Loyal readers know that trademark rights are dynamic, use-it-or-lose-it intellectual property rights.

So, when signage announces a name change, it jumpstarts the question of trademark abdonment:

The above signage and reporting around the sale and rebrand of SuperAmerica convenience stores seem to suggest the SuperAmerica name will cease to be used, bringing Speedway coast-to-coast.

Time will tell though if there is a plan in place to avoid legal abandonment of the SuperAmerica trademark, so that it does not become part of the public domain, available for others to adopt.

We explored this important question a few years ago, when we discovered Chevron’s efforts to maintain exclusive rights in the Standard trademark:

“Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because ‘token use’ of a trademark was rejected as a ‘use in commerce’ in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing ‘token use’ as a now failed way of developing trademark rights, the definition of ‘use in commerce’ was amended to add this critical language, requiring the use to be: ‘the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.’

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made ‘merely to reserve a right in a mark.’ Congress did indicate that what constitutes use ‘in the ordinary course of trade’ will vary from one industry to another. It also noted that ‘use in commerce’ should be ‘interpreted flexibly’ so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.”

It appears most of the SuperAmerica trademark registrations recently have been renewed, so with ten year terms, it likely will be several more years before we begin to see what, if any, use is relied upon at the Trademark Office to maintain registered rights in the SuperAmerica mark.

In the meantime, what do you think, is there a plan in place to maintain rights in SuperAmerica?

A recent advertisement caught my ear because it involved financial services offered by a guy named Charles Hughes a/k/a Chuck Hughes and the catchy marketing phrase Trade Like Chuck:

It instantly reminded me of a piece I wrote in 2010 called: Exposing Two-Face Brands. One of the branding truncation examples I wrote about there noted how Charles Schwab exposed a much less formal and more personal and engaging face with the popular Talk to Chuck advertising campaign.

The folks liked it, so Susan Perera and I responded by writing a more in-depth version for Minnesota Business, providing other examples of the trend toward truncation and informality in branding — then, I wrote about Talk to Chuck in yet another version for World Trademark Review:

Apparently the Talk to Chuck campaign was quite successful too. But all good things come to an end, as the campaign was dropped in 2013, in favor of its current tagline: Own Your Tomorrow:

What I wondered was whether Charles Schwab had continued some (even modest) use of the Talk to Chuck tagline — to retain enforceable rights — or whether it simply chucked them out, since Mr. Hughes didn’t seem at all deterred with his apparent introduction of TradeLikeChuck.com in 2016.

Although there still may be valid use of Talk to Chuck that I’m unaware of, the visible signs all seem to point toward abandonment. The TalkToChuck.com domain name was originally registered back in 2005, yet today, it only redirects to the main Charles Schwab website with no visual Talk to Chuck reinforcement, so that mere redirection, shouldn’t constitute bona fide trademark use.

Perhaps even more importantly, searches for “Talk to Chuck” on the Charles Schwab website yield no results: “There are no results for ‘talk to chuck’.” And, each Talk to Chuck federal registration and application was allowed to expire or become abandoned (here, here, and here).

Why didn’t Schwab see some value in taking steps — even modest ones — to avoid abandonment of its federally-registered rights? Do you suppose Mr. Hughes has Schwab regretting that decision?

What if the web traffic to the Charles Schwab financial services site still had meaningful redirection coming from the TalktoChuck.com domain name, would that help establish lingering goodwill?

In the end, to “own your tomorrow” — from a trademark perspective — even when you’ve moved on to a new tagline, it might pay dividends to develop an intentional plan to avoid abandonment.

Otherwise you might as well roll up those rights into a round little wad of paper, and hurl them to your doggie with one of these federally-registered Chuckit! babies (here, here, and here):

Like many industries, there has been much brand consolidation. The petroleum industry is a good example. I recall pumping gas in Iowa back in the late seventies — at a Phillips 66 gas station (recall that a couple of years ago Phillips merged with Conoco). While pumping gas in those days, I vividly remember long gas lines and the price of gasoline doubling between 1978 and 1980.

