademark rights.

Diageo obtained federal registrations for TONIGHT WE TANQUERAY and the stylized version depicted in the ads shown above, two years ago. And, it appears another Tanqueray verbing tagline was federally-registered six years ago for READY TO TANQUERAY? — but unless a Section 8 & 15 Declaration is filed during the currently open grace period, it will die a natural death.

One of the non-legal consequences of using TANQUERAY as a verb in these taglines is that consumers naturally will fill in the blank on what the brand means to them so that they can ascribe meaning to the tagline. I suppose this invitation for engagement could be good or bad, depending on how the brand is perceived. Given the title of this blog post, I have filled in the blank for TANQUERAY to be synonymous with TOAST or CELEBRATE. What does the brand mean to you?

The ads shown above also depict something else we have written extensively about here: non-traditional trademarks. Note the classy and unspoken “look-for advertising” to promote the Tanqueray green/red color trade dress and bottle configuration (both federally-registered decades ago).

Last, for the history buffs out there, note the wonderful archive of product labels that can be obtained from the online records at the USPTO, here the front and back of a nearly century old product label for TANQUERAY gin, showing the USPTO’s mail room stamp from 1917:

Until seeing this specimen I hadn’t appreciated Tanqueray is the surname of the brand’s founder Charles Tanqueray.

It must be a very rare surname as the Diageo marks are the only ones in the entire USPTO database containing the term TANQUERAY. And, none of the registrations rely on Section 2(f) of Lanham Act for purposes of distinctiveness.

Have you ever met someone named Tanqueray?

There is a new bank in town, or at least new billboard advertising for a bank I haven’t noticed before now — by the way, I like the color scheme. The logo reminded me of another, at least from a distance, albeit for different services.

Putting that issue aside, there are a couple of things going on here that we often discuss on DuetsBlog.

First, we have advertising informing consumers how to pronounce the advertised brand name. Apparently BMO stands for Bank of Montreal, and is pronounced bee-mo, not b-m-o, what I would have assumed without the help.

Second, it appears we have a wannabe brandverb.

Any predictions on whether consumers actually will verb this brand?

With the upcoming 2012 presidential election, this is the time during our American political cycle where spinning is almost a sport — at least an expected activity. Puns intended, as you’ll see.

Over the last several years, I’ve heard my wife speak about “spinning classes” at a local health club (mind you, not at the local political party caucuses) — so, a different type of spinning altogether. This spinning, I’ve come to learn, involves “classes centered around choreographed group rides on stationary bikes, usually led by an instructor with heavy background music to keep you moving.”

So, after a loyal DuetsBlog reader brought these Spinning (note the capital S) trademark use guidelines to my attention, I felt compelled to ask my wife whether the spinning she had often spoken of was a branded activity or a generic one that anyone could offer. She indicated the latter (along the lines of pilates, yoga, or karate), and trust me, those in my house are well-educated about the difference between brands and generic terms.

Having said that, what my wife didn’t know is that one of her other favorite activities called “pilates,” was once a registered trademark, and as of at least 2000, it was found generic and to be part of the public domain as the common generic name for an exercise method, not a trademark. And, she also didn’t know that Mad Dogg Athletics, Inc. owns a large collection, dare I say, family of SPINNING and related trademarks:

  1. SPINNING in Int’l Class 41 (training and instruction);
  2. SPINNING in Int’l Classes 9, 25, and 28 (videos, clothing, and exercise equipment);
  3. SPINNING in Int’l Classes 9 and 16 (computer software and manuals);
  4. SPINNING in Int’l Class 32 (sport drinks);
  5. SPINNING in Int’l Class 5 (nutritional supplements);
  6. SPINNING in Int’l Class 12 (bike parts);
  7. SPINNING in Int’l Classes 3 and 18 (non-medicated lotions and sports bags);
  8. SPINNING in Int’l Class 41 (providing facilities for recreation);
  9. SPINNING in Int’l Class 41 (providing information over the Internet);
  10. SPINNER in Int’l Class 28 (exercise equipment);
  11. SPIN in Int’l Classes 28 and 41 and (stationary bicycles and physical fitness instruction); and
  12. SPIN in Int’l Class 5 (nutritional supplements).

So, what will be the long term fate of this impressive “family” of trademarks? Will the fate be the same as the “pilates” term, or will the referenced trademark use guidelines save the day for Mad Dogg? As we have cautioned before, here and here, the Spinning guidelines correctly discourage lower case type styles (i.e., no “spinning” or “spinner” uses, please), they also discourage verbing (i.e., no “Come spin with us,” please), and they also discourage nouning (i.e., no “Get Spinning,” please). But, I’m sorry, I thought “spinning” was a verb?

Well, I wouldn’t hold your breath (on the trademark use guidelines saving the day), while riding your stationary cycle anyway (especially if combined with any pilates activity, as breathing is quite important to, at least, the pilates method, I’m told).

Now, if you’re steadfast in preventing your trademark from spinning out of control and degenerating into a generic term, would you link it to other known generic exercise terms and methods? You might be surprised to learn that these three composites are currently federally-registered trademarks of the same Mad Dogg owner: SPIN FITNESS, SPIN PILATES, and SPIN YOGA (fitness, pilates, and yoga, all disclaimed). I’ll have to say, these combinations seem like a recipe for a trademark disaster.

