For those of you who have been with us since the beginning of this wonderful collaboration of legal and marketing types, known as DuetsBlog, you also know we have a mascot dubbed Duey — he’s depicted in the squirrel graphic at the top of this page. Here is his story, as told by Aaron Keller on behalf of his creative team at Capsule, who brought Duey to life.

Unsurprisingly, Duey is all about protecting his nuts and the nuts of those he cares deeply about, especially those of the clients he steadfastly protects. We have embraced the graphic as a nice metaphor of what we’re best at, but we’ve only told the complete story once before, as Duey is a relatively shy little guy, and actually we prefer to see the subtlety of the graphic communicate a metaphor instead of hitting our gifted readers over the head with a coarse tagline.

More to that delicate point, spending the week in Las Vegas — the city that knows no such thing as subtlety and proud home of the SHOT Show 2015 — has unearthed lots of blog fodder, so here’s the first we’ll share:

The harshly worded tagline reminds me of a topic we have talked about more than a few times here: The art of subtlety as compared to “hitting the consumer over the head” with an idea.

Subtlety is more often rewarded in the world of predicting the existence and scope of trademark rights, that’s one reason we favor suggestive over descriptive trademarks, and we have reminded marketing types to avoid the D-word at all cost.

Perhaps the one time when subtlety should be discarded is when you’re operating in the world of non-traditional trademarks, given the benefits of using overt “look-for” advertising.

By the way Duey, is coming up on his sixth birthday March 5th, right on the heels of his golden birthday celebration last year, any ideas on what he might enjoy doing this year?

Here is a blast from the past: The D-Word: What Ever You Do, Don’t “Describe” Your Brand!

And, here is something a little more recent that I found on a recent business trip to Las Vegas:

So, let’s file this one in the AlphaWatch file.

There appears to be no tiring of single-letter branding.

Remember the V Bar, also located in Las Vegas?

Here’s yet another example of single-letter branding in Sin City:

Marketing types, thoughts about single letter branding?

Legal types, thoughts about the possible scope of rights?

By the way, does anyone call Gatorade by the letter G, nearly five years later?

 

When you hang around trademark disputes long enough you start to see patterns, at least, at the ends of the spectrum (or not).

We have spilled much digital ink over allegations of “trademark bullying” — something that does occur, but in the grand scheme of all trademark enforcement matters, the instances of actual bullying and abuse seem to be rare.

At the other end of the spectrum are those also rare but highly publicized trademark cases where David takes on Goliath, and asks for a lot of money, because Goliath has very deep pockets.

The vast majority of trademark disputes, of course, are more garden variety and they fall somewhere in between these two extremes, all the while commanding much less media attention.

Google, aka Goliath, is no stranger to defending trademark and other intellectual property infringement claims. Remember our coverage of the Firefly Digital trademark infringement case brought against Google a few years back over the terms GADGET and WEBSITE GADGET?

If so, you’ll remember that case didn’t go well for Firefly Digital as it used the D-word in explaining and describing its claimed GADGET brand. And the last we heard, summary judgment was granted in Google’s favor on all of Firefly Digital’s claims, and the court further ordered cancellation of the GADGET and WEBSITE GADGET registrations on genericness grounds. The USPTO uploaded the district court’s order into the trademark files last May, yet as of this writing, both registrations are shown to be “live” — if anyone knows why, please share your insights.

In any event, the most recent trademark infringement challenge to Google was filed in federal district court just last week, in fact, the day before Thanksgiving — no doubt, as the Google folks were preparing to hang with family and friends over the holiday. Here is a pdf of the complaint.

In the complaint, Hanginout Inc., a small San Diego-based social media company is asking for a disgorgement of Google’s profits, treble damages, punitive damages, and attorney’s fees, in addition to a permanent injunction forcing Google to stop using HANGOUTS as the name for its Google+ feature that allows users to bring their “conversations to life with photos, emoji, and even group video calls for free.” Hanginout notes that the USPTO appears poised to refuse registration of Google’s HANGOUTS mark once the HANGINOUT registrations issue, assuming for the moment, they actually do issue.

I’ve heard human resource personnel say a second incident of bad behavior establishes a pattern, and I’m no employment lawyer, but if two instances make a pattern, I suspect Google will be looking for one in the recently filed Hanginout trademark suit. And it might just find one.

Surprisingly, this kind of text can be found on Hanginout’s website, less than a week after taking on Goliath: “Auto Responses are little videos you record that make your profile feel like people are really hanginout with you.” Perhaps even more surprising, Hanginout submitted a specimen of use showing this self-inflicted descriptive use of its claimed inherently distinctive mark, three days before Thanksgiving. The USPTO’s trademark application files for the claimed HANGINOUT mark can be found here (word mark) and here (composite word and design mark).