One gas station brand I thought was long dead, at least until last week: Standard — I specifically recall Standard gas stations being converted to Amoco stations in the Midwest, and then Amoco stations were later converted to BP.

So, imagine my surprise on our recent family trip to Las Vegas, when I snapped the photo above from the In-N-Out Burger parking lot: Standard brand positioned above the Chevron logo?

Then, imagine my further surprise, in researching the history of the Standard Oil Company, to see the same Standard/Chevron gas station signage depicted on Wikipedia, shown below. The photo below appears to have been taken on October 4, 2009, and although the price of gas hasn’t doubled since then, you’ll note the sizable increase over the last two and a half years.

According to the Wikipedia posting, “Chevron Corporation operates several gas stations under the trademark ‘Standard’ in order to retain control over its former trademark (as U.S. trademark law operates under a use-it-or-lose-it rule). This one is located in Las Vegas, Nevada, just west of the Las Vegas Strip.” It also indicates, this example is “[o]ne of 16 Chevron stations branded as ‘Standard’ to protect Chevron’s former trademark.”

As we have said before, serious trademark owners develop plans to avoid trademark abandonment when brands are acquired, merged, and/or consolidated. No doubt, Chevron is a serious brand owner with an apparent plan in place to avoid abandonment of the Standard trademark. Notably, the Chevron website indicates: “Our company proudly sells petroleum products around the world under the Chevron, Texaco and Caltex brands.” No mention of Standard, at least that I could find. Perhaps because — according to the Wikipedia post for Chevron — only 16 of some nearly 10,000 Chevron/Texaco retail gas stations operate under the Standard brand name.

Of course, there is a delicate but critical balance in avoiding trademark abandonment following mergers and consolidations. Trademark types often will hear this question from brand managers after learning that three years of non-use constitutes presumptive abandonment: What is the minimum amount of use necessary to retain rights in the brand and trademark?

It is a dangerous question — especially when phrased this way — because “token use” of a trademark was rejected as a “use in commerce” in the U.S., back when our current intent-to-use trademark registration system was ushered into law during 1989. In outlawing “token use” as a now failed way of developing trademark rights, the definition of “use in commerce” was amended to add this critical language, requiring the use to be: “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

So, asking how little a use is enough to retain rights, starts to sound a lot like a use made “merely to reserve a right in a mark.” Congress did indicate that what constitutes use “in the ordinary course of trade” will vary from one industry to another. It also noted that “use in commerce” should be “interpreted flexibly” so as to encompass various genuine, but less traditional, trademark uses. And, the Trademark Manual of Examining Procedure (TMEP) notes that these three factors are important to consider: (1) the amount of use; (2) the nature or quality of the transaction; and (3) what is typical use within a particular industry. TMEP 901.02.

What do you think, is operating 16 gas stations out of 10,000 (0.16%) a token use made “merely to reserve a right in a mark,” or a very carefully and intelligently calculated “bona fide use of a mark in the ordinary course of trade” for the retail petroleum industry?

For some additional reading on trademark abandonment issues, see:

Dialing in on Trademark Abandonment?

Timeless Trademarks?

—Joy Newborg, Winthrop & Weinstine, P.A.

Award winning film producer Joseph Berlinger made a documentary entitled Crude, which followed the case brought against Texaco by a group of civilians who allege that the oil exploration and drilling conducted by Texaco, now owned by Chevron, in Ecuador polluted the rain forest and contaminated their drinking water. The film received rave reviews at the 2009 Sundance Film Festival, but it got far more attention than Berlinger ever anticipated.