Perhaps most surprisingly the Spinning trademark use guidelines state:

“The word Spinning as it pertains to indoor cycling was coined by our company, and is an arbitrary word we selected for our stationary bicycle exercise program. We also coined the name Spinner for our stationary exercise bicycle.”

Are you buying this birth story? Wouldn’t an admission of suggestiveness garner more credibility without sacrificing inherent distinctiveness, at least at birth?

Let’s just say, when the wheel on the stationary bike goes round and round, another more efficient way to communicate the same motion is to say it spins or is spinning. Coined? Arbitrary? Really?

And, as you will recall, one of the points I’ve made before about avoiding the hazards of trademark genericide, especially when a new product or service launches an entirely new category (as the case appears to be here with Spinning, since Mad Dogg’s website lauds itself as the “Creators of Indoor Cycling”) is to make sure the brand owner also adopts a commercially acceptable generic term for the good or service — one that easily will be used and embraced by the relevant comsuming public.

Remember how it took Rollerblade ten costly years of trademark misuse in the public to come up with the efficient generic designation “in-line skates”? — having started out with the far more wordy and complex “boots equipped with longitudinally aligned rollers used for skating and skiing.” I see that the Spinning website nicely refers to “indoor cycling” — yet, here is the twenty year old relic from one of its early trademark filings: “providing training and instruction to others by simulating an outdoor bicycle workout completed indoors on a stationery bicycle.” 

In the end, do you believe that a majority of the relevant consuming public views Spinning as a brand name or the generic name for an activity or method of exercise?             

So, I must ask you dear readers, is the Spinning trademark spinning out of Mad Dogg’s control, or should we be asking the question in past tense?

I’ll have to say, I really enjoyed Aaron Keller’s guest post from yesterday. In addition to the valuable insights he provided, it got me thinking about some perhaps unrelated, but parallel topics of likely interest to legal and marketing types.

Aaron wrote about the importance of a brand being honest with itself and others. He expressed the need for truth in brand messaging. Puffery leads to less trust in a brand. Less trust leads to less loyalty. His call to action was for more people to demand the truth for the brands in our lives. He concluded by asking whether your brand might be stretching the truth and whether it is living up to the brand’s implied and explicit promises.

Similarly, as Anthony Shore of Operative Words wrote before here on DuetsBlog, "truth is stronger than fiction" in brands.

Now, without putting words in Aaron’s or Anthony’s mouth, I’d sum it up by using a word they didn’t and saying: credibility is the key.

I can think of a few other examples where the absence of credibility leads to other kinds of negative consequences and, in some cases, bad behavior.

On the subject of bad behavior, Alec Baldwin recently received a lot of media attention over being kicked off an American Airlines flight for apparently not turning off an electronic device when told to do so by a flight attendant. Although I’ve never been close to being kicked off a flight, I’ll have to admit I harbor a healthy dose of skepticism in the repetitive, but unsupported claim that electronic devices risk flight safety by interfering with flight navigation and aircraft instruments. Apparently, I’m not alone.

Most recently, the Christian Science Monitor had this to say on the subject:

"Although many passengers are skeptical that using electronic devices can threaten air safety, some travel experts say the industry has good reason for its protocols on the use of cellphones and similar devices.

Geoff Thomas, editor of Air Transport World magazine, tells an Australian arm of ABC News that glitches appear to be ‘exceedingly random,’ but that there’s ‘enough evidence to suggest that it is a problem’ that can interfere with aircraft instruments."

That’s it, this was the end of the article that began this way: "Others say there is a reason for the protocol on ‘shutting off’ electronic devices." So, I was anxiously reading, hoping for more enlightenment in this article than a flight attendant on duty probably has time to provide, instead just more platitudes.

To quote Aaron in another context, really? Yeah, I’d like to see the evidence or at least something other than conclusory statements on the subject of signal interference. Without more substance or explanation, passenger skepticism is fueled, and credibility is out the window without a parachute.

In fact, I’d welcome an airline brand’s honesty on the subject. I’d certainly feel more trust and engender more loyalty toward an airline brand that just admits there is no conclusive evidence of a safety problem, but expresses that "we’re all about safety, and we simply won’t take that risk, no matter how remote, for fifteen minutes of convenience at the beginning and end of a flight."

There, I’d believe it, I’d trust it, and I’d stop questioning and being annoyed by the rote words surrounding purported signal interference.

And being worthy of trust is a wonderful thing for a brand, especially an airline brand, because I might even start believing some of the answers given to other common passenger questions like why I can’t place my room-temperature laptop in the seat pocket in front of me, or why a flight is late, delayed, sitting on the runway, or eventually canceled.

Last but not least, it’s time for trademark types to examine their personal brands and look in the mirror on the issue of credibility in assessing risk. As I have written before, there is a new breed of marketer — the type that expects much more from their trademark counsel than reciting all the trademark do’s and don’ts without being cross-examined on how realistic the risks might be of disregarding or not following some or all of the advice.

My growing sense is that in these increasingly competitive times, marketers want to probe previously unquestioned trademark use guidelines that forever have forbidden any brand or trademark use beyond that of an adjective. They are especially interested in knowing how realistic the risk of genericide is if they were to "verb" their particular brand. Moreover, they aren’t interested in following black and white rules that unnecessarily straight-jacket their creativity. Ever wonder why Google uses no trademark registration notice on their homepage?

Trademark types, are we ready to address the true risk of genericide and other so-called risks on a case by case basis and then work feverishly to help mitigate whatever that risk might be?