But, it could always be worse, I guess. At least Hanginout describes its logo this way: “The mark consists of a human figure sitting down.”

I was worried the description of the mark might have read: “The mark consists of a human figure hanging out.”

What do you think, how long do you suppose Hangingout will be hanging around the courthouse with Google on this one?

What an honor it was to be part of the 2013 Dieline Package Design conference at HOW Design Live, last week in San Francisco, thanks again for the opportunity Andrew!

The Editor’s Choice winner for the 2013 Dieline Package Design Awards is Method’s visually stunning Ocean Plastic Dish and Hand soap container, shown to the left, and discussed this way:

“The more ocean plastic we’re able to reuse means less demand for virgin materials and a cleaner planet. We may never be able to return the ocean to its pristine state, but we can raise awareness of the importance of using the plastic that’s already here. The ocean plastic in this packaging was hand-collected on the beaches of Hawaii by method employees and local Hawaiian volunteer groups. The unique gray color is a departure from method’s usual bright pops of color.”

“The gray color is what resulted naturally after the plastic chopping, washing and pelletizing process and our creative direction was inspired by its organic feel. The inspiration for the ridges along the side of the bottle came from a sea urchin.”

Happily, no D-Words or F-Words here to explain the unique look, shape, and features of this product container, so there is serious potential for inherently distinctive non-traditional trademark protection, although I could find no pending applications filed by Method, just this one (with no ridges).

I love the choice and use of the word “inspiration” to explain the designed ridges on the bottle — in my opinion, it is very nicely suggestive (not descriptive) of the ocean plastic material making up the container, by adopting a creative interpretation of an important and protective feature of sea urchins in the package design.

Although the color of the container is probably not subject to trademark protection because it is apparently the natural result of the manufacturing process, the look, feel, and shape of the container have great potential, since those features haven’t been verbally saddled with the “grip-able” or “ergonomic” functional baggage that others unfortunately have stumbled in using to explain their product or container features.

Last, it was a distinct pleasure to present again with guest blogger Aaron Keller of Capsule on the topic of The Intersection of Design and the Law. As always, it was a lot of fun, so if you’d like a private showing of that discussion, please let us know, we’ll consider taking it on the road again, for the right crowd.

The importance of “storytelling” seems to be the buzzword lately when it comes to branding communications and decisions. For example, last August Branding Strategy Insider wrote that “Brands Must Master the Art of Storytelling,” and just last week it wrote twice on the subject, about “Shared Values in Brand Storytelling” and “5 Pillars for Brand Storytelling Success.”

Branding Strategy Insider’s guest-blogger Susan Gunelius, President and CEO of KeySplash Creative identified “five pillars that brand storytellers understand and use to intrigue, engage, and connect emotionally with consumers”:

  1. Speak truthfully;
  2. Infuse personalities into stories;
  3. Create characters your audience will root for;
  4. Include a beginning, middle, and end; and
  5. Don’t give it all away.

With a healthy dose of humility I’d like to suggest the consideration of a sixth pillar, from the perspective of a concerned trademark type: Don’t permit the storyline to kill the IP!

The stories being told about Pepsi’s new bottle design inspired my suggestion for this intellectual property-focused pillar. AdAge recently reported on Pepsi’s new bottle design:

AdAge Image

“The twisted-bottle shape is a standard the brand hopes to build on — Coca-Cola has long been known for its iconic contour bottle shape. [VP of Marketing Angelique] Krembs said the team, including Chief Design Officer Mauro Porcini, who was brought onboard last June, looked in Pepsi’s archives for inspiration and features that were consistent over time.”

“The swirl on the new bottle is an element that goes back to some of the early glass packages,” Ms. Krembs said. “We didn’t want to create a shape that came out of nowhere,” Ms. Krembs said. “It’s not uniform, it’s a little asymmetrical, there’s a little edginess and playfulness, which is consistent with Pepsi’s equities and youthful spirit.”

While marketing types might debate on the persuasive power of the story behind the bottle design, from a trademark perspective, to this point, at least, it appeared totally consistent with a claim of non-traditional trademark ownership in the product packaging. That is, until the unfortunate emphasis on the “swirled grip” bottom portion.

The Dieline elaborates with this quote from Ms. Krembs: “The etched, grip-able bottom allows consumers to have a more stimulating, tactile interaction with the bottle itself.Brand Channel adds: “The new bottle bottom makes it easier to hold and the label covers less of the contents, showing more of the actual beverage.” And, Pepsi answered a question from Chief Marketer, this way: “Consumer testing has shown positive results, with our consumers finding that the new bottle design reflects Pepsi’s playful spirit while providing a grip-able bottom.” It might be best to “get a grip” on the IP, by leaving the focus of the branding storyline on the “playful spirit.”