The film, in its initial screening, contained what might have seemed a harmless scene of a “supposedly” neutral court expert participating in a meeting with the plaintiffs’ lawyers. Even though this scene was subsequently edited out of its theatrical and DVD versions, Chevron became aware of its implications and served Berlinger with a subpoena for the rest of his unused footage. Chevron stated that the footage was evidence of corruption in Ecuador’s justice system in violation of an international treaty with the US and the American Convention on Civil Rights for due process, and showed improper conduct by plaintiff’s counsel with court and government officials which was important to Chevron’s case.

Berlinger opposed the request on the grounds that it violated his First Amendment rights and that  the footage should be protected because it was information gathered in a journalistic investigation. Berlinger’s position has been supported by others in the film industry, including Robert Redford, the Directors Guild of America and the Writers Guild of America. Berlinger stresses that if he was forced to hand over the footage, it would breach confidentiality agreements he had with the participants and that he was concerned that if he could not promise participants confidentiality, he would not be able to continue making these kinds of films. But is this really a genuine claim in this situation?

When the plaintiffs’ attorneys invited Berlinger to do a film on their case, and gave him unlimited access to film their meetings, conversations and other activities and to show their identities, what part did the participants really expect to be kept confidential? The court could find no proof of any confidentiality agreements, but Berlinger had the participants sign a release that gave Berlinger the right to use any footage taken for use in the film. He even admited that he had editorial control over what he included in the film. In this day and age when reality television floods the airwaves, we all know that nothing is sacred and anything can be exposed no matter how embarrassing.

Journalist privilege is very important and should be protected, I agree, but is this really the ideal case to stand behind to represent the scope of this privilege? This was not a case where Berlinger’s sources wanted their identities kept hidden in fear of retaliation for the information they were divulging, but rather it seems the participants were quite at ease and nonchalant in front of the camera. In one scene, the lead counsel for the Ecuadorian plaintiffs Steven Donziger, who is an American lawyer, brags about the pressure tactics he uses to influence the judge and acknowledges that “this is something you would never do in the United States…” but that “this is how the game is played, it’s dirty.” Another scene shows a representative of the plaintiffs informing Donziger that he had come from the office of the Ecuadorian President “after coordinating everything,” with Donziger responding that they were now friends of the President. Donziger appeared unconcerned about having such behavior and conversations captured on film, but unfortunately it may have serious consequences for him and his clients now.

So is this more a case of regrets by the plaintiffs’ counsel? Possibly regrets by Berlinger who included damaging scenes in the film not knowing the legal implications and potential consequences to the Ecuadorian plaintiffs, who are more sympathetic than the oil company, and now is trying to limit the damage to the extent he can? And should this really rise to the level of protected material by a journalist? The Second Circuit Court of Appeals did not think so in its opinion on January 13, 2011, affirming the lower court’s decision that Berlinger must comply with the request and turn over his unused footage. It appears the court found that the evidentiary value of the material to Chevron outweighed Berlinger’s claim of privilege due to the facts of this case. However, Chevron’s request has been limited to only certain types of content, and its use is limited only for litigation purposes.

Lessons possibly learned? When shooting a documentary film, and you or the participant wants to keep certain parts of the film confidential, put it in writing… as the host of The People’s Court would say… and better yet, restrict what you film, a lesson I know some of us have learned when friends or family members have posted videos of last night’s antics on YouTube.

An interesting trademark case recently was filed in federal district court in Minnesota, Chevron Intellectual Property LLC et al v. MDW Equity Partners, LLC, a pdf copy of the complaint here.

As beleaguered BP‘s once valuable goodwill and reputation continues to flounder in the court of public opinion with the tragic gulf oil spill and disaster (by the way, how would you like to manage the Gulf oil brand nowadays?), oil industry giant and direct competitor Chevron takes an aggresive, but comparatively trivial step toward protecting its valuable goodwill and reputation, against alleged tarnishment by the land owner of property located in St. Francis, Minnesota (population 4,910 as of 2000), where a former franchisee apparently used to lawfully operate a Texaco service station, up until a little more than a year ago.