Of course, the danger of a branding storyline that focuses on a bottle’s “grip” may be viewed as touting function over form, the death-knell for trademark protection covering the shape of product containers and packaging.

An additional risk of functionality is highlighted in the online comments to the AdAge article: “[T]he redesign’s main purpose is to keep the Pepsi logo visible while someone is holding the bottle. Why does that matter? Because the ubiquity of camera phones and social media. They’re leveraging free advertising opportunities to ‘capture the excitement.'”

And, this matters too — from a trademark perspective — because if the “grip-able” portion of the bottle below the label is so designed for “gripping” and to render the label more visible, the specter of functionality begins to enter the storyline. So, it will remain to be seen whether the USPTO holds the “grip-able” part of the storyline against Pepsi’s attempt to secure non-traditional trademark ownership of the bottle shape on functionality grounds.

PTO Drawing

As you may recall, we’ve previously issued a few related warnings to those brand storytellers who have seemingly forgotten about the fragile nature of intellectual property:

So, what do you think, will Pepsi’s applied-for bottle design trademark fail on functionality grounds or will this story have a happier ending?

What does Google have in common with Sasquatch? Well, perhaps one possible point of similarity is that if you mess with either, you might get yourself seriously messed up in the process.

With respect to the defensive power of Sasquatch, a local Wisconsin business success story, Jack Link’s Beef Jerky, has gotten much notoriety with its series of hilarious 30-second television commercials, featuring their own character and version of the Sasquatch who firmly retaliates when he is bullied, teased and humiliated, this golf-themed commercial being my favorite.

Admittedly Google doesn’t tip over golf carts or send irritants to the hospital, but it is predisposed to tip over your claimed trademark rights, where possible, especially if the irritant unwittingly offers them up for attack while aiming them at Google and asking for lots of money in the process. 

As you may recall, last February I discussed the Firefly Digital Inc. v. Google Inc. trademark infringement lawsuit in the context of why marketing and business types should remove the D-word from their vocabulary, and I warned that Google would not likely overlook the admission by the CEO and President of Firefly that its GADGET and WEBSITE GADGET trademarks "are descriptive of our products on many levels":

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning.

As it turns out, a couple of weeks ago, the federal district court judge assigned to the case in Louisiana, summarily dismissed all of Firefly Digital’s claims against Google, and then it went a step further and ordered the USPTO to cancel both federal trademark registrations owned by Firefly Digital –for GADGET and WEBSITE GADGET — as either generic or merely descriptive without secondary meaning (copy of decision is here).

So, after pursuing about twenty months of vigorous litigation with Google, it appears that Firefly Digital will be leaving the case with less than it brought, in more ways than one.

There aren’t too many things I enjoy more than speaking about the legal implications of branding.

Our friends at BlackCoffee captured a talk I gave to a group of marketing types a while back, on black and white film (thank goodness), and they have graciously posted a 34 minute excerpt, here.

Some of the topics I discussed include:

I’d love to hear any feedback on the talk.

I’d also love to hear from you if you have a group or team that might be interested in having me deliver a talk on trademarks and the legal implications of branding.

Last week we blogged about the dreaded D-Word and how some marketers unwittingly undermine trademark rights in a brand name by explaining that the name "describes" or is "descriptive" of the goods or services sold under the brand.

We also have blogged about the danger of "taking a suggestive name, mark, or tag-line, and using it descriptively in a sentence on labels, packaging, ad copy, or the internet," because doing so "unfortunately can move it to the left (and wrong) side of the line and render it merely descriptive." This particular marketing pitfall was illustrated by probing the Gatorade label last May.

Today, we continue the similar theme of common marketing pitfalls that can render an otherwise strong and suggestive mark merely descriptive, and weak, if protectable at all.

Icon Burger Development Company launched the Smash Burger franchise a couple of years ago, and it recently found its way to the Twin Cities. Great food and concept, by the way. The founders are really on to something here, but the marketing efforts have a few, let’s say, trademark issues.

Smash Burger, at the outset, had the potential to be a strong and smashing (i.e., wonderful, impressive) brand with strong and inherently distinctive trademark rights. Indeed, the U.S. Trademark Office registered a number of different SmashBurger variants, each without a showing of acquired distinctiveness or secondary meaning, here, here, here, and here. It has even federally registered the word SMASH standing alone, and the tag-line: SMASH. SIZZLE. SAVOR.

                      

When your unique and valuable brand name is SMASH BURGER, and you want to own and continue to own rights in SMASH, and related SMASH marks, best not to use "smash" and "smashed" as words to describe the type or name the category of burgers you sell. For example, the website explains why people love SmashBurger: "Fresh, never frozen 100% Angus Beef smashed, seared and seasoned on the grill." As part of the SmashBurger story, it is told: "We start with 100% Angus Beef smashed, seared and seasoned on the grill . . . ." The homepage further reads: "Smash Burger is a great new burger place for a better burger made with 100 Angus Beef that is smashed, seared and seasoned on the grill."

Perhaps most devastating from a trademark perspective, the SmashBurger drink cups read: "Where SMASH means we literally smash 100% Angus beef at a high temperature to sear in all the juicy burger goodness":

                                                 

Sounds good, if you’re dining, but ouch, if you’re the patty, or perhaps a trademark type. It appears the Examining Attorney never combed the SmashBurger website, as many will do, in search of descriptiveness admissions that can and will be used against the brand owner and trademark applicant. It remains to be seen whether these issues are raised at some point in the future.

When marketers are tempted to use their brand name in a descriptive way, my suggestion is to consult a thesaurus in search of alternate terms to use in copy that share the same meaning as the branded and trademarked term. This helps avoid a trademark invalidity challenge by the Trademark Office or competitors. 

Would the effective marketing story be lost if words like "smacked," "pounded," "pressed," "crushed," or "slapped" were substituted for "smashed," and terms like "smack," "pound," "press," "crush," or "slap" were substituted for "smash" in the copy, leaving SMASH for use only as a trademark and brand name? I’m thinking that consumers will exercise a little imagination and still get the marketing point, without doing harm to the trademark.

What do you think?

Frequently brand owners find themselves in the position of wanting or needing to explain the thinking behind their name, mark, and/or brand. Sometimes the explanations appear publicly on product packaging, websites, catalogs, brochures, advertising, and frequently in press releases, or perhaps in statements to reporters, especially when trademark litigation concerning the brand is involved. Such explanations about the brand’s meaning also can be found in consultant’s naming briefs that are easily discovered during litigation, and, if the brand story is told there in a way that "describes" instead of "suggests," the D-word may be used against a brand owner during trademark litigation to severely weaken if not invalidate the underlying trademark. 

Word to the wise. Be very, very careful in the words you choose to convey the meaning behind your brand. All too often brand owners and their consultants unwittingly explain the meaning behind the brand name in ways that can push it down the Spectrum of Distinctiveness into the realm of Limbo Land, a place where inherent distinctiveness and immediate trademark rights do not exist. For more on this point, see A Legal Perspective on the Pros and Cons of Name Styles.

Firefly Digital may have to learn this lesson the hard way. Firefly Digital brought a trademark infringement lawsuit against Google for its use of the term GADGET in connection with various Google service offerings. Firefly Digital apparently was able to federally register GADGET and WEBSITE GADGET for computer software and related services, and the Trademark Office registered them as inherently distinctive marks, deserving immediate protection without proof of acquired distinctiveness or secondary meaning. For a rather witty account of Firefly Digital’s trademark fight with Google, see Ron Coleman’s Gadget Goes Gonzo post from a few days ago.

Engaging in a trademark battle with Google is tough enough, but Firefly Digital certainly didn’t help itself by the following explanation of the meaning behind its claimed GADGET and WEBSITE GADGET trademarks:

“They embody our passion, our vision and our values,” Spears said. “They are descriptive of our products on many levels. Firefly is a business given life through ingenuity, hard work, the contributions of our employees and the trust of the many clients we serve. We’re prepared to protect that.”

Putting aside what Nancy Friedman might call another misguided use of the meaningless P-word, for Firefly Digital to utter the D-word and admit that its trademarks "are descriptive of our products on many levels," is an admission unlikely to go unnoticed by Google and likely to haunt Firefly Digital for some time.

The problem with "describing" the meaning behind a brand name is that it undermines a claim of inherent distinctiveness and puts the brand owner in the position of having to prove distinctiveness. It also complicates the issue of priority since trademark rights aren’t acquired upon first use with merely descriptive marks, as they are with those types of marks falling on the suggestive side of the line along the important Spectrum of Distinctiveness.

This common marketing pitfall is reminiscent of another I previously blogged about: Staying on the Right Side of the Line: Suggestive v. Descriptive.

So, what ever you do, don’t "describe" the brand and what it means, instead, explain and weave stories around all that it "suggests" or might convey through the exercise of one’s imagination.