By my reading of the complaint, this is not the familiar fact pattern of a holdover franchisee whose right to use various licensed marks is terminated and the terminated franchisee unlawfully continues to operate its business using at least some of the previously-licensed marks. This is also not the petroleum franchise fact pattern recently addressed in March 2010, by the U.S. Supreme Court, in Mac’s Shell Service v. Shell Oil Products Co.

No, the present fact pattern in the Chevron trademark case, to me at least, raises the pivotol and threshold question of what constitutes "commercial use of a mark," and what legal recourse a trademark owner has when there is no longer any business being conducted at an abandoned service station, and the former-franchisee apparently has no control over the physical property any longer, yet tradmarked signage and trade dress remains affixed and visible on property maintained in a "dilapidated condition," with "boarded-up windows," "unkempt (sic) grounds," and "an overall appearance of disrepair, neglect and abandonment," as shown in the photos below:

It is pretty clear from these photos, provided to the court by plaintiff Chevron, that no business or commerce is being conducted at this former-Texaco service station location, and, it is also pretty clear from these photos that no goods or services are being offered or provided there in connection with the Texaco marks. Perhaps that is why no claim of likelihood of confusion or trademark infringement has been asserted.

Instead, Chevron, owner of the Texaco trademarks and trade dress, selectively has asserted claims based on three different trademark theories:

  1. Federal Trademark Dilution, 15 U.S.C. 1125(c);
  2. Minnesota Deceptive Trade Practices Act, Minn Stat 325D.44; and
  3. Minnesota Trademark Dilution, Minn Stat 333.285.

Notably absent from Chevron’s complaint is any claim for breach of contract, especially given Chevron’s allegation that the defendant land owner "was obligated and instructed to fully remove the Texaco Marks" from the property. Of course, any franchise agreement worth its salt requires the immediate removal of all trademarks, even non-traditional trademarks, upon termination of the trademark license agreement. But, it appears here, that the defendant and current landowner is not the former franchisee and has no contractual relationship with the trademark owner.

Even if so, the question remains, are the trademark dilution and deceptive trade practice laws appropriate vehicles to compel or otherwise fuel the removal of trademarked signage and trade dress from land and property where no business or commerce is being conducted and the trademark owner apparently failed to obtain contractual obligations directly from the land and property owner? Moreover, is there any reasonable claim of dilution or tarnishment here, assuming Chevron can overcome the initial hurdle of the "commercial use" requirement? And, if so, what about Chevron’s claim for monetary relief, requesting damages, treble damages, lost profits, and attorneys’ fees? Can anyone explain how Chevron might calculate lost profits given the status of the admittedly abandoned service station?

With respect to Chevron’s request for injunctive relief, importantly, the federal dilution statute does not apply or provide any protection whatsoever without "another person’s commercial use in commerce of a mark" and the Minnesota dilution statute similarly requires "another person’s commercial use of a mark" before any liability attaches. So, how can there be either a valid federal or state dilution claim with the requisite "commercial use" of the Texaco marks when there is no business or commerce being conducted? Similarly, how can there be deceptive trade practices with no trade?

Even in the days when the dilution laws probably were stretched beyond their intended scope to provide a needed remedy for cybersquatting activities well before enactment of the federal Anticyberpiracy Consumer Protection Act (ACPA), to have the necessary "commercial use" of a mark for dilution liability, even if there were no goods or services being sold on the website associated with the domain, it was required for the owner of the offending domain name to offer for sale the domain to the owner of the trademark comprising or contained within the domain name.

Here, there is no business or commerce being conducted at all, no ransom payments or other forms of commercial extortion, apparently just a dispute over the cost of removing trademarked signage and trade dress from an abandoned service station in a town of less than 5,000 people.

Do you suppose the lawsuit could have been avoided if Chevron had been willing to cover the cost of removing its marks from the abandoned property? How much do you suppose it might cost to hire someone in St. Francis to remove the above trademarks and trade dress from the abandoned service station? I’m thinking far less than the cost of preparing and filing the complaint, but what do I know?